USPTO Revises MPEP

Andrew B. Freistein

February 1, 2018

On January 25, 2018, the USPTO published revisions to the 9th edition of the Manual of Patent Examining Procedure (MPEP). The revisions include substantive changes to Chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500 and 2700, and updates to the Table of Contents, Foreword, Introduction, Subject Matter Index, and all Appendices except Appendix I and Appendix P.

One of the biggest revisions involves the treatment of “Markush” claims. Section 803.02 was revised to limit the discussion of Markush claims to election of species requirements and to update the text for consistency with Office guidelines published in 2011. Section 2117 was added to provide an overview of Markush claims and section 2173.05(h) was revised to include a discussion of when a Markush grouping may be indefinite under 35 U.S.C. § 112(b).

In addition, Chapter 2100 was revised to reflect recent case law and guidance relating to patent subject matter eligibility, in addition to other changes.

Specific details on all of the revisions can be found here:

https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html