Anthony P. Venturino, Esq.

The Patent Reform Act currently winding its way through the hallowed halls of Congress is on the radar screens of NAPP’s officers and directors as well as many NAPP members. Some provisions of the current bill could help patent owners, but others alter the US patent landscape in harmful ways.

NAPP’s Government Affairs Committee is working on comments regarding this legislation and will post the comments on our website. This is a challenging project and rife with the possibility for dissent because NAPP members may have differing views on different parts of the statute. However, this is just one battle. NAPP members must not let differences in approach in this one battle affect NAPP winning its war against bad patent prosecution.

Differing views are healthy, but as professionals we have to be able to disagree without being disagreeable. Part of being a professional is the ability to stay the course when the chips are down and to make a point in a professional manner without being antagonistic. There is nothing wrong with differing viewpoints and, although we may disagree on some issues today, we may agree on other issues tomorrow. Members of NAPP respect these viewpoints, making NAPP a refuge for many. Regardless of how bad your day is going with work or clients or whatever, you should be able to turn to the discussion lists and see a group of friendly professionals waiting to help.

Incorporation by Reference

In September 2004, the USPTO implemented new rule 37 CFR 1.57, adding sections (b)-(g) which address incorporation by reference of essential and nonessential material.  Specific language referring to the material to be incorporated must be used to trigger an incorporation by reference, particularly where incorporation is essential to a 35 USC 112, sixth paragraph evaluation of the means or steps to perform a function.  Use must be made of the perfecting words "incorporation by reference" or to the root words "incorporate" (e.g., incorporating, incorporated) and "reference" (e.g., referencing). 

Incorporation of essential material from an allowed application with the issue fee paid, is no longer permitted (section 1.57(c)).

Incorporation of essential material from an application which has been published, which does not itself incorporate such material, is now permitted (section 1.57(c)).

A prohibition against hyperlink or other browser incorporation is set forth in section 1.57(d).

An incorporation of material by reference that does not comply with paragraphs (b) or (c) of section 1.57 is not effective to incorporate such material unless corrected as set forth in section 1.57 within any time period set by the Office, but in no case later than the close of prosecution as defined by section 1.114(b), or abandonment of the application, whichever occurs earlier (section 1.57(g)).

Foreign Patent Practice

Saving Money with Co-Pending PCT Applications

By Justin Simpson

Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse. A PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries’ patent systems need to be taken into account when amending and adding claims, both during the international phase and when entering the national phase.  For more information click here.

Patent Practice Forum to be Divided

The NAPP Patent Practice Forum will be divided into two e-mail discussion lists.  The one discussion list (list-practice) will restrict the discussion to patent practice matters only.  The second discussion list (list-other) will be available for general discussions between members.  Members will need to sign-up for the lists in order to receive the e-mail.  Guidelines and registration will be available in the Member Center pages of the NAPP web site in mid-May.

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

Member article submissions are appreciated.  No members submitted articles for the month of April.

Joy L. Bryant, Esq.

The attention of NAPP's administrative staff has been focused on preparations for the 2005 Annual Meeting.  Annual meeting brochures have been designed, printed and mailed.  CLE credit has been applied for in California, Virginia, North Carolina, and Pennsylvania.  We will notify meeting registrants when we receive notice from the state bars. 

The USPTO is seeking comments with respect to proposed rule changes concerning persons granted limited recognition to prosecute patent applications and other miscellaneous matters.  Comments are due on or before June 6, 2005.  NAPP will be reviewing the proposed rulemaking and will make a decision whether or not to comment.

San Francisco, July 16-19, 2005

Detailed information about the Annual Meeting as well as on-line registration is now available. The Annual Meeting brochures were mailed the last week of April. Featured speakers include Joni Chang from the USPTO who will provide the USPTO Rule Package update. John Doll of the USPTO has been invited to be our luncheon speaker. To register for the Annual Meeting click here.

The Georgia Regional Chapter held its meeting on April 13. This meeting centered on a panel discussion on how companies select and evaluate patent practitioners. The next regional chapter meeting will be in September.  Hayden Gregory, lobbyist for the American Bar Association, will provide a briefing on the proposed Patent Act of 2005.  For more details and to register, click here.

The New Jersey Regional Chapter will hold its next meeting in June. Ray Mignogna has volunteered to serve as the chapter's new director.  Tom Beck will present on petition practice.  For more details, click here.

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.