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What exactly is the MPEP? May 23, 2008

Posted by Brian Schar in Patent prosecution.
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The MPEP is the bible of patent prosecution, the two-volume rulebook for how Examiners examine applications and how practitioners write those applications.  Because the Examiners are not lawyers, by and large, the point of the MPEP is to distill down the pertinent Federal Circuit cases into a form useful to nonlawyers.  (Whether the MPEP does a good job of this is a subject for another time.)  The foreword to the MPEP expressly states that “[t]he manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.”  Instead, it’s more like the Pirate Code, except without the adventure and the pillaging. 

One would expect the Federal Circuit to understand that the MPEP is not substantive law.  Nevertheless, the recently-decided E.I. Du Pont de Nemours & Co. v. Macdermid Printing Solutions, L.L.C. case cites the MPEP extensively as authority for its holding.  Admittedly, DuPont does so in parallel with citations to the CFR.  But citations to the CFR alone should be sufficient, without need for reference to the MPEP.

MacDermid only added to the confusion.  DuPont concerned the issue of how priority to a provisional application is claimed as a matter of form.    MacDermid argued that DuPont did not properly claim priority to a provisional application in a later-filed utility application because it did not use the language that the MPEP sets forth for doing so.    The Federal Circuit held that DuPont did not need to use the “magic words” of the MPEP – not because the CFR or USC did not require magic words, but because “the MPEP provision requires only that the applicant use a statement “such as” the one provided in Section 201.11.”   (emphasis added).   Rather than holding that “magic words” were not required by statute or regulation, the Federal Circuit instead held that the MPEP did not require them. 

So what is the MPEP?  It’s not a formal rule or regulation, and has no force of law.  If the USPTO is granted rulemaking power by Congress (an outcome that looks less likely every day), the MPEP may be elevated in status to the level of the CFR.  At least in DuPont , the Federal Circuit seems to have elevated it there already.  Prosecutors argue the MPEP because the Examiners are not equipped to deal with legal arguments.  So the reality is, rulemaking power aside, the MPEP is a quasi-regulatory document that courts may look to as authority.  Litigants may want to consider countering MPEP-based arguments with arguments based on actual law, and point out that the MPEP, by its own admission, lacks the force of law.

And make sure you always have the current edition.

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