Anthony P. Venturino, Esq.

In May, NAPP’s Government Affairs Committee submitted comments to the Senate Judiciary Committee regarding the proposed Patent Reform legislation currently under consideration. These comments have been entered into the Congressional Record. My special thanks to Louis Hoffman for his efforts in helping to draft the comments. NAPP’s role is to shed some light on the issues without resorting to name calling and sound bites. Our technical backgrounds by nature cause us to look for facts, see through the spin, and try to come up with policy that we in our hearts think is best for this country. We all passionately believe technology is key to maintaining the competitiveness of the US in the world economy. Thus, we all are in favor of a system which promotes strong, valid patents and the ability to enforce them.

The proposed bill has some noble goals. I believe an important one is to reduce the cost of patent litigation. At this point patent litigation is the game of kings. It is beyond the financial ability of almost any independent inventor, absent finding an attorney to take it on contingency. Thus, we should all understand this legislation and look at both sides for and against every change. We also need to see through rhetoric. For example, some have asserted it is ironic that the US is considering oppositions just when Japan is eliminating them. However, a Japanese colleague told me that, although Japan is eliminating its “opposition” procedure, a third party can still invalidate a patent using a JPO appeal procedure which seems to be a hybrid of US reexamination and European opposition procedures. Likewise, some have asserted that an EP patent is not really a patent. This overlooks the fact that, once granted, the EP patent is registered in the foreign countries by paying the registration and translation fees and then becomes a foreign country patent.

We should be looking at other countries’ systems with an eye towards learning from them. Having a good understanding of these foreign procedures is critical to avoiding the mistake of taking one part of the foreign procedure without seriously and carefully considering the necessity of adopting another part of the foreign procedure which makes the overall procedure fair. Furthermore, we should seriously and carefully consider what US procedures should be maintained in the event a foreign practice is adopted, so that fairness is maintained. For example, if the US adopts a first to file system (which NAPP opposes) we should understand that reliance on the filing date for first to file is applied in a test using an anticipation standard, not an obviousness standard. At a minimum, Rule 131 practice must be maintained so that first to file does not mutate into first to publish. Also, should first to file be adopted by the US, a foreign grace period from at least the EPO and Japan should be made available.

NAPP has an important role to play in promoting a strong US patent system, and I want to encourage all of you to do your part.

The Examiner Interview

By Joy L. Bryant, Esq.

For the less experienced practitioner, an Examiner interview can be an intimidating experience. Knowing when to interview an Examiner, coupled with the procedural requirements, is important to having a successful outcome. Click here to read more.
 

Foreign Patent Practice

Ways to Delays

By Justin Simpson

How can your client delay the costs associated with national phase entry? For even the largest and most successful businesses, patent decisions are all about compromise. No one files in every country in the world, no matter how much money they have or how important the invention. For smaller companies and individual inventors, the compromises are often more severe due to the usual cash flow issues. However, there are techniques that can be used to extend the time by which you need to pay some or all of the costs of national phase entry.

Click here to read the article, which includes country by country tips.

Subscribing to the NAPP® Discussion Forums

In May, the NAPP divided its Patent Practice Forum™ into two discussion lists.  The Patent Practice Forum™ is restricted to issues related to patent practice.  The General Discussion Forum enables members to discuss such issues as member-to-member referrals, patent law reform bills, and general announcements.  To receive or participate in the daily e-mail discussions, members must sign-up by accessing the Member Center pages at the NAPP Web site.  To do this, log-in using the e-mail address that you have registered with NAPP.  If you don't remember your password, you may request it and it will be e-mailed to you.  Once you log-in, you can subscribe to the discussion forums by clicking on "Discussion Forums" on the left tool bar.

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

Subcontracting 101:  Best Practices for Hiring Third Party Service Providers

By Don Temple

Whether you're a patent practitioner in private practice or managing a patent department within a large firm or corporation, doing everything yourself is seldom the easiest, most efficient, or most profitable way of doing business. And with client expectations at an all-time high, in-house resources are scarcer than ever.

To accommodate the demands, many patent professionals have turned to subcontracting specialized patent services. But what are the benefits, and how do they hold up against the risks? The linked article addresses three key considerations that will help you decide if subcontracting is right for your unique situation.
 

Joy L. Bryant, Esq.

NAPP was represented at the USPTO  Nanotechnology Customer Partnership Meeting on May 4 at the USPTO.  The focus of the meeting was on how to conduct prior art searches in the nanotechnology area.  Members should note that cross reference art collection class 977 has been developed for the nanotechnology area.  The Biotechnology Customer Partnership meeting will be held on June 15 at the USPTO.

The following members have received NAPP Certification:  Joy Bryant, Louis Hoffman, George Levy, and Michael Toback.  Courses to support the certification program are in the development stage.  Members who are NAPP certified are eligible to receive a discount on their malpractice insurance premiums.

NAPP submitted official comments with respect to the Committee Print for the Patent Act for 2005.  NAPP has established an official policy with respect to its lobbying efforts.  Click here.

Members are reminded that NAPP is predominantly a volunteer organization.  If you are interested in serving on a committee, be sure to check the box in your member preferences.  Committee meetings will be held at the NAPP Annual Meeting on Sunday, July 17 in the early afternoon.

San Francisco, July 16-19, 2005

Elections for Officers will take place at this year's meeting. The slate of nominees are:  President - Ron Reardon; Vice President - Rich Farr; Secretary - Michelle Stempien; Treasurer - Donna Fugit.  Practitioner members will receive ballots the first week of June.

Acting Commissioner for Patents John Doll has accepted the invitation from Santa Clara University School of Law Intellectual Property Association to be the luncheon speaker on Tuesday, July 19.  Note the schedule change.   This year's luncheon is automatically included in the registration fee.

MCLE credit has been approved for the Nuts & Bolts Short Course from CA, NC, VA and PA.  Applications for MCLE credit for the Annual Meeting are pending in CA, VA, PA and NC. 

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.

The Georgia Regional Chapter has scheduled its next meeting for September.  Hayden Gregory, lobbyist for the ABA, will give an update on the proposed Patent Act of 2005. For more details and to register, click here.

The New Jersey Regional Chapter will have its next meeting at the end of June. The meeting date will soon be announced.  Check here for details.

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.