The United States Patent and Trademark Office (“USPTO”) issued a revision of the ninth edition of the Manual of Patent Examining Procedure (“MPEP”) on January 25, 2018 to provide updated information on patent examination policy and procedure (“January 2018 revision”). The January 2018 revision may be viewed or downloaded from the USPTO website here and is available to search here.
Although the MPEP does not have the force of the Patent Laws codified in United States Code Title 35 or the Patent Rules in Title 37 Code of Federal Regulations Patents, Trademarks, and Copyrights, patent examiners are generally required to follow the guidance provided in the MPEP.
The January 2018 revisions to MPEP §2106 provide formal guidance for examiners in formulating Subject Matter Eligibility rejections under §101 and responding to applicant responses previously set forth in interim guidelines. Significantly, the January 2018 revision consolidates the previous Subject Matter Eligibility guidance documents provided on the “Subject Matter Eligibility” page and groups them, by the appropriate Subject Matter Eligibility test.
Patent applicants dealing with Section 101 rejections should generally cite to these revised MPEP chapters as a basis when crafting arguments to overcome such rejections rather than the Interim Subject Matter Eligibility Guidelines.