MPEP Rules are NOT Up-to-Date! BEWARE!

By: Sandra Jackson

Just recently, I was asked to research a patent question.  This required me to look for the answer in the patent Bible, otherwise known as the Manual of Patent Examining Procedure (MPEP).  To solve the issue that I was asked to research, I prepared the necessary documents as outlined in the MPEP, using the correct language as stated.  I obtained required signatures from inventors, some difficult to locate, and filed them with the United States Patent office only to have a Notice to File Missing Parts issued.  How could that be?  I looked up the correct Code of Federal Regulations (CFR) sections on the most current version of the MPEP, I even confirmed it with someone knowledgeable at the Patent Office and, worse, I was placed on hold and forced to listen to the uncanny Patent Office music that makes me want to stab my eye out with a pencil only to be given antiquated information. How could this happen?

Well you see, as someone at the Patent Office explained, “There was this ‘little’ thing called March 16th.”  Yes, anyone remotely involved in the patent system is very much aware of the date on which the patent laws changed from first to invent to first to file, and the patent rush that came along with it.  March 16, 2013 marked a significant date for the Leahy-Smith America Invents Act Implementation of the First to File deadline which considerably changed some patent laws as well as patent prosecution procedures and requirements.  The implementation of some these rules commenced with applications being filed on or after September 16, 2012. One would think that the MPEP would have been updated to incorporate the new rules or perhaps a place to research only the updated ones. Unfortunately, this is not the case.

It is an ongoing process at the Patent Office. The Patent Office now has a designated AIA Help line which will answer “Frequently Asked Questions” and email address, if preferred.  Meanwhile, Widerman & Malek’s attorneys and OUTSTANDING paralegals continue to do their own research to remain current on patent procedures and write blogs like these to pass on the correct information.

If you need assistance muddling through the new changes in the patent laws, and can’t seem to find your answers in the places you would normally look, feel free to contact us at WM for some help.

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