Ron Reardon

From the President …

Ron Reardon

There are many benefits to being a member of NAPP.  Many of you subscribe to the NAPP® Patent Practice Forum^TM, the NAPP® General Discussion Forum, or both.  While there is a core group that is highly active on these forums, the majority of subscribers “listen in” and gain value from the lively discussion of issues.

Another benefit of being a member of NAPP is the NAPP® Certification Program.  Since this program was initiated, more and more members of NAPP have become NAPP® certified.  For those of you who are not familiar with the NAPP® Certification Program, it is a voluntary program for NAPP members who have a desire to subscribe to a set of standards above the minimum standards set by the United States Patent and Trademark Office (USPTO) 

There are several benefits of practicing these standards, including following time-proven approaches to client representation-screening-communication-education, letters of engagement-disengagement, docketing, fee management and advertising-solicitation, as well as discounts for professional liability insurance.

General Aspects of the Program

In general, the NAPP® Certification Program requires each participant to subscribe to a set of standards set forth in the NAPP® Best Practices document.  In addition, each participant is required to complete at least 8 credit hours of NAPP® Certification Credits in a calendar year.  This requirement helps to ensure that each participant is current with respect to various changes in the patent laws and rules of practice before the USPTO.

Any NAPP member meeting all of the criteria below is qualified for certification.  Certification is in effect as long as the certified member continues to satisfy the following criteria:

1. Must be a member in good standing of the USPTO Bar.  Attorneys must also be a member in good standing of their state bar;

2. Must be a practitioner member of the NAPP - No limit on the number of years;

3. Must complete and submit the application for certification along with the application fee;

4. Must certify that the member subscribes to the practices set forth in the NAPP® Best Practices document;

5. Must complete at least 8 credit hours of NAPP® Certification credits during a calendar year (e.g. by attending the annual meeting, the nuts & bolts short course, NAPP® regional chapter meetings, NAPP® teleconferences); and

6. Must pay the annual renewal fee by January 31 of each calendar year (the fee is invoiced at the end of each calendar year).

Many of you are already practicing all of the elements required by the NAPP® Certification Program, so why not gain recognition for your commitment to professionalism by becoming NAPP® certified.  Go to the NAPP Member Center today to learn more about this exciting benefit of your membership. 

Are your USPTO forms up to date?

In July 2006, the USPTO updated the following forms:

SB01  Declaration for Utility or Design Patent Application
SB01A  Declaration (37 CFR 1.63) for Utility or Design Application Using An Application Data Sheet (37 CFR 1.76)
SB02  Declaration (Additional Inventors) and Supplemental Priority Data Sheet
SB05  Utility Patent Application Transmittal
SB08A (pg 1) and SB08B (pg 2)  Information Disclosure Statement by Applicant
SB16  Provisional Application for Patent Cover Sheet
SB25  Terminal Disclaimer to Obviate a Provisional Double Patenting Rejection over a Pending Second Application
SB26  Terminal Disclaimer to Obviate a Double Patenting Rejection over a Prior Patent
SB30  Request for Continued Examination (RCE) Transmittal
SB32  Request for Oral Hearing before the Board of Patent Appeals and Interferences                                           SB62  Terminal Disclaimer to Accompany Petition (Period Specified)
SB63  Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)
SB64  Petition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b)
SB64a  Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)).

For information on updates for other PTO Forms, see http://www.uspto.gov/web/forms/index.html#patent

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USPTO's Draft Strategic Plan 2007-2012

The USPTO has released a draft five-year strategic plan, designed to foster American innovation and competitiveness in the US and globally, for which public comment is being solicited.  A public forum on the draft strategic plan will be held on September 26, 2006 at USPTO headquarters.  Details of the proposed plan are at http://www.access.gpo.gov/su_docs/fedreg/a060824c.html. 

The Government Performance and Results Act of 1993 requires Federal agencies to establish a strategic plan covering not less than a five-year period, and to solicit the views and suggestions of those entities potentially affected by or interested in the plan.  On March 14, 2006, the USPTO posted a notice soliciting public input and establishing an e-mail box (StrategicPlanning1@uspto.gov) for the public’s use in submitting comments that the agency should consider in developing the new plan.

The draft plan, which includes a description of the strategic goals, objectives, and significant actions that the USPTO plans to take in order to accomplish its mission, is available at http://www.uspto.gov/web/offices/com/strat2007/.  The USPTO welcomes input from organizations, public bodies, and other stakeholders.  The final plan is anticipated to be published on the USPTO Web site in early calendar year 2007.

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

Changing Standards for Compliance with the Written Description Requirement

By Sean M. Brennan, Ph.D.

The separability of the written description and enablement requirements of the first paragraph of 35 U.S.C. § 112 was first articulated by the CCPA in 1967.  Functions for the application of the separate written description requirement, and criteria for its satisfaction, were developed over the next three decades.  In the mid-1990s, the Federal Circuit added a new function, and a new criterion for compliance, for cases in the biotechnology arts.  Heightened thresholds for written description now appear to be spreading into other technological areas.  Recent Federal Circuit decisions have moderated the more extreme aspects of the new thresholds for written description compliance.  Click here to access 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.
 

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 2006 NAPP® Annual Meeting was held from July 15-18 in Old Town Alexandria, VA.

The 2007 Annual Meeting will be held in Las Vegas, NV, from July 14-17, 2007.

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.