Judicial Notice of MPEP

In the recent decision of AIRBUS SAS v. FIREPASS CORPORATION, No. 2014-1808 (Fed. Cir. July 17, 2015), the CAFC gave a tip of the hat to the MPEP by noting:

“The MPEP [is] commonly relied upon as a guide to patent attorneys and patent examiners on procedural matters. . . .” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed. Cir. 1984). Although the MPEP does not have the force of law, it is entitled to judicial notice “so far as it is an official interpretation of statutes or regulations with which it is not in conflict.” Id. Here, the MPEP is consistent with the statutory scheme and § 1.948(a)(2). MPEP § 2666.05, titled “Third Party Comments After Patent Owner Response,” pertains to § 1.948(a)(2) and the limitations on submission of prior art by the third-party requester after the order for inter partes reexamination. According to § 2666.05, “any such new proposed rejection stands on the same footing as a proposed rejection presented with the request for reexamination.” MPEP § 2666.05 (2008). Section 2666.05 continues, citing MPEP § 2617 for “the required discussion of the pertinency of each reference,” and directing that “[a]n explanation pursuant to the requirements of 35 U.S.C. [§] 311 of how the art applies is no less important at this stage of the prosecution, than it is when filing the request.” Id.

This makes me wonder about a few issues:

1)  How will the court treat continuations filed on the day a patent issues;

2)  Will the court defer to the PTO’s interpretation of “or otherwise available to the public” as used in the AIA;

3) Will the court give deference to the PTO’s patent eligibility guidelines with respect to the meaning of “directed to.”

Comments are closed.