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Natonal Association of Patent Practitioners

THE DISCLOSURE®

Newsletter of the National Association of Patent Practitioners

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

May 2006

Natonal Association of Patent Practitioners

FROM THE PRESIDENT ...

Ron Reardon

Preparations for the 2006 NAPP® Annual Meeting are proceeding at full throttle.  NAPP founder Joy Bryant has been hard at work coordinating all of the many details for what is shaping up to be a premier event.  The annual meeting brochures have been designed, printed, and mailed.  Hotel and meeting arrangements have been finalized.  Sponsors have been enlisted for Monday’s luncheon, afternoon break, and 10th Anniversary evening reception.  Almost all of the presentations have already been sent to me.

This year’s annual meeting will be held at the Embassy Suites Hotel in Alexandria—just a short walk from the USPTO campus.  The King Street Metrorail station is directly across from the hotel and is just two stops from the Ronald Reagan Airport station.

CLE credit will be applied for in Virginia, North Carolina, and Pennsylvania in early May.  Joy has structured the Tuesday program to be dedicated entirely to Ethics so we can apply for Ethics CLE credit for that portion of our program.  We will notify meeting registrants when we receive notice from these state bars.  For those of you who are (or planning to be) NAPP® certified, both the Nuts & Bolts of Patent Prosecution Practice Short Course and the Annual Meeting can earn you certification credits for the NAPP® Certification Program.

The annual meeting program includes presentations from USPTO representatives Joni Chang (Rule Package Update), USPTO Commissioner John Doll (21st Century Plan  Update), William Stryjewski (EFS-Web), and Harry Moatz (Avoiding Disciplinary Actions).  Jay Erstling from WIPO will present on PCT Rule Changes.  The remaining slate of speakers and topics are equally powerful.

There will also be hands-on training with EFS-Web for a fortunate few (16 to be exact), at the USPTO on Tuesday from 4:00 pm. to 6:00 pm.  To reserve your space for this training session, call the NAPP at 800-216-9588.

This year’s program provides a superb opportunity for networking, training, and strengthening of relationships.  There is limited seating available this year so register early to reserve your spot.

 

 

 

 

 

 

 

PRACTICE NOTES
US Patent Practice

NAPP’s Comments on USPTO Proposed Rule Making

By David J. Robeson, Ph.D.

On January 3, 2006 the USPTO published notices of proposed rule making related to: 1. Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, and 2. Changes to Practice for the Examination of Claims in Patent Applications.  The notices for items 1. and 2. are available at www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf and www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf, respectively.  The deadline for receipt of written comments on the USPTO’s notices of proposed rule making related to items 1. and 2. is May 3, 2006. 

Under the direction of Louis Hoffman, Government Affairs Liaison, the NAPP will submit, on or before the deadline, a detailed set of comments on the USPTO’s proposed rules related to both continuing application/continued examination practice and claim selection.  NAPP’s comments will be available via the NAPP Web site (www.napp.org) in due course.

 

 
 
Teleconferences

How To Successfully Navigate The Patent Appeal Process In the USPTO.  May 24, 2006, 8:00-9:00 pm. Eastern Time

Former USPTO Administrative Patent Judge, William F. Smith will cover what items should be considered before and during the patent appeal process in the USPTO.  To register for this teleconference, click here.


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.

Nanotechnology and the USPTO

By David J. Robeson, Ph.D. 

Nanotechnology, which now receives annual federal funding of about $1 billion, has been predicted to have a revolutionary effect in transforming society in the 21st century.  In an attempt to accommodate examination of an increasing number of nanotech-related patent applications, the USPTO began a project in 2001 to identify nanotechnology-related U.S. documents.  This project has led to the recent introduction of Class 977 cross-reference art collection, which represents a major advance in facilitating search and examination of nanotechnology-related U.S. patent applications.  Click here to access this article (PDF).

 

 


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.
 


About The Disclosure®

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

 

AT

ANNUAL MEETING UPDATE

Celebrate NAPP'S 10th AnniversaryAlexandria, 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.  Registration for the  meeting is now available.  Space is limited to 150 attendees for the meeting and 40 attendees for the short course.  Register before June 20 to take advantage of the lower (early) registration fee.

A special hands-on EFS-Web program will be available to 16 attendees after the meeting concludes on July 18.  To register for this training session, contact us online, or call 800-216-9588.

 

REGIONAL CHAPTER MEETINGS
Georgia

At the Georgia Regional Chapter meeting on April 12, 2006, former USPTO Administrative Patent Judge William F. Smith, of Counsel with Dougherty Clements, presented “How to Successfully Navigate the Patent Appeal Process in the USPTO.”

Judge Smith had a 33-year career in the USPTO, the last 19 years of which were at the Board of Patent Appeals and Interferences (BPAI).

Judge Smith’s presentation was of particular interest to those NAPP members who have already experienced the appeal process or are anticipating an appeal.  The presentation included a review of five key topical appeal areas: the pre-appeal brief, the appeal brief, the Examiner’s answer, the oral argument, and post-decision practice.

The next meeting of the Georgia Regional Chapter is scheduled for September 2006.
New Jersey

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.

San Francisco
The next meeting of the San Francisco Bay Area Regional Chapter will be held from 5:00-7:00 pm. on Wednesday May 17, 2006 at Cornerstone Law Group, 595 Market Street, San Francisco, CA, Suite 960.  Cornerstone's location is easy to reach at the corner of Market and 2nd Street, directly adjacent to the Montgomery Street BART station.  Brent Capehart, of LaRiviere, Grubman and Payne, will present some updated issues in Phillips v. AWH.  Brent and his firm have been involved in this litigation.  Brent will also give a brief update on case law with respect to the USPTO’s disclosure guidelines.  Click here to register.

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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