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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

October 2006

Natonal Association of Patent Practitioners

FROM THE PRESIDENT ...

From the President …

Ron Reardon

In last month’s President’s Message, two of the benefits of NAPP® membership were highlighted:

1.    subscribing to the NAPP® Patent Practice ForumTM and/or the NAPP® General Discussion Forum, and

2.    the NAPP® Certification Program.

 

This month’s focus is on another benefit of being a member of NAPP—the NAPP® Job Bank.

 

The NAPP® Job Bank enables employers to post a listing of employment positions in the area of patent law.  Posting to the job bank is free to the employers.  All job postings automatically terminate after 30 days.  Only NAPP members are able to access the employer posted listings.

The NAPP® Job Bank also enables members of NAPP to post their resumes for free.  Only those employers that have registered with the NAPP are able to review the resumes posted by members of NAPP.  Once posted, these resumes remain active until deleted by the NAPP member who posted it.

 

Entries in the NAPP® Job Bank resume template include:

 

·                 Member Name

·                 Status (of NAPP membership)

·                 USPTO Registration Number and Date

·                 Address

·                 Phone Number

·                 Fax Number

·                 E-mail Address

·                 Area(s) of expertise

·                 Experience

·                 Education

·                 Languages

·                 Curriculum Vitae

 

Important aspects of this program for user’s to note include:

 

·       NAPP is not involved in actual contacts between employers and candidates listed on the NAPP Web site. 

·       Users assume all risks associated with dealing with other users with whom they come into contact through the site. 

·       The NAPP assumes no responsibility or liability for any employment decisions made by any individual or entity posting or applying for positions on the site. 

·       Any selection, retention or hire of any individual or entity is based solely on the user’s determination that such hire is suitable for the user’s purposes. 

·       Users release the NAPP, its officers, directors, employees and other representatives from claims, demands and damages arising out of or in any way connected with any disputes between themselves and any other user of the NAPP Web site.

·       No information submitted by users shall reflect, imply, or contribute to any discriminatory actions or practices. 

·       The NAPP reserves the right to reject any information submitted for posting and the right to edit any information posted and to remove offending language or implication if it so chooses. 

·       Users shall take sole responsibility to assure that the content of the information posted is true and accurate and conforms to all applicable laws, standards, and regulations. 

·       Users shall be responsible for the timeliness and removal of any employment opportunities and requirements that are placed on the site.

 

Each month there are new postings from employers offering patent law positions.  If you are looking to make a change from your current situation, whether going from solo practice to corporate, or from your current employer to another employer, the NAPP® Job Bank is one option available to assist you in making that transition.
PRACTICE NOTES
US Patent Practice

EFS-Web Update from the USPTO

The USPTO recently announced that EFS-Web achieved its goal of capturing 10 percent of all new utility and § 371 National Stage applications by Fiscal Year 2006 six weeks ahead of schedule.  The target number of approximately 42,000 applications was reached on August 18, 2006.  EFS-Web has received more than 145,000 submissions since its launch.  Thirty percent of new filings are now received via EFS-Web.

In a recent customer satisfaction survey, nearly 91 percent of respondents indicated that USPTO has been responsive to the needs of the IP community in the creation of EFS-Web.

You can register to receive regular updates on EFS-Web and related eCommerce initiatives from the USPTO by clicking on this link: http://websurveyor.net/wsb.dll/39376/EFS-Update_Subscribe.htm

You can also review EFS-Web materials and frequently asked questions here:  http://www.uspto.gov/ebc/efs_help.html

Help with filing online is available from the EBC Customer Service Center (866 217-9197  or 571-272-4100); e-mail: ebc@uspto.gov.

_______________________________________________

First Action Final after Filing a Continuation or RCE

Under current USPTO policy, if a continuation or RCE is filed with an amendment, the first action may be a final rejection with a new ground of rejection if the changes made in the amendment justified the making of the new ground of rejection—unless the amendment was previously filed as an after final amendment, and it was denied entry on the basis that it raises new issues.

This policy is based on the premise that applicants should submit an after final amendment, since it may be acceptable to the examiner and permit the case to be allowed.  

Even if the examiner may have orally indicated to the applicant that the proposed after final amendment, if filed, would (probably) be denied entry because of raising new issues, submitting the amendment anyway will provide the examiner’s official position on entry.  And, if entry is denied as indicated because it raised new issues, then the examiner would not have been able to make the first action in the RCE a final action.

The views expressed herein may not necessarily be supported by the NAPP, its members, officers, or directors.

 
 
Teleconferences

Inventorship, Sharon Adams, October 10, 2006

 

On October 10, 2006, Sharon Adams will present a NAPP® teleconference on Inventorship, including how to determine inventorship and examples of how to proceed in various situations.  This teleconference is scheduled for 8:00-9:00 pm. Eastern time. To register online, click here.

 


MEMBER ARTICLES

There are no member articles in this issue.


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 - Sean Brennan

Treasurer - Jerry Miller

Secretary - Michelle Stempien

NAPP Directors:

Sharon Adams

Kevin Grierson

David Grossman

Tom Hamill

Louis Hoffman

 

AT

ANNUAL MEETING UPDATE

The 2007 Annual Meeting is to be held in Las Vegas, NV, from July 14-17, 2007.  Watch this space for further details.

 

REGIONAL CHAPTER MEETINGS
Georgia
On September 19, 2006, a moderated discussion panel presented New Frontiers in Patentable Subject Matter. The panel included NAPP President, Ron Reardon, and was moderated by Brad Crose, an attorney at Dougherty Clements. Further details on this meeting are available here The next meeting of the Georgia Regional Chapter is scheduled for January 2007.
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 announced in due course.

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.


Natonal Association of Patent Practitioners
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