Ron Reardon

Last month, Julie Burke of the USPTO led an outstanding NAPP® Teleconference on Restriction Practice.  There is just no substitute for getting firsthand information, on a subject of immense interest and relevance to our members, drawn from the examiner’s training materials.  Furthermore, Julie has kindly agreed to conduct a series of follow-up teleconferences, each focusing on a particular aspect of restriction practice. 

These teleconferences are a direct result of my initiating dialogue with John Doll, Commissioner for Patents, on how we, as patent practitioners, could help reduce the growing backlog of patent applications pending at the USPTO.  I shared with him the frustration some of us have had with restriction requirements, and the need for our membership to be better informed on this subject.  It is testimony to the 10 years of relationships with the USPTO, built by my predecessors at the NAPP, that Mr. Doll directed John LeGuyader to make this sharing of information happen.   

The next NAPP® Teleconference, however, will be presented on February 6, 2007 by NAPP member Stan Antolin, who will share his expertise on responding to common Office actions.  While Stan’s teleconference is targeted primarily at practitioners with three years or less of experience, I have found that it is good to get refreshed on the basics from time to time.

Another great resource for practitioners looking to gain more expertise is the NAPP® Bookstore.  You can access the bookstore via a link under “Resources” on the NAPP® Web site.  There you will find listed a compilation of books that various NAPP members have found to be useful.  In addition to stalwarts such as Sheldon’s How to Write a Patent Application, Donner’s Patent Prosecution: Practice & Procedure before the U.S. Patent Office, and Landis on Mechanics of Patent Claim Drafting; my personal favorites are Poll’s Business of Law and Harding’s Rain Making: The Professionals Guide to Attracting New Clients.  Finally, every NAPP member should read Bryant’s foundational work for inventors: Protecting Your Ideas.

Also, I would like to take this opportunity to thank those of you sharing your expertise in the NAPP discussion lists.  This has proven to be an invaluable forum for those of us stumped with a one-off situation in our practice where our research of the MPEP still leaves us with questions; such questions often being answered quickly and authoritatively as a result of the collective wisdom of the discussion list participants.

Rule Changes Related to Electronic Filing of Patent Correspondence

On January 23, 2007 sections 1.4, 1.6, 1.8, and 1.33 of 37 CFR were amended to further support electronic filing of correspondence via EFS-Web (see, e.g., EFS-Web: An Overview, The Disclosure®, April 2006).  These rule changes apply to any patent correspondence filed with the USPTO on or after January 23, 2007.  Further information is available at: http://www.uspto.gov/web/offices/com/sol/notices/72fr2770.pdf

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Rule Changes for Priority Document Exchange between IP Offices

Sections 1.14, 1.19, and 1.55 of 37 CFR were amended effective January 16, 2007 to implement electronic transfer of certified copies of priority documents between the USPTO and the European Patent Office (EPO).  These changes are consistent with a goal of the USPTO's 21st Century Strategic Plan to electronically exchange information and documents between IP offices.  Further information is available at:

http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

Responding to USPTO Office Actions

The next NAPP® Teleconference will be on February 6, 2007 from 8:00 - 9:00 pm. Eastern time, when Stan Antolin will enlighten participants on how to respond to USPTO correspondence.  This teleconference is ideal for brand new patent practitioners, as well as practitioners with 3 years or less of experience.  To register, click here.

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

Computer Implemented Inventions in the UK and European Patent Offices

 By Steven Gross

Summary: Computer implemented inventions, also referred to as “software patents” or “business method patents,” are a source of considerable confusion amongst applicants, patent practitioners, and examiners.  This confusion is compounded by the variation in approach to such inventions by different national and regional patent offices.  This article is concerned primarily with the examination of patent applications for computer implemented inventions in the UK Patent Office.  Click here to access the 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 contact the staff.
 

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 2007 NAPP® Annual Meeting will be held in Las Vegas, NV, July 14-17, 2007.  Further details and registration information will be provided here.

On  January 17^th, 2007  NAPP President Ron Reardon presented “Strategies for Growing Your Practice.”  The next meeting of the Georgia chapter will be announced in due course.

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.