Ron Reardon

A continuing goal of the NAPP leadership is to increase the value of membership.  One of the ways that this is being accomplished is by providing teleconferences on topics related to patent practice.  Since our membership is dispersed through almost every state in the U.S., as well as 15 foreign countries, teleconferences provide a convenient forum in which important information can be readily exchanged.  Our teleconferences are for one hour, and start at 8:00 pm. Eastern time in order to accommodate participants from various time zones.

Recently we have had teleconferences on Engagement Letters, Web Site Hints, and Navigating the Patent Appeal Process.  Each of these was well attended, and the feedback was overwhelmingly favorable.  Some of you have shared on the discussion list that we should have more teleconferences of the same high quality.

We are working to develop additional teleconferences on various topics so that our members will have the opportunity to increase the level of their professionalism in these areas.  Proposed topics include: Docketing Systems, Amendments, Rule Changes, Provisional Applications, Client Screening and Interviews, Patentability Opinions, and Restriction Requirements. 

Suggestions for additional topics are welcome.  If you have expertise in any of these topics, or other topics of potential interest to the membership, please contact me.   

Another way that NAPP adds value to its membership is through the NAPP® Certification Program.  Twenty-nine of our members have taken advantage of this program since its inception last year.  One advantage to participants in this program is that they qualify for a discounted rate for liability insurance with Dominion Insurance Services. 

Elements of the program include subscribing to a set of standards set forth in the NAPP® Best Practices document, and earning at least 8 credit hours of NAPP® Certification Credits in a calendar year.  Certification credits are earned by attending NAPP’s regional chapter meetings, teleconferences, the annual short course, and the annual meeting, as well as by completing state bar certified courses in the area of patent law.  Details of the NAPP® Certification Program can be obtained by logging in to the Member Center at www.napp.org and selecting Certification in the left tool bar.

The NAPP® Best Practices document addresses standards in important areas of patent prosecution practice, including: the representation, screening, communication with and education of clients; advertising and solicitation; letters of engagement/disengagement; calendars/docketing; and fee management.

Improving the professionalism of our members is at the heart of why NAPP exists, and drives our continued growth as an organization.  I congratulate those of you who have participated in these programs; and I know that you will see positive results in your practice.

Notice of Collection of Practitioners’ E-mail Addresses

The following is based on a notice issued by Mr. Harry Moatz, Director of Enrollment and Discipline, on May 11, 2006 (www.uspto.gov/go/dcom/olia/oed/e-mail.htm).

The United States Patent and Trademark Office (Office) is in the process of implementing 37 CFR § 11.11, under which each “registered practitioner must notify the OED Director of up to three e-mail addresses where he or she receives e-mail.”  Gathering e-mail addresses for each registered patent attorney and patent agent will facilitate and increase the ability of the Office to communicate with registered practitioners.  The Office anticipates implementing automated notifications to registered practitioners of notices and IT system alerts, as well as inviting registered practitioners to attend conferences and other Office events.

By this notice, practitioners are being requested to provide up to three e-mail addresses where they can receive communications from the Office.  The collection of e-mail addresses is being implemented using a two-step process:

1) a practitioner sends an e-mail addressed to
PractitionerE-mailAddresses@uspto.gov with the following information in the following sequence in plain text: the practitioner’s last name, first name and middle name; the practitioner’s registration number; and up to three e-mail addresses for the practitioner.  Semicolons should separate multiple e-mail addresses from each other.  The e-mail sending the addresses must be sent from one of the three furnished addresses.

2) the practitioner sends a confirmation letter addressed to Mail Stop OED, USPTO, P.O. Box 1450, Alexandria, Virginia 22313-1450.  In the confirmation letter, the practitioner confirms over his or her original, personal signature the submission of the e-mail addresses to be used for the practitioner.  The confirmation letter must include the same information as in the e-mail, preferably with the e-mail addresses in the same order.  Facsimiles are not acceptable. 37 CFR § 1.4(e).  Letters from law firms or corporate legal departments may provide confirmation for several registered practitioners, but must be signed by each practitioner.

Following receipt of the confirmation letter, the e-mail address(es) will be copied from the received e-mail and pasted into the database.  The Office of Enrollment and Discipline (OED) will inform the practitioner by e-mail of the receipt of the confirmation letter and the inclusion of the practitioner’s e-mail address(es) on the roster.

Practitioners will be responsible for updating OED with each and every change of e-mail addresses.  Until further notice, the e-mail addresses must be updated using the foregoing steps.  Plain text is necessary inasmuch as the e-mail addresses will be copied and pasted from the practitioner's e-mail into the database.  Submission of e-mail addresses in PDF format or other means requiring the address to be typed into a database will not be accepted.  The gathered e-mail information will not be published or otherwise made available to the public.

NAPP’s Comments on USPTO Proposed Rule Making

On January 3, 2006 the USPTO published notices of proposed rule making related to Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims (www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf) and Changes to Practice for the Examination of Claims in Patent Applications (www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf).

On May 24th, former USPTO Administrative Patent Judge, William F. Smith, of Counsel with Dougherty Clements, presented a teleconference on “How to Successfully Navigate the Patent Appeal Process in the USPTO.”  Watch this space for future NAPP® teleconferences on topics related to patent practice.

There are no member articles for this issue.  Please see below for information on the submission of articles.

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.

The Disclosure® is a trademark of the National Association of Patent Practitioners.

The Disclosure® is published monthly and is made available to NAPP members and the general public.

Editor:  David Robeson

©2006 National Association of Patent Practitioners.  All rights reserved.

NAPP Officers:

President - G. Ron Reardon

Vice President - Rich Farr

Treasurer - Donna Fugit

Secretary - Michelle Stempien

NAPP Directors:

Joy Bryant

Scott Chambers

Kevin Grierson

Gary Smith

Kirk Wilson

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

We are nearing the final stages of preparation for NAPP's 10th Anniversary Meeting to be held July 15-18 in Alexandria, Virginia.  Applications for CLE credit have been submitted to the Virginia, Pennsylvania, and North Carolina state bars.  We hope to obtain credit for both the short course and the annual meeting programs.  As usual, NAPP® Certification Credits will be granted for both programs.

Also, for those who may be interested in having hands-on training for EFS-Web, there will be a special follow-on session at the USPTO after our meeting ends on Tuesday, July 18.  For security reasons, you must register for this session in advance.  To register call 800-216-9588.

The cut-off date for NAPP's room block at the Embassy Suites hotel is June 20.  This is also the same cut-off date for early registration.  Register early now and save $200!

This year's program will be one of the best programs NAPP has ever offered!  We hope to see you there!

The New Jersey Regional Chapter needs volunteers to help organize NAPP regional meetings in the New Jersey area.  If you are interested in volunteering, please contact us.