Anthony P. Venturino, Esq.

Have you ever wished that the people at the USPTO who make the rule changes would just take a two week vacation in the Bahamas instead of bombing us with more rule changes? I know I have. However, death, taxes, and USPTO rule changes are inevitable. Thus, we either need to keep up with these changes, or fall into any number of traps set as a result of failing to do so. For example, the USPTO recently terminated the waiver of provisions of 37 CFR 1.8 and 1.10 for correspondence intended for the USPTO but addressed to Washington, DC 20231. In English this means that if you mail something to the USPTO at Washington, DC 20231 it will be returned as undeliverable. Why the USPTO received its mail at Crystal City, VA for 20 years but cannot now receive it ten minutes further down the road at Alexandria, VA is beyond me.

NAPP is developing new ways to keep up. NAPP helpfully provides links to important USPTO rule changes in plain view on its Web site. Our regional chapter meetings, which take place in New Jersey, Georgia, and the San Francisco Bay Area are bringing timely issues closer to home more and more frequently. Also, NAPP has recently begun its teleconference-based education. For example, NAPP recently held a seminar on how to draft engagement letters, something vital to your practice.

If you have ideas for more educational initiatives for NAPP, please let us know at napp@napp.org. In the meantime, “keep up”!

Citation of Authority in an Appeal Brief -

37 CFR § 41.12

The USTPO has strict rules when it comes to citing authority in an Appeal Brief. For any US Supreme Court decision, the citation must be a US Report citation. When decisions other than US Supreme Court decisions are cited, the brief needs to include parallel citations to both the West Reporter System and the USPQ, if the case is published in both. Pinpoint citations are used whenever a specific holding or portion of authority is invoked.

Foreign Patent Practice

Cutting Costs in €urope

By Justin Simpson

Europe is one of the most important commercial jurisdictions to gain patent protection for your clients. However, it is also one of the most expensive. Click here to see how we recently had the opportunity to significantly reduce a client’s Regional Phase entry costs by using the European Patent Office’s (EPO’s) examination backlog to the client’s advantage.

Modifiying Your Membership Information

One of the nice features of our new Web site is that members are able to access their membership records directly on-line so they can modify and update their membership information. It is important to keep your e-mail address, as well as your physical address, current with NAPP so you do not miss out on any important information or mailings. In addition, by having direct access to your membership records, you can check to see when your membership expires and pay your membership dues directly on-line. To access the member center, you simply log on using your e-mail address. If you don't know your password, send us an e-mail at napp@napp.org and we will let you know your password.

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

Positioning Your Client to Enforce Its Patent on a Contingency Fee Basis

By Michael A. Shimokaji

As the patent prosecutor, you have the opportunity to position your client’s case to be more attractive to a prospective plaintiff’s attorney on a contingency basis. Oftentimes, this can be accomplished by working in conjunction with the prospective plaintiff’s attorney. However, other matters often distract the prospective attorney while you position your client’s case. Thus distracted, the prospective attorney may lose interest in your client’s case. Therefore, it may be best to “get your ducks in line” before approaching the prospective attorney. Click here to read more.

Joy L. Bryant, Esq.

The NAPP Certification Program is finally up and running! Log-in to the Member Center on our Web site and click on "Certification Program" in the left tool bar for details and to sign-up for this program.

The NAPP hosted its first joint meeting with students at William & Mary Law School. The meeting was well-received, so these programs will continue. We hope to establish more of these joint meetings with students at other law schools around the U.S. So, if you are attending law school and are interested in this type of activity, let me know.

The NAPP was represented at the USPTO Biotechnology Customer Partnership Meeting on March 15. John Doll gave an update on USPTO initiatives. Other presentations included incorporation by reference, post grant review, new rules on appeals to the board of appeals, and interview practice. There will be a Nanotechnology Customer Partnership Meeting on May 4 at the USPTO.

San Francisco, July 16-19, 2005

Detailed information about the Annual Meeting as well as on-line registration is now available. Elections for Officers will take place at this year's meeting. We are partnering with the Santa Clara University School of Law Intellectual Property Association for this year's meeting. 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 has scheduled its next meeting for April 13. This meeting will involve a panel discussion on how companies select and evaluate patent practitioners. For more details and to register, click here.

The New Jersey Regional Chapter held its first meeting of 2005 on March 18. The next meeting will take place in June. This chapter is in search of a new director. If you are interested in this position, please contact Joy Bryant at napp@napp.org.

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.