Ron Reardon

While January 1 is traditionally ushered in with fireworks, this January has started with a bang–actually two of them.  The USPTO has published two Notices of Proposed Rule Making, with a deadline of May 3, 2006.  We need your input to formulate a response to both of these initiatives.

See Joy Bryant's article in the Practice Notes section and to click on the links so you may carefully read and evaluate the impact on your practice of:

·     Changes to Practice for the Examination of Claims in Patent Applications; and

·     Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims.

NAPP’s Government Affairs Committee is chaired by Louis Hoffman, who is leading the effort to craft an official NAPP response prior to the deadline.  Several of you have already volunteered via the NAPP Patent Practice Forum to assist Louis–thank you for making the time for this vital work.  I appreciate your commitment.

As 2006 unfolds, there will be multiple opportunities for more of you to volunteer to help NAPP respond to issues that impact your practice.  The Patent Reform Bill is certain to emerge again, probably with significant changes.  How the USPTO determines who can take the Patent Bar is another issue.  I am certain there will be others.  Patent practice will not be boring for the foreseeable future.

In order to develop a balanced view that best represents the NAPP membership, we need each of our members to give us your perspective.  We need your help in addressing these issues.  Please volunteer your time and talent.  To help the Government Affairs Committee or to volunteer for any of the other committees, please contact us.

NAPP’s strength comes from its dedicated, passionate, informed members.  Thanks for making our team stronger and our voice heard.

Other NAPP Notices of Interest:

NAPP has a new fax number:  (757) 220-2231.

NAPP will be mailing a CD compilation of all of the 2005 issues of The Disclosure along with the USPTO Rule changes for 2005 to each of its members.  Members should receive the CD by mid-February.

NAPP members will see a $50 increase in their membership dues for 2006.  This dues increase is to raise sufficient revenue to hire a full-time Executive Director and to keep the organization solvent.

Here They Go Again!  The USPTO proposes more changes to patent practice

By Joy L. Bryant, Esq.

On January 3, 2006 the USPTO announced proposed measures to improve patent examination and reduce the amount of rework. One proposal focuses on limiting claims by requiring applicants to identify the most important claims to an invention.  To see the proposal click here. 

Another proposal requires that second or subsequent continued examination filings be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted.  To see this proposal, click here.

Comments on these proposals are due by May 3, 2006.  NAPP intends to submit formal comments to both of these proposals.  If you would like to comment, please submit your comments on our Contact Us page.

And, as if responding to the above proposals were not enough to keep us busy, the USPTO is also seeking comments on the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility.  Those comments are due by June 30, 2006.

The NAPP® Bookstore

The NAPP® Bookstore has a good compilation of books and resources for patent practitioners.  NAPP is a participant in the Amazon Affiliate program.  What this means that for each book purchased through the NAPP bookstore, NAPP receives a percentage of the profits from Amazon.  Browse through the bookstore, you may find some very useful titles.

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

Examination on Challenge: A Proposal for Improving the Patent System

The United States Patent Office (USPTO) has recently proposed sweeping changes to the Patent Rules to resolve a severe imbalance between available USPTO resources and workload.  Several issues of concern to both patent prosecutors and litigators are identified in the USPTO proposal.  This article proposes to improve patent quality by focusing examination resources on commercially viable patent applications as determined by the request for examination by an interested third party.  Click here to read the full article.

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.
 

Joy L. Bryant, Esq.

HAPPY ANNIVERSARY NAPP!

The year 2006 greets us with the celebration of NAPP's 10th Anniversary as an organization.  It was in January 1996 when 19 patent agents decided to formally organize and incorporate NAPP.  Many of these agents have, like myself, gone on to become attorneys but yet remain active as patent prosecutors.

This month, I have undertaken the project of scanning all NAPP membership files.  As I go through these files, I have run across notes sent to me from supportive members.  NAPP is truly a unique organization from the perspective that a member not only builds professional relationships in the organization but also friendships.  Some of my closest friends were made through NAPP.  I greatly value and appreciate those who have faithfully renewed their memberships in NAPP for the past 10 years.  Without your support, NAPP would never have made it to its present membership number of almost 500 members in 13 countries!

For those members who are new to the organization, I encourage you to try to tie-in and reap the benefits of membership.  It's wonderful to know that such a supportive group of practitioners exists and that you can call on anyone of the members when you have a question or just want to take a break and chat.

Lastly, I would like to wish each of you a very happy and prosperous new year!

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.  If you are interested in speaking, please contact us.  Speakers enjoy a discount rate to attend the meeting.

The next meeting of the Georgia Regional Chapter is scheduled for January 11, 2006, when David Nour of The Nour Group will  speak on "Relationship Economics."

Donna Fugit has agreed to serve as the new Regional Chapter Director for this chapter.  The next  meeting of the New Jersey Regional Chapter will be held in March 2006.