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Natonal Association of Patent Practitioners

THE DISCLOSURE®

Newsletter of the National Association of Patent Practitioners (NAPP®)

The NAPP is an association focused on patent prosecution practice since 1996.

April 2007

Natonal Association of Patent Practitioners

FROM THE PRESIDENT ...

Ron Reardon

The NAPP® Short Course and  NAPP® Annual Meeting, including the 2007 Patent Practice Update, are just a few months away! 

I still remember being a newly minted patent practitioner, registration paper still wet, and going on the Internet to find organizations that could help me with my practice.  During my kayaking days I paddled with two doctors who shared with me that after they graduated from medical school they were not qualified to actually “practice” on patients.  They needed to link up with experienced doctors, observe and learn, in order to develop their skills.

That lesson led me to search out NAPP so I could get some grounding in the fundamentals of patent practice.  As you know, passing the Patent Bar does not necessarily mean that you have the requisite skills for crafting and prosecuting a patent application.

The Short Course, “Nuts & Bolts of Patent Prosecution,” was exactly what I needed to jump-start my practice.  It gave me the basics on invention disclosures, interviewing the inventor, searching, basic claim writing, responding to office actions, examiner interviews, etc.  I received condensed learning and made critical contacts that shaved years off of my learning curve.

I must admit that the information shared at that year’s Patent Practice Update was similar to trying to get a drink from a fire hose!  Most of the information was over my head at the time.  However, it made me realize how much I did not know and whetted my appetite to learn more.  I vowed to return year after year.  If I only got one nugget of gold that would take my practice to the next level, it justified the time and resources of attending.

I plugged into the NAPP e-mail discussion list (now the NAPP® Patent Practice Forum™) and was a silent “listener” for quite some time.  When hypothetical questions were posed by other practitioners I remained silent, primarily because I had insufficient knowledge to respond.  Seeing the responses of more experienced practitioners prepared me for future similar situations and continued to shorten my learning curve.  Having the ability to tap into the experience of other practitioners across the country (and around the world) between annual meetings was of immense value to me.

The 2007 Annual Meeting Committee has crafted a superb program this year.  This year’s Short Course has been re-designed to sequentially cover the essential areas needed by practitioners with 0 to 3 years of experience.  This session is also attended by more experienced practitioners who share their war stories during the question and answer sessions, thus providing an unmatched depth of knowledge.

At the NAPP® Annual Meeting on Sunday July 15 we will elect Officers for the next two-year term and also recognize individuals who have contributed significantly to NAPP’s growth.

The 2007 Patent Practice Update is a must-attend event, with expert speakers covering key topics such as Patent Law Reform, Patent Appeals, Federal Circuit Update, Ethical Issues, Obviousness … this list goes on and on.

Mark your calendars for July 14-17.  We will be at the Monte Carlo resort in Las Vegas.  Details for registration will be available shortly.  I look forward to seeing each of you there.

 

 
PRACTICE NOTES
US Patent Practice

USPTO Interim Procedures Related to Proposed Rule Changes

Proposed rule changes related to PCT practice were  announced in the March 2007 issue of The Disclosure®.  The purpose of the proposed rule changes is to conform sections of 37 CFR to amendments to the Regulations under the PCT, the latter effective April 1, 2007.  The proposed changes to37 CFR relate to requests for the restoration of a right of priority, insertion of a missing portion of an international application without losing the international filing date, and the correction of an obvious mistake in an international application.  Notice of interim procedures to be followed by the USPTO, pending the effective date of the proposed changes to 37 CFR, is provided in the Notice entitled Interim Procedures for Implementing the April 1, 2007, Changes to the Regulations Under the Patent Cooperation Treaty and Status of Proposed Fee Changes (signed 30 March 2007).  Further information is available at: 

http://www.uspto.gov/web/offices/pac/dapp/opla/ preognotice /pct_interim_procedures.pdf. This notice also clarifies the status of the search and supplemental search fees, which will be unchanged pending the effective date of the final rule.

---------------------------------------------------------------------First Accelerated Examination Patent Issued

The first patent to issue under the USPTO’s Accelerated Examination (AE) program issued on March 13, 2007 on an application filed with the USPTO on September 29, 2006.  Thus, this patent issued less than six months after filing, i.e., in about 75% less time than the average review time (>2 years) for applications in the same technological field under “normal” (non-accelerated) examination.

The AE program, which began in August 2006, requires applicants to conduct a prior art search, to explain what the prior art teaches and how their invention is different from the prior art.  The number of claims in each patent application under AE is limited, and time periods for responding to most USPTO communications are shortened.  More detailed information on the procedural aspects of accelerated examination can be found in the article entitled “Accelerated Examination: Procedure,” (The Disclosure®, January 2007 (http://www.napp.org/disclosure/2007%20Issues/Janu.%2007.html)).

Teleconferences

 

The next NAPP® Teleconference will be announced in due course.


ARTICLES
Editorship of The Disclosure®

David Robeson, editor of The Disclosure® for NAPP since 2000, will transition his responsibilities to Peter Giancana with the May 2007 issue.  Since I have been a newsletter editor for several professional organizations myself I know the effort and frustration required for this position.

Over the years David has successfully gathered patent related articles and information from members and non-members.  Extracting this material from individuals with maxed-out schedules is not an easy task and I admire David’s initiative and tenacity in providing us with timely informative articles and information. 

On behalf of the entire NAPP organization I want to thank David for his contributions to both the previous paper version and the current electronic version of The Disclosure®.  David, we will miss having you at the helm of The Disclosure® and wish you a well deserved rest.

Ron Reardon, President - NAPP

 


The Disclosure® welcomes the submission of articles on topics related to US and foreign patent practice.  To submit  an article to The Disclosure®, please contact the staff.
 


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

©2007 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 NAPP® Annual Meeting and Short Course will be held July 14-17, 2007 at the Monte Carlo Resort and Casino in Las Vegas, NV.  Further details and registration information will be provided soon.

 

REGIONAL CHAPTER MEETINGS
Georgia

The next meeting of the Georgia chapter will be announced in due course.

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
On March 14, 2007 Craig Largent of Townsend and Townsend and Crew LLP gave a presentation on PCT Practice at Santa Clara University.

The next meeting of the San Francisco Bay Area Regional Chapter is tentatively scheduled for late May 2007 at the offices of Townsend and Townsend and Crew LLP in Walnut Creek, CA.


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. Please refer to the President's message of this issue for further information on the ICO Global Patent Search program.

Log on to the NAPP® Member Center for more information about any of these programs.

Natonal Association of Patent Practitioners
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