Ron Reardon

In last month’s President’s Message, I shared with you another of the benefits of being a member of NAPP—the NAPP® Job Bank.  This month’s highlight is access to Professional Liability Insurance.

Appropriate insurance coverage is critical to the success and proper management of any professional practice, including that of a busy patent practitioner.  That's why the NAPP has worked closely with Dominion Insurance Services, Inc. to develop a professional liability insurance policy specifically tailored to the needs of patent practitioners.

Covered professional services under the standard policy form include the following:

•                    Conducting patent searches;

•                    Rendering opinions regarding patentability;

•                    Preparing patent applications;

•                    Prosecuting U.S. patent applications;

•                    Performing Patent Cooperation Treaty filings;

•                    Recording patent assignments;

•                    Recording licensing agreements;

•                    Performing patent maintenance filings.

By endorsement under the NAPP® Plus program, coverage can be expanded to also include:

•                    Rendering market clearance opinions;

•                    Performing trademark or copyright work; and

•                    Serving as an expert witness.

The NAPP® Plus program also includes expanded coverage for the defense of professional disciplinary actions, as well as a 50% reduction in the deductible for claims resolved by means of Alternative Dispute Resolution.

Premium discounts are available to members who have completed the NAPP® Certification Program.

To apply for patent practitioner professional liability insurance, log on to the Member Center at www.napp.org and simply download and complete the application form, together with all relevant supplements.  The application can be completed on-line.

When you provide professional services to others, it is important to have the coverage provided by professional liability insurance.  The peace of mind that accompanies such coverage allows you to focus on your practice so you can succeed in today's competitive and challenging environment.

PTO Policy on Reexamining Fewer Than All Patent Claims

On October 5, 2006 the USPTO issued a notice clarifying its policy on reexamining fewer than all claims of a patent for which reexamination was requested.  

The PTO is not required to examine all claims in a patent when a request for ex parte reexamination (35 USC 302) or inter partes reexamination (35 USC 311) results in the PTO determining that a substantial new question of patentability (SNQ) is raised for at least one claim.  Rather, the scope of inter partes reexamination need not exceed those claims for which inter partes review has been requested.  Notwithstanding the statutory requirements, the PTO, at its discretion, may review claims for which reexamination was not requested.

Current PTO policy is as follows:

1. Regarding the PTO’s determination on the request: if reexamination is requested for fewer than all of the patent claims, the PTO’s determination (i.e., whether reexamination is granted or denied) will generally be based on a review on the merits of only those claims for which reexamination was requested.

2. Regarding the examination stage of reexamination proceedings: the PTO will generally examine only those claims for which reexamination was requested and for which a SNQ was raised.

Former USPTO Administrative Patent Judge, William F. Smith, of Counsel with Dougherty Clements, will present “How to Successfully Navigate the Patent Appeal Process in the USPTO” on May 24th.  Click here to register.

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

EFS-Web: An Overview

By David J. Robeson, Ph.D.

EFS-Web, the new electronic filing system, is now available for e-filing of documents with the United States Patent and Trademark Office (USPTO).  EFS-Web is a Web-based tool that does not require users to acquire software from the USPTO.  Using EFS-Web, patent applications and related documents can be filed with the USPTO over the Internet by submitting documents as PDF files.  Click here to read the article.

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.  editor@napp.org.
 

The Disclosure® is a trademark of the National Association of Patent Practitioners.

The Disclosure® is published monthly and is made available to NAPP members and the general public.

Editor:

©2006 National Association of Patent Practitioners.  All rights reserved.

NAPP Officers:

President - G. Ron Reardon

Vice President - Sean Brennan

Treasurer - Jerry Miller

Secretary - Michelle Stempien

NAPP Directors:

Sharon Adams

Kevin Grierson

David Grossman

Tom Hamill

Louis Hoffman

Celebrate NAPP'S 10th Anniversary  - Alexandria, Virginia July 15-18, 2006

The 2006 NAPP® Annual Meeting will be held in Old Town Alexandria, adjacent to the US Patent and Trademark Office. 

Registration is now available for the 2006 annual meeting.  Space is limited to 150 attendees for the meeting and 40 attendees for the short course.  Register before June 20 to take advantage of the lower (early) registration fee.

A special hands-on EFS-Web program will be available to 16 attendees after the meeting concludes on July 18.  To register for this training session, contact us online, or call 800-216-9588.

At the Georgia Regional Chapter meeting on April 12, 2006, former USPTO Administrative Patent Judge William F. Smith, of Counsel with Dougherty Clements, presented “How to Successfully Navigate the Patent Appeal Process in the USPTO.”

Judge Smith had a 33-year career in the USPTO, the last 19 years of which were at the Board of Patent Appeals and Interferences (BPAI).

Judge Smith’s presentation was of particular interest to those NAPP members who have already experienced the appeal process or are anticipating an appeal.  The presentation included a review of five key topical appeal areas: the pre-appeal brief, the appeal brief, the Examiner’s answer, the oral argument, and post-decision practice.

The New Jersey Regional Chapter needs volunteers to help organize NAPP regional meetings in the New Jersey area.  If you are interested in volunteering, please contact us.