New PatentlyO L.J. Article: What Every Patent and Trademark lawyer Should Understand About the MPEP, TMEP, and Other Guidance

By Jason Rantanen

New Patently-O Law Journal article by  David Boundy, a partner at Potomac Law Group, PLLC. Mr. Boundy practices at the intersection of patent and administrative law, and consults with other firms on court and administrative agency proceedings, including PTAB trials and appeals. He may be reached at DBoundy@PotomacLaw.com.

What Every Patent and Trademark Lawyer Should Understand About the MPEP, TMEP, and Other Guidance: How to Use (and Defend Against) the MPEP to be a Better Advocate, by David Boundy – Boundy.2021.HowToUseGuidance.pdf

Every four years, the PTO issues new guidance documents.  Some of them are legal and either help applicants or give nonbinding advice.  Other guidance documents are beyond the PTO’s authority and create burdens that ought not be shifted onto the public.  Several recent notices from the Patent Office note that several batches are coming.

The administrative law lays out limits on the ways that federal agencies may use guidance documents vis-à-vis rights of the public.  Every patent practitioner should understand those limits—when does the MPEP state binding law, when is it mere aspiration for what an agency would like the law to be or would like you to do, when is it asymmetric (binding against the agency, but not against any member of the public), when is it an offer of a quid pro quo (the agency promises “if you do this, we’ll do that”), and when is it invalid and entirely unenforceable?  When has the PTO broken the law, and what rights does that give you?  Knowing the difference, and following the practical advice outlined below, can prevent you from unintentionally compromising your client’s rights.

Read: David Boundy, What Every Patent and Trademark Lawyer Should Understand About the MPEP, TMEP, and Other Guidance: How to Use (and Defend Against) the MPEP to be a Better Advocate, 2023 Patently-O Patent Law Journal 1 (2023) (Boundy.2021.HowToUseGuidance).

Prior Patently-O Patent L.J. Articles:

  • Colleen Chien, Janelle Barbier, and Obie Reynolds, The AIA at Ten – How Much Does the Pre-AIA Prior Art Regime Still Matter?, 2021 Patently-O Patent Law Journal 34. (Chien.2021.Pre-AIAPatents)
  • Nicholas Shine, Covid-19 Pandemic’s Impact on the U.S. Patent System Through November 2020, 2021 PatentlyO Law Journal 27 (2021) (Shine.2021.COVID-19Impact)
  • Thomas F. Cotter, Is Global FRAND Litigation Spinning Out of Control, 2021 PatentlyO Law Journal 1 (2021) (Cotter.2021.GlobalFRANDLitigation)
  • Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20 (2020) (Chien.2020.ImpactOfAlice)
  • Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020) (Michel.2020.RightToExclude)
  • Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020). (Cotter.2020.TwoErrors.pdf)
  • Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019) (Tran.2019.AliceatFive.pdf)
  • Bernard Chao, Implementing Apportionment, 2019 PatentlyO L.J. 20 (Chao.2019.ImplementingApportionment)
  • Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
  • Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
  • Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
  • Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
  • Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
  • Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
  • Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
  • James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
  • Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
  • Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
  • Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  (Morgan.2011.AIAAmbiguities)
  • Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
  • Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
  • Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
  • Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
  • Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
  • Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
  • Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
  • Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
  • Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
  • Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
  • Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
  • Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
  • Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
  • Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
  • Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
  • John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
  • Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
  • Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
  • Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
  • John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
  • Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

38 thoughts on “New PatentlyO L.J. Article: What Every Patent and Trademark lawyer Should Understand About the MPEP, TMEP, and Other Guidance

  1. 5

    Dear Anon—

    In the conversation you reference link to patentlyo.com I asked five times:

    Please identify a written document that states a “duty of candor” to an adversarial tribunal that is implicated by framing a favorable Question Presented, where that duty goes above Rule 11.

    You evaded four times. The fifth time I asked, you gave a link to this article:

    link to abajournal.com

    That article discusses the obligation to cite adverse authority. That has nothing to do with “Question Presented.” A fifth non sequitur.

    Thank you for proving the point. You do not read precisely, you do not think clearly, you do not write knowledgeably. You’re ineducable. It’s pointless to converse with you.

    1. 5.1

      Ineducable?

      Too funny.

      Instead of actually following up on a legitimate point (see post 3), you instead decide to double down on your own past flops in blogging. You think you to be the teacher and cannot see that it is you that needs to learn. The blogosphere is not the courtroom.

      Ah well, let’s make this easy: that you don’t like an answer does not mean the answer is evading. That you you choose not to see how the aba journal on obligation to cite adverse authority is directly to the point of your tiff, does not mean that the article is a non sequitur.

      This is just like how you behaved when you got the legal point wrong about Void for Vageness Doctrine NOT only being related to criminal matters, and I shoved your nose in it. It’s ok to be shown up on a legal blog by an anonymous poster – give your ego a rest.

      1. 5.1.1

        Anon —

        In that case, you pointed out a fair error, and I modified — “void for vagueness” applies to penal laws (criminal, civil penalties. etc.) and a few constitutional principles (mostly First Amendment if I recall). You pointed out an error, I modified my statement. That’s how grownups do things.

        In contrast, in that case, your only approach to the underlying issue was evasion. You’ve never addressed the issue we were discussing then — whether void for vagueness applies to civil statutes between private sector parties, like patents. I know of no reason to believe it does, and you’ve never stuck to the question long enough to move the conversation forward.

        In the other discussion, the issue was formation of a “question presented” in an appellate brief. I asked the same question five times. Five times you ignored at least one term of the question, so your answers were irrelevant. If an answer isn’t relevant to the question, liking or not liking the answer is not a useful concept.

        You don’t read with precision. No value in the conversation.

        And no further comment.

        1. 5.1.1.1

          Wow, is your memory – and spin – wrong.

          Any “modification from you as to your error never acknowledged MY being correct as to the initial context and WHY the concept was even in discussion. You “flexed your name,” and I took you to the woodshed. You want to crow about how adults do things while you SULKED like an insipid brat because some anon person on a legal blog pointed out an error of yours – and you nursed that indignation and held onto it like a pee-stained blanket. That’s “how grownups do things” you say.

          Too funny.

          And then, you seek to make the comments about “in an appeal brief” when the context was about blog writing (and implicitly about our past exchanges), and you want to crow about me somehow not reading with precision….

          Again, too funny.

          Maybe you need to read “with precision.” Just because answers are not ones you like, does not mean someone has been evasive. Just because you choose not to see how something is on point to a blog tiff, does not mean that the article is a non sequitur.

          I have never had problems with your legal writings – in other forums. Quite in fact, I give you credit, when you are not even a part of the conversation. THAT is how grownups do it. But let’s not pretend that your ego has not been out of hand in blog interactions, and driven you to confuse different writings in different forums and that writing on a blog somehow necessitates the SAME writing as in actual legal briefs for the Court. That type of confusion is the furthest thing from what adults do. Not understanding the forum is one thing. Letting your ego dictate a forum to be something it is not is quite another.

          As to “And no further comment.” – that would probably be good – for you. Put the shovel down is a good first step for you to stop digging holes.

          On the other hand, If you want to comment about the point I brought up at point 3 (like a grownup), please, be my guest.

  2. 4

    Off-topic intellectual property humor. Enjoy.

    1. 4.1

      We all know anon is, as you say, ineducable. He is now using his fallback tu quoque fallacy in an attempt to divert blame. The fallacy occurs when the arguer uses apparent hypocrisy to neutralize criticism and distract from the issue.

      1. 4.1.1

        False accusations (the same ones) over multiple threads is an old trick of yours.

        These never worked before, by the by (Speaking about not learning…)

      2. 4.1.2

        It was David Boundy, not I, who said that Anon is “ineducable.” As it happens, I agree with Boundy on this point—as on so much else—but I am not the one who said it.

        1. 4.1.2.1

          And yet, anon will get the last word however inane. In his troubled mind he wins.

          1. 4.1.2.1.1

            It’s not last word (as has been explained to you, many time now); but rather the last AND best word.

            Heck even you over the course of more than two years of 0bsess10n may even have a last word (accidents happen, exceptions prove the rule, yada yada)

          2. 4.1.2.1.2

            And yet, that is free speech. However inane.

            1. 4.1.2.1.2.2

              Tommy, it appears that you were in a hurry to reply to yourself.

              But hey, at least Greg’s comments use a link out in the open.. (even as it misapplies the situation).

              Greg has lost any credibility in trying to say what he is saying with his insistence that he no longer even sees both sides of the discussion. That this does not stop him from his drawing a conclusion only points out his closed-mindedness.

          3. 4.1.2.1.3

            In his troubled mind he wins.

            Correct. That is part and parcel of being ineducable.” Those who will not learn will persist in their error. Those who deliberately persist in error will likely believe that they have won an argument that they have lost in a painfully embarrassing manner. It is just the nature of the beast.

            1. 4.1.2.1.3.1

              Did you know he admitted he is paid to post? Let him ‘xplain about he’s only paid for a select few that “engage” with him. Take it away “anon.” !!

              1. 4.1.2.1.3.1.1

                Two points:

                (1) I always knew that he is paid to post. Think about it: can you imagine anyone paying him for legal services? Clearly, this is his day job.

                (2) Glad to know that no one is paying him for the times when I engage. It never happens.

                1. I SOOOO chuckled at the thought of you trying to not engage with me Shifty.

                  Over the past two and a half years you have engaged with me ONLY well over 95% of your posts.

              2. 4.1.2.1.3.1.2

                See Shifty? – This is exactly the type of misrepresentation from you that amounts to nothing more than your
                L
                Y
                I
                N
                G.

                As we have gone over several times now, I have enterprised on YOUR post decisions, and I am most definitely not paid to post anything of my own.

                This does not reach your current characterization of “only paid for a select few that ‘engage’…” as you STILL imply that it MY posts that earn me coin.

                It simply is not.

                It is YOUR choices in HOW you decide to post (with various examples having been repeatedly given).

                You decide to post in a deceptive (or 0bsessive) manner?

                That is always YOUR choice. I just happen to have set up some enterprising payout from YOUR choices.

                Here’s a hint: choose better.

                As for Greg – he AGAIN torpedoes his credibility, being willing to pass judgment on material that he avers NOT to even see. It is (typical) irony to consider that he expresses himself with a view of someone paying legal services – and engages in something that casts shadow on his own ‘judgment.’

  3. 3

    Question for Boundy:

    Are you aware of a CAFC decision (heck, a circuit decision) that has the holding based directly on your teachings (quoting your articles)?

    Would love to pound on a few ultra-bureaucratic examiners and SPEs.

    1. 3.1

      I’m sure that will be as effective as arguing the examiner failed to resolve the level of ordinary skill in the art. You’re a one man curcle jurk.

      1. 3.1.1

        Wow Smelly, maybe contain yourself (or at least address your grievance to the author of the piece — after all, Boundy is the one taking the effort to put this in journal form).

  4. 2

    David is the bull in the china shop the Patent Office only wished it could corral.

    Thankfully for innovation.

    1. 1.1

      And what was it he said about your reading, writing, and thinking abilities after you “engaged” with him? Your own designated expert.

      1. 1.1.1

        Ah Shifty, asked and answered — several times now.

        Davey’s disrespect (and errors) have been explained repeatedly to you.

        It remains rather odd that you continue to fail to grasp that people have a variety of strengths and knowledge, and that my celebrating those areas in which Davey excels at simply does not give him that status carte blanche across all areas (and in all forums).

        You may aspire to be absolutely consistent (and not in a good way), but that is just not how most of humanity is.

        But thank$ for the mindless repeated error of yours, my slush fund from your choices of posting was beginning to be spent down.

        1. 1.1.1.1

          So “Nice” with five paragraphs of explanations and excuses and caveats. I’m sure he continues to value your opinion.

          You must have forgotten that the last time you tried to “engage” with him he concluded you were an incredibly sloppy reader, writer, and thinker.

          Self-aware much?

          1. 1.1.1.1.1

            You are such the self-immolation expert, are you not, my pal Shifty.

            The “Nice” was a single comment FOR Boundy’s article.

            The five paragraphs (notwithstanding your attempted mischaracterization) was TO YOU.

            When you ask “Self-aware much?” you should first make sure that YOU are aware.

            1. 1.1.1.1.1.1

              Ever try ECT? You’ll thank me later.

          2. 1.1.1.1.2

            [L]ast time you tried to “engage” with him he concluded you were an incredibly sloppy reader, writer, and thinker.

            David Boundy is one of the few folks around these parts to say explicitly something that I think that most of us know, even if we never say as much—Anon has “never been to law school.” I am also convinced that Anon is not in any manner a legal professional (i.e., neither an attorney nor a patent agent), but I do not know whether David Boundy also believes that.

            1. 1.1.1.1.2.1

              I have no doubt whatsoever that anon was order of the coif at Mom’s Basement School of Law.

              1. 1.1.1.1.2.1.1

                anon. . Eulogy. He tried.

              2. 1.1.1.1.2.1.2

                Hi Shifty,

                Do you know what is great about being on the ocean? I can still collect upon YOUR choices in postings.

                The irony of your self-immolation is Delish.

                link to urbandictionary.com.

            2. 1.1.1.1.2.2

              SJM,

              Your link is instructive – but not for what you appear to want it to carry.

              When one reviews the exchange fully, one notes that my view in that exchange carried the day.

              So I guess thank you for that.

                1. Something tells me that you are (yet again) projecting.

                  Not really interested why you would be familiar with that type of medical treatment….

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