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THE DISCLOSURE®

Newsletter of the National Association of Patent Practitioners

Celebrating 10 years as an association focused on patent prosecution practice 1996-2006

February 2006

Natonal Association of Patent Practitioners

FROM THE PRESIDENT ...

Ron Reardon

This is the month to refresh your memory (and mine) about the importance of going the extra mile in relationships, both personal and professional.

February 14th should be on your radar as a day on which you give something special to your significant other, as well as to others with whom you have a close relationship.  My Valentine list is quite short.  My wife Hilda is first, no surprise.  My Aunt Betty is next.  She is my Father’s older sister; raised me from age 3 onward; is 85 years old and living in an apartment complex designed for elderly people.  My Aunt-mother and my wife are largely responsible for helping me to realize my potential.  My cousin Shawn, my Aunt Betty’s only daughter, is the final entry on the list.  (My twin boys, Drew and Eric, think it would be too sissy if I sent them something on Valentine’s Day; but they will take money anytime, no questions asked.)  Even those of us that are “relationship impaired” know that sending an e-mail on Valentine’s Day is suboptimal, if not verboten; a personal touch is required.

Now, to segue to professional relationships, a little extra effort and thought can yield substantial results—for clients, vendors, influential business contacts, etc.  My takeaway from a past NAPP annual meeting OED presentation was that the top complaint from patent practitioner clients was lack of communication.  While e-mail is a form of communication, if you want to differentiate yourself or your firm from the competition, consider options with more impact.

Your arsenal should also be stocked with phone calls, handwritten notes, and seasonal cards.  For those of you that feel you do not have time to handwrite a note to your long list of professional contacts, there are companies that will do this for you—you supply the contact list and message and they do the rest.  When it comes to phone calls, only you can do those, not a surrogate.

 

Finally, there is your communication with the USPTO (no Valentine Cards—please).  I have never considered myself to be the sharpest knife in the drawer, so I listen very carefully to more experienced practitioners as to what works best.  In one conversation, I heard how effective it could be to pick up the phone and actually talk with the Examiner prior to responding in written form.  This past Sunday night, I got a phone call from an Examiner who was working late at the USPTO (he had inherited a pile of cases from another Examiner and was digging his way out).  As I listened to the voicemail, I heard that my amendment was going to be considered non-responsive.  When I looked at the amendment, to my horror I saw that I had omitted the claim status for claims 8-11.  I called the Examiner that same night and he graciously offered an Examiner’s amendment, which resulted in allowance.

 

While picking up the phone and calling the Examiner may not yield the results that you want every time, it may give you a better understanding, in less time, of the Examiner’s position and reasoning.  Timely information can be invaluable in deciding on your options and response and how to best represent your client.  By the way, be sure to be considerate of the Examiner’s time and be prepared before making the call.

 

PRACTICE NOTES
US Patent Practice

Many practice tips are offered in this month's member-submitted article by Nancy Delain.  See her article in the Member Articles section.

 

 

 

 

 

 

 
 
NAPP.ORG WEB SITE FEATURES
Loads of information

The NAPP website is loaded with information.  Our homepage presents quick and current updates to our members.  Information about the history and composition of NAPP is found on our pages about joining NAPP.  The resources pages serve as a quick resource to dive into recent rule changes in the USPTO.  Of course, our member center provides a wealth of ways for members to manage their membership accounts and to participate in member-only benefits such as the daily e-mail discussion lists and learn about the certification program.  If you haven't really taken the time to explore NAPP's website, perhaps you should! 


MEMBER ARTICLES

The views expressed herein are solely those of the author and may not necessarily be supported by the NAPP, its members, officers, or directors.

Patent Prosecution and Appeal Tips
From PTO Day: Changes to Statutes and Filing Procedures

By Nancy Baum Delain, Esq.

The United States Patent and Trademark Office (USPTO) held a conference, PTO Day, on December 5, 2005 at which they presented updated information on patent practice. This article is based on information presented at that conference concerning statutory changes and changes to filing procedures, and is intended merely to disseminate information that the USPTO considered important enough to present at PTO Day.


The Disclosure® welcomes the submission of articles on topics related to US and foreign patent practice.  To submit  an article to The Disclosure®, please send it as an e-mail attachment to editor@napp.org.
 


EXECUTIVE DIRECTOR'S MESSAGE

Joy L. Bryant, Esq.

Volunteer!

As I wrap-up my tenure of 10 years (yes, I have served NAPP for 10 years) I leave with some feeling of anxiety.  I invested 10 years of my life into this organization, building it up from ideas and visions of what I thought a patent prosecution oriented organization should be like.  Much of the work was done single-handedly with some support from a few.  My anxiety is rooted in my fear of what will happen to NAPP when I leave.  I realize that Ron Reardon is a very capable person and I know that he will exercise his best efforts in keeping the organization on track.  However, he cannot do it alone.  He is going to need the help of many.  Not only is he going to need volunteers but he is going to need these volunteers to do what they say they are going to do.  My hope is that NAPP will thrive in my absence and continue to grow not only in membership size but in its offerings.  To do this, NAPP will need more than just the efforts of a few.  If you have not considered volunteering in the past, think about it now.  NAPP needs your help in order to remain the organization into which it has evolved!

 


ANNUAL MEETING UPDATE

Celebrate NAPP'S 10th Anniversary  - Alexandria, Virginia July 15-18, 2006

The 2006 NAPP® Annual Meeting will be held in Old Town Alexandria, adjacent to the US Patent and Trademark Office.  The Annual Meeting Committee is now working on programming for next year.

 

 

 

REGIONAL CHAPTER HAPPENINGS
Georgia

At the Georgia Regional Chapter meeting on January 11, 2006, David Nour, founder and managing partner of the Nour Group, Inc., presented attendees with “Relationship Economics™, the Art and Science of Relationships,” which was a guide to quantifying the value of a professional relationship.

This presentation was particularly relevant to NAPP members given the first and fourth elements of the NAPP Mission Statement to: “Promote professional networking and the exchange of ideas between patent professionals and those working in the field of patent law in matters relating to patent prosecution and technology development;” and to “Support patent practitioners in their practices so as to enrich their relationships with their clients.” (www.napp.org/join/index.asp)

The presentation included a call for attendees to spend more time building, nurturing, and investing in key relationships and emphasized understanding relationship currency, accumulating reputation capital, and building professional “net worth.”

The next meeting of the Georgia Regional Chapter is scheduled for April 12, 2006, when former USPTO Administrative Patent Judge, William F. Smith, of Counsel with Dougherty Clements, will present “How to Successfully Navigate the Patent Appeal Process in the USPTO.”  Register here.
New Jersey

Speakers and venues are needed for future regional chapter meetings.  Contact us if you can help.

San Francisco
Speakers and venues are needed for future regional chapter meetings.  Contact us if you can help.

MEMBER BENEFITS
Professional Liability Insurance
Contact Larry Hilton for details at:  925-313-9977.
PCTFILER
Ken Ropke is the contact for the PCTFILER program. Ken can be reached at: 212 217 9345.
ICO Global Patent Search

The ICO Suite of patent research solutions are available to NAPP Members at a substantial discount.

Log on to the NAPP® Member Center for more information about any of these programs.


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