The Manual of Patent Examining Procedure (“MPEP”) is the examination manual used internally at the United States Patent & Trademark Office (“USPTO”) to guide examiners in the process of examining patent applications. In practice, patent applicants frequently rely on the contents of the MPEP during patent prosecution to guide their arguments and hold examiners accountable to their legal obligations during patent examination.

The most recent update to the MPEP was published earlier this month and includes several technical amendments related to design patents. In particular, the updated MPEP includes updates to Section 1504.01(a) to incorporate the USPTO’s own recent guidance to applicants relating to examination of computer-implemented designs, such as computer-interfaces and icons. This MPEP update incorporates language and examples from the USPTO’s Supplemental Guidance for Examination of Design Patent Applications Related to Computer-generated Electronic Images, Including Computer-generated Icons and Graphical User Interfaces, published November 17, 2023. These updates relate to computer-generated images and discuss situations where such filings do and do not claim statutory-eligible subject matter for design patent protection.

We encourage all practitioners and inventors in the software space to review these updates.