MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision

Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose? Answer: A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious […]

3 Tips for Finding a Summer Job at a Patent Law Firm

As most first-year law students know, getting your foot in the door at a patent law firm and looking at your first real intellectual property job can feel like a daunting task. When you’re first starting out on a summer associate program, finding a job in any field can be a hard process. You have […]

MPEP Q & A 163: What are the Most Common Basis for Filing a Reissue Application?

Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a reissue application are: the claims are too narrow or too broad; the disclosure contains inaccuracies; applicant failed to or incorrectly claimed foreign priority; and applicant failed to make reference to or incorrectly made reference to […]

MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?

Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to: Prove the primary reference contains an “enabled disclosure;” Explain the meaning of a term used in the primary reference; or Show […]

How to Use Glassdoor to Find the Best Patent Law Firms to Work For

Whether you’re thinking about taking the patent bar exam or you just passed it and are ready to embark on your new career, it’s not always easy to find the patent law firm that will be the best match for you. One of the top resources out there is Glassdoor which has a wealth of […]

MPEP Q & A 161: Living Subject Matter and Patent Protection

Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101? Answer: No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from […]

10 Things You May Not Have Realized Were Invented in the 1980’s

Of course, the wheel and internal-combustion engine had already been invented long ago there were as yet no super modern innovations like cell phones or whichever device is in your hand right now as you read this. But so much of the cutting edge technology we depend on today got its start back in the […]

MPEP Q & A 160: Rules for Appellant to Request to Reopen Prosecution

Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection? Answer: No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection. Chapter Details: […]

How Continuous Learning Can Help Patent Attorneys and Agents Build Confidence

In every field, continuous learning is one of the most important ways to stay on top of constantly changing rules, regulations, and standards. This is particularly true of the patent process, which is why patent attorneys and registered patent agents must remain diligent and continue educating themselves even after passing the patent bar exam. Having […]

MPEP Q & A 159: What are the Two Criteria for Subject Matter Eligibility?

Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. Second, the claimed invention also […]