Ron Reardon

In last month’s President’s Message, I shared with you another of the benefits of being a member of NAPP—the NAPP® Job Bank.  This month’s highlight is access to Professional Liability Insurance.

Appropriate insurance coverage is critical to the success and proper management of any professional practice, including that of a busy patent practitioner.  That's why the NAPP has worked closely with Dominion Insurance Services, Inc. to develop a professional liability insurance policy specifically tailored to the needs of patent practitioners.

Covered professional services under the standard policy form include the following:

•                    Conducting patent searches;

•                    Rendering opinions regarding patentability;

•                    Preparing patent applications;

•                    Prosecuting U.S. patent applications;

•                    Performing Patent Cooperation Treaty filings;

•                    Recording patent assignments;

•                    Recording licensing agreements;

•                    Performing patent maintenance filings.

By endorsement under the NAPP® Plus program, coverage can be expanded to also include:

•                    Rendering market clearance opinions;

•                    Performing trademark or copyright work; and

•                    Serving as an expert witness.

The NAPP® Plus program also includes expanded coverage for the defense of professional disciplinary actions, as well as a 50% reduction in the deductible for claims resolved by means of Alternative Dispute Resolution.

Premium discounts are available to members who have completed the NAPP® Certification Program.

To apply for patent practitioner professional liability insurance, log on to the Member Center at www.napp.org and simply download and complete the application form, together with all relevant supplements.  The application can be completed on-line.

When you provide professional services to others, it is important to have the coverage provided by professional liability insurance.  The peace of mind that accompanies such coverage allows you to focus on your practice so you can succeed in today's competitive and challenging environment.

PTO Policy on Reexamining Fewer Than All Patent Claims

On October 5, 2006 the USPTO issued a notice clarifying its policy on reexamining fewer than all claims of a patent for which reexamination was requested.

The PTO is not required to examine all claims in a patent when a request for ex parte reexamination (35 USC 302) or inter partes reexamination (35 USC 311) results in the PTO determining that a substantial new question of patentability (SNQ) is raised for at least one claim.  Rather, the scope of inter partes reexamination need not exceed those claims for which inter partes review has been requested.  Notwithstanding the statutory requirements, the PTO, at its discretion, may review claims for which reexamination was not requested.

Current PTO policy is as follows:

1. Regarding the PTO’s determination on the request: if reexamination is requested for fewer than all of the patent claims, the PTO’s determination (i.e., whether reexamination is granted or denied) will generally be based on a review on the merits of only those claims for which reexamination was requested.

2. Regarding the examination stage of reexamination proceedings: the PTO will generally examine only those claims for which reexamination was requested and for which a SNQ was raised.

Docketing, Jim Young, November 1, 2006

On November 1, 2006 Jim Young of Flextrac Systems, Inc. presented a NAPP® Teleconference on docketing systems for intellectual property cases.

Future teleconferences will be announced here and on the NAPP Web site (www.napp.org).

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

The Muddy Metaphysics of Joint Inventorship

By:  Sharon Adams

Identifying the correct inventors on a patent is essential—incorrect inventorship can be grounds to invalidate a patent if there has been deceptive intent in listing the inventors; likewise, inequitable conduct in omitting an inventor may render a patent unenforceable.  Furthermore, incorrect inventorship can hamper infringement litigation.  Thus, correct inventorship is crucial for patent validity, enforceability, and for protecting the invention from infringement.  Click here to access the 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.
 

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 - Sean Brennan

Treasurer - Jerry Miller

Secretary - Michelle Stempien

NAPP Directors:

Sharon Adams

Kevin Grierson

David Grossman

Tom Hamill

Louis Hoffman

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.