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Natonal Association of Patent Practitioners

THE DISCLOSURE®

Newsletter of the National Association of Patent Practitioners

June 2005

Natonal Association of Patent Practitioners

FROM THE PRESIDENT ...

Anthony P. Venturino, Esq.

Now that my term as the president of NAPP is coming to an end, I am happy to say it has been a great time for NAPP.  NAPP has almost doubled in size during the past two years by adding patent agents and attorneys as full voting members.  Our Annual Meeting is still going strong, and I hope to meet many of you there in San Francisco.  Our San Francisco Bay Area and New Jersey Regional Chapters are still active, and we have a new Georgia Regional Chapter.  As we grow, I hope that there will be more regional chapters.  We have created a NAPP patent practitioner certification program to complement our professional liability program.  We also ventured into specific topic-oriented seminars by telephone conference to keep attendees abreast of important issues.

 NAPP is going more and more electronic.  The NAPP Web site has been dramatically updated and improved to take advantage of new technology and be more user-friendly.  Our e-mail discussion lists still actively provide our members with forums for discussing matters important to our practices.  Although it may be too early to tell, I believe electronic distribution of The Disclosure®, and making it easier to pay for membership fees, meetings, and other services by NAPP will also make all our lives easier. 

 NAPP also continues to be a strong voice in government affairs. We are the most focused association of patent prosecutors in the US, and bring a unique perspective to those that decide rule and law changes.  We submit meaningful comments to the Patent Office on proposed rule changes, and notably to Congress on the recent proposed changes to the US patent statute. 

Of course I did not do this alone.  Without the tireless efforts of Joy Bryant, our Executive Director, none of this could have happened.  The Eveready bunny has nothing on her.  However, at the risk of leaving someone out, I wish to thank others who made this possible.  Our current Directors Scott Chambers, Kevin Grierson, Gary Smith, and Kirk Wilson as well as my other officers Ron Reardon, Sarah Smith, and Michelle Stempien have been a great asset.  At the same time, let us not forget former officers and directors who kept me on the straight and narrow path in the beginning of my term as president, namely Mark Buscher, Bart Singer, Martha Taylor, and Joe Marasco.  When we elect our new slate of officers this summer, I expect you will bring in another stellar group.  NAPP has had, and will have, a great group of volunteers to keep it alive and growing and meaningful.  However, one last time I encourage those of you with an itch to do something important for yourself and your profession to become more active. 

Although I will no longer be president, you will not get rid of me that easily.  I plan to be active in NAPP and, together with our current and new volunteers, plan to help bring NAPP to new heights in the years to come.


FROM THE INCOMING PRESIDENT ...  

G. Ron Reardon 

Fellow Members of NAPP:

As incoming President of NAPP, I envision a vibrant future for this growing organization.  Since its inception, NAPP has continued to build on an ever increasing foundation, dedicated to supporting patent practitioners in their practices.  As President I will continue to build on the momentum generated by my predecessors.

I will focus my energies on three initiatives: visibility, credibility, and connectivity.  This has been a successful formula for my own practice, and I believe it can be leveraged to take NAPP to the next level.  With the help of the Executive Director, the Board of Directors, the committees, and the membership, we will address the following: 

Visibility: Increase the awareness of NAPP among non-member patent practitioners, the USPTO, the Congress, individual inventors, businesses, other professional organizations, and the press.

Credibility: Position NAPP as the premier voice for evaluating the impact of existing/proposed rule/law changes on individual inventors, patent practitioners, innovation, and the economy.

Connectivity: Connect practitioner members with the information they need for an effective, profitable practice.  Foster lasting relationships among practitioner members.  Create links from innovators to patent practitioners.  Develop effective, professional relationships with key government and business decision makers and influencers.

My personal experience has proven that by substantially increasing the value of membership, a quantum leap in growth can be achieved and sustained.  I eagerly anticipate the challenges of guiding that growth and serving the membership to the best of my abilities.

 

PRACTICE NOTES

New Matter—Basis and Basics

By David J. Robeson, Ph.D.

When amending a patent application, whether by preliminary amendment or in response to an Office action, it is important for the patent practitioner to have a thorough understanding of what does, and does not, constitute new matter.  The addition of new matter to a patent application is proscribed by 35 USC §132.  However, not all matter added to the disclosure after the filing date of a patent application is new matter.  Click here to access the article.


Foreign Patent Practice

In which countries should you enter the national phase?

By Justin Simpson

There are many factors to be considered when choosing where to enter the national phase.  Selecting countries in which to pursue patent protection should always be a business decision.  By considering where your business is now and where it might be in the future, vis-ą-vis what a particular patented product means, and might come to mean, to your business, you can make a decision about where to enter the national phase based on sound commercial principles.   For further information about this topic, click here.

NAPP.ORG WEB SITE FEATURES

NAPP® Member Center

The NAPP® Member Center enables members to manage their account information.  By logging in to the member center using your e-mail address as your ID and your personal password, you can change your contact information, check-out member benefits, and subscribe to the daily e-mail discussion forums. 


MEMBER ARTICLES

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

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.

 


EXECUTIVE DIRECTOR'S MESSAGE

Joy L. Bryant, Esq.

June has been a busy month for NAPP.  In addition to making final preparations for the upcoming Annual Meeting, NAPP's Government Affairs Committee has been busy. 

In the beginning of June, NAPP submitted comments to the USPTO's request for comments regarding a proposed rulemaking.  Our comments mainly focused on language in the rulemaking that was vague and ambiguous.  To read these comments, click here.

Louis Hoffman and I represented NAPP at a town hall meeting on patent reform that was held at the National Academies of Science.  This meeting consisted of a series of presentations by various public groups.  We were disappointed by the under-representation of small entities.  In fact, the practitioner panel was comprised predominantly of practitioners who represented large entities. 

The Patent Law Reform Bill was introduced on June 7, 2005.  Key issues in the Bill involve moving to a first-to-file system (which NAPP opposes) and the introduction of opposition proceedings (which, without the second-window provision, NAPP supports ).  NAPP intends to draft a new position paper in response to the Bill that was introduced.  NAPP also hopes to meet with Congressional staff members if time permits.

NAPP was represented at the USPTO Biotechnology Customer Partnership Meeting.  It was at this meeting that Harry Moatz addressed the issue of mandatory CLE for all patent practitioners.  He said that it is coming and will happen but probably not until 2007.  Ironically, one of the reasons for the delay is lack of funding.

The USPTO has a solicitation out for comments with respect to a green paper on restriction reform.  Comments are due by August 5.  This proposal is quite lengthy and contains a lot of content that needs to be carefully reviewed.  NAPP is looking for volunteers to help draft the official comments.  If you are interested, please contact us at napp@napp.org.

 


ANNUAL MEETING UPDATE

San Francisco, July 16-19, 2005

We have an important schedule change to note.  Our luncheon will be on Tuesday, July 19 with Acting Commissioner for Patents John Doll as the guest speaker.  Lunch on Monday will be on your own.   This year's luncheon is automatically included in the registration fee.

MCLE credit has been approved for both the Nuts & Bolts Short Course and the Annual Meeting by CA, NC, PA, and VA.

NAPP® Certification Credit is available for both the Nuts & Bolts Short Course (7.5 credits) and the Annual Meeting (10.5 credits). 

To register for the Annual Meeting click here.

Annual Meeting Sponsors          

Thank you to our Annual Meeting Sponsors:

Saturday Box Lunch - PCTFILER

Monday Breakfast - Law Offices of H.K. Acharya and Company

Monday Reception - National Patent Services

Tuesday Morning Break - Rouse & Co. International

Tuesday Luncheon - Heath Lambert and Dominion Insurance Services

 

 

REGIONAL CHAPTER HAPPENINGS
Georgia

The Georgia Regional Chapter has scheduled its next meeting for September.  Hayden Gregory, lobbyist for the ABA, will give an update on the Patent Law Reform Bill. For more details and to register, click here.

New Jersey

The New Jersey Regional Chapter met on June 22 at Genta.  The next meeting will take place in November.  A speaker and location are needed.

San Francisco
The San Francisco Bay Area Regional Chapter will hold its next meeting in October.

MEMBER BENEFITS
Professional Liability Insurance
NAPP® Certified members are eligible for discounted insurance rates.  Contact Larry Hilton for details at:  925-313-9977.
PCTFILER
Ken Ropke is the contact for the PCTFILER program. Ken can be reached at: 516-770-1973.
ICO Global Patent Search

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.

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