Anthony P. Venturino, Esq.

Welcome to our new Vice President Ron Reardon.  Ron will bring a wealth of experience and insight to the position.  I’d like to remind the membership that we will hold elections of officers at the 2005 Annual Meeting.  Being an officer is a great way to serve the membership and our profession.  I strongly recommend that qualified members with the desire and energy to be an officer contact Joy Bryant at napp@napp.org. 

NAPP helps us keep up with trends and changes in patent law whether the changes result from the Patent Office or from decisions by the courts. 

In a recent case it appears that at least one panel of the Federal Circuit is swinging the pendulum with respect to  "patents benefit competition vs. patents inhibit competition" in the area of tying.  The business concept of tying dates back to the earliest of commercial activities.  Tying results from a merchant selling wanted items to a purchaser under the condition that the purchaser also buy unwanted items.  Often, this is the only way to ensure that some items will be sold.  Whenever owners of tied marketable commodities possess sufficient market power, consumers may have no choice but to comply, and purchase the tied product.  Such situations have been made illegal under antitrust laws as they are considered harmful to a free market. 

Tying a sale or license of a desirable patent or patented goods to a less desirable patent or unpatented goods could be an antitrust violation or patent misuse.  Many years ago, patent owners were presumed to have economic power to accomplish an unlawful tie, regardless of the reality of the market situation.  However, in 1988 Congress passed 35 USC 271(d)(5) to make it clear that tying the license of any rights to a patent, or sale of a patented product, on the acquisition of a license to another patent or purchase of a separate product, is not grounds for patent misuse, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.  Thus, it would have been logical to require the party alleging that tying is patent misuse or an antitrust violation to have the burden to prove by economic analysis that the patent had market power. 

However, on January 25, 2005, the Federal Circuit in the case of Independent Ink, Inc. v. Illinois Tool Works, Inc., held that in determining if patent tying is an antitrust violation under Section I of the Sherman Act, a rebuttable presumption of market power arises from the possession of a patent over a tying product. Therefore, the burden will now be shifted to the patent holder to rebut the presumption in court.  Hopefully, this is not a return to the dark ages when the "patent monopoly" was considered anticompetitive.

USPTO Solicitation for Comments - CREATE Act

The USPTO has requested comments on Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act).  The USPTO is revising the rules of practice in patent cases to implement the CREATE Act.  NAPP will be submitting comments in response to this solicitation.  If you would like to comment, click here.

Foreign Patent Practice

How well do you know your foreign patent law?

By Justin Simpson

Take this quick quiz to test your knowledge of foreign patent law. Here’s a sample question: In Canada, when is the last possible date by which you can enter the National Phase?
A) Up to 42 months from the international filing date
B) Up to 31 months from the priority date
C) Up to 42 months from the priority date
D) Up to 30 months from the priority date
For the answer to this and other questions, click here.

The NAPP® Member Center

One of the key advantages to the new NAPP® website is the ability to manage your membership information. By logging into the member center, a member can change e-mail addresses, passwords, and opt-in and out of various member benefits.

Having the ability to manage your own membership account is especially useful if you know that you will be away from the office for an extended period of time. If you don't want to accumulate a lot of messages from the Patent Practice Forum, you can simply uncheck the box and remove yourself from the list while you are gone. When you return, simply re-check the box and you will automatically be added back onto the list.

The NAPP expresses a sincere apology to those who were inadvertently left off the Patent Practice Forum list as well as to those who were added to the Patent Practice Forum by mistake.  Thank you for your understanding as we transition with our new web site.

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

A Look At The CREATE Act

By Kirk A. Wilson

The Cooperative Research and Technology Enhancement (CREATE) Act of 2004 was signed into law on December 10, 2004. Under this new law, certain prior art that is owned not by the invention’s owner, but by collaborators of the invention’s owner, is excluded from the 35 USC 103(c) obviousness determination. However, the claimed invention must meet three criteria: 1) there must be a joint research agreement; 2) the agreement must be in effect on/before the invention was made; and 3) the patent application must refer to the agreement and properly disclose the parties to it. For more details, click here.

Joy L. Bryant, Esq.

The start of 2005 brought a fresh start for the NAPP.  We launched our web site, added a new Vice President, and we had our first Regional Chapter meeting in Atlanta, Georgia.  We also added 18 new members for the month of January.  The NAPP is off to a good start and we are excited about the upcoming changes to the organization. 

We hope to have our certification program up and running by February 1.  Check our website for details and to sign-up for this program. 

Our Mentorship Program is slowly evolving and should be available by the end of April. We still are in need of authors for some of the chapters of the workbook.   

The 2005 Annual Meeting promises a program packed with information with special emphasis on foreign practice.  We will also hold elections of officers.  If you are interested in serving in this capacity, contact Joy Bryant at napp@napp.org.

NAPP Welcomes Ron Reardon as Vice President

San Francisco, July 16-19, 2005

The Georgia Regional Chapter held its first meeting of the year on January 12. The next meeting is scheduled for April 14. A speaker is needed. If you would like to speak, contact napp@napp.org.

The New Jersey Regional Chapter intends to hold a meeting in March. A speaker is needed. If you would like to present, contact napp@napp.org.

The San Francisco Bay Area Regional Chapter will hold its first meeting on February 1 at Thelen Reid. For further details, click here.

The NAPP® professional liability insurance program was first developed with the practice area exposures common to patent agents in mind.  Based on additional member input the basic policy form was expanded to include coverage for the performance of liaison services with other patent attorneys and/or agents registered to practice in a foreign country. Also, improved extended reporting period endorsement ("tail") coverage was implemented.

The underwriters at Lloyds have recently agreed to a "NAPP® Plus" endorsement which, for an additional premium, adds a number of significant coverages that NAPP members have requested. These include: (1) the rendering of market clearance opinions; (2) negotiating and drafting licensing, assignment, nondisclosure/confidentiality, sponsored research or consulting agreements; (3) performing trademark or copyright work; and (4) serving as an expert witness.

Also, as a direct result of the presentation delivered by Harry Moatz at the NAPP® 2004 Annual Meeting, the underwriters agreed to add coverage under the NAPP® Plus endorsement for the defense of professional disciplinary actions brought against insured members. 

For details, click here.

When you’re approaching your 12 month convention deadline you will need to decide whether to file your patent application as a PCT or as a series of convention applications in your chosen foreign countries.  If you’re having trouble deciding which course of action to take, the PCT Magic 8 Ball may be able to help.  Click here for details.