Ron Reardon

The Thanksgiving Holidays have just passed, but it triggered my thinking about all that we have to be thankful for as patent practitioners practicing before the USPTO (I am a firm believer in taking the lemons that life serves up and making lemonade).

I believe we should be thankful for the following: rule changes, recently decided court cases, and office actions where we disagree with the Examiner’s position and reasoning!

I suspect that most of you would prefer that we have a lower number of rule changes and to have those rule changes less frequently.  Perhaps if we had a year without rule changes (yes, I believe in the tooth fairy), it would allow each of us to focus more on our practice without having to divert energy into adjusting our craft.

Decided cases (e.g., Festo, New Railhead, etc.) also impact our practice, both in our writing of patent applications and in our claim amendments.

Office actions that appear to be unreasonable to us also take time for us to analyze and respond to.

If practicing patent law were simple, straightforward and unchanging, then our profession could more easily be commoditized and automated.  Our clients would not need us.  The value that we bring to the table would vaporize.

A Possible Pitfall When Describing Processes in Provisionals

By Joy L. Bryant, Esq.

In re Holcomb, No. 04-1550 (Fed. Cir. April 14, 2004) provides a useful tip for practitioners with respect to preparing provisional applications that describe processes.  Practitioners need to be alert to unintended process limitations.  Since provisional applications usually do not have claims, a specification that describes only one order of steps might not cover another order or sequence of steps.  Although process claims that do not explicitly state the sequence of performing the various steps are generally construed to cover any order, the same construction may not be given to a description of the process.  Absent claims drawn to the process in the provisional application, failure to disclose that any order of steps may be taken will result in limiting the steps only to the order described in the specification.  Therefore, in the absence of such claims, practitioners should include language that states that the steps described in the application can be executed in any order.

Recording Changes in PCT Applicant Details

By Ben Coombes

What should you do if your PCT client undergoes changes in its applicant details?  The process of changing applicant details with the International Bureau (IB) is governed by Rule 92bis.1, while submitting a change request during the National Stage will incur attorney related costs as well as national fees.  Is it better to record the changes at the international stage, or wait until you go national?  Click here to read the article.

NAPP® Events

The NAPP® events pages provide detailed information regarding regional chapter meetings, teleconferences, and the annual meeting.  These pages also allow for on-line registration for these events.  A calendar of upcoming NAPP events appears on the homepage of NAPP's website.

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

Lizardtech, Inc. v. Earth Resource Mapping, Inc.

By Michael P. Eddy

On October 4, 2005, the Court of Appeals for the Federal Circuit decided Lizardtech, Inc. v. Earth Resource Mapping, Inc., a case that reinforces the need to disclose multiple embodiments in the specification.  The District Court decided that patentee’s written specification did not support generic claim 21, and granted summary judgment holding that Earth Resource Mapping, Inc. did not infringe and that the patent was invalid.  The central issue before the CAFC was whether the written description of a single embodiment of the invention in the specification supported the generic claim.  Click here to read the full 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.
 

Joy L. Bryant, Esq.

This month, I attended two customer partnership meetings at the USPTO.  The Rules Customer Partnership meeting was the first of its kind and took place on November 9.  The information provided by the speakers was excellent and the audience participation enhanced and clarified many questions about various procedural issues.  Key presentations were made regarding:  1)  New Pre-Appeal Brief Conference Practice (an article on this will be in the December issue of The Disclosure®); 2) Improved Reexam Process; 3) Final Rulemaking for the CREATE Act; and 4) Claiming benefit of Prior Applications filed in a foreign language. 

The Biotechnology/Chemical/ Pharmaceutical Customer Partnership meeting took place on November 10.  John Doll gave an update on application filings and examiner production.  As no surprise to NAPP members, application filings are up and the USPTO has a backlog of almost 600,000 cases.  The USPTO will be hiring 1000 examiners per year for the next 5 years.  Most of these hires will take place in the electrical engineering arts.  Stephen Walsh, Associate Solicitor, gave an update on recent biotech case law.  In his presentation he cited a key case for all practitioners to be aware of, In re Holcomb (No. 04-1550 Fed. Cir. April 14, 2004) which addresses processes described in provisional applications (see PRACTICE NOTES, this issue).

As the year winds down, NAPP is planning its events for 2006.  Keep an eye on the Events pages on our website for upcoming events.  Our goal is to have something occurring each month in 2006.

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.  The Annual Meeting Committee is now working on programming for next year.  If you are interested in speaking, please contact us.  Speakers enjoy a discount rate to attend the meeting.

The next meeting of the Georgia Regional Chapter is scheduled for January 11, 2006, when David Nour of The Nour Group will  speak on "Relationship Economics."

Donna Fugit has agreed to serve as the new Regional Chapter Director for this chapter.  The next  meeting of the New Jersey Regional Chapter will be held in March 2006.