NAPP eNews™/Oct/2016

 NAPP eNews™ for October 2016

Dear NAPP Members,

First of all I would like to apologize, we originally intended this version of eNews to break on July 1, 2016. However, planning for this year's Annual Meeting & Conference, held July 28-30 in Alexandria, VA, became the focus and we were unable to meet our deadline.

We have a new Executive Director, John Joseph Meidl, who replaces Suzanne Morris. Everyone was saddened to hear that Suzanne was leaving Capital Hill Management Services, but we certainly wish Suzanne the best, and welcome John. One benefit of this transition is that Capital Hill knows us better now, and was able to find the right person for NAPP.

I wanted to speak a bit about the recent Annual Meeting & Conference held in Alexandria, VA, at the USPTO Madison Auditorium. In addition to live speakers in Alexandria, the USPTO has asked if they could tie in USPTO Satellite Offices in Dallas, Denver, Detroit, and San Jose on July 28. As far as I know, NAPP is the only IP organization that had its high-light event of the year transmitted to all USPTO offices. This can only enhance the awareness of NAPP and reflects well on all of us for engaging with the USPTO. In addition, since we had the AMC in public space at the USPTO, NAPP did not have to pay site fees, allowing NAPP to offer 50% reduction in conference fees to all academics (faculty, staff, and tech transfer personnel), further enhancing awareness of NAPP and NAPP's image within the academic community. If you are reading this and know of such an academic person, please let them know for next year. We all owe a debt of gratitude to the Annual Meeting Committee, chaired by David Stein, and other members of the committee for making this happen. Lisa Adelson, who worked with David, is now the chair of that committee, and I'm sure will do a fine job. Special thanks also to Kerry Culpepper (who travelled all the way from Hawaii!) and Guy Letourneau for their assistance during the year and with speakers at the AMC.

Since the last eNews, the US Supreme Court handed down it Cuozzo Speed decision concerning, among other issues, the standard for interpreting claim terms in an IPR proceeding. NAPP had earlier submitted a friend of the court brief asking that the USPTO use the same standard used in federal district courts. The court decided that the USPTO was within its power to decide the issue, so the standard during an IPR proceeding remains the "broadest reasonable interpretation" standard. We are disappointed with the outcome, but as noted by Louis Hoffman, one of the principal authors of the NAPP brief, the issue was not squarely decided (whether BRI is the correct standard - the Court only decided that the USPTO was within its power to decide what standard should be used).

In any event, if you are seasoned practitioner member of NAPP, we would always welcome more help in the Government Affairs Committee to discuss which cases to possibly file an amicus brief in. We also need members to keep up with Federal Register Notices and give the membership summaries of initiatives and other matters that the USPTO makes announcements on. If you have such an interest, please contact David Stein, as David has taken over Government Affairs Committee Chair. Lisa Adelson has graciously offered to Chair the 2017 AMC Committee, so if you are interested in that, please contact Lisa or John.

Finally, we are in debt to, and I wish to express sincere thanks to our out-going VP and board member Diane Gardner, who has tirelessly helped me this past year, and has followed up on important tasks such as insurance and reviewing our organization through interviews with all board members and committee chairs to determine NAPP's needs going forward. If you have a second, please email Diane with thanks.

We hope you enjoy this and future editions of NAPP eNews! If you have content you would like share, such as interesting patents, inventors, and other matters of general interest, especially patenting tips, please forward them to John.

Respectfully, Jeffrey L. Wendt


The NAPP Board and committees are considering several proposals: a policy on and an easy way for members to use the NAPP icon on their emails an business cards; an Anti-Discrimination and Diversity policy; a review of the Patent Practitioners Forum; and the board continues to evaluate recent requests for amicus curie briefs in important patent cases.

Please plan now to join us in San Jose next summer (tentatively end of July) for the NAPP Annual Meeting & Conference. We do not have the exact dates yet as we will be negotiating with the USPTO San Jose satellite office for dates to use publicly available conference space. These spaces are "free" but not always available when desired!

Mike Caldwell has sold his patent data mining business Patent River to Anaqua. We wish Mike the best with this effort!


NAPP has instituted a Member Spotlight program. NAPP's online Members in the News form makes it easy for you to share your news and keep in touch with your fellow NAPP members. Members in the News is located on the right side of the website. Share your information and be part of the community!

NAPP has been adding patent related events to our online calendar. Looking for patent related CLE, networking events or wondering when NAPP committee's meet? This is the place to look. If you know of events that would be of interest to your fellow members send them to [email protected] and we will post them. Check it out here

As a member benefit, NAPP includes a list of vendors related to the patent prosecution industry and asks for discounts on your behalf. Check out our current list of vendors here (you must login to the site to view). Know of a vendor that would be a good fit? Let us know. Send contact information to [email protected]

Brought to you by the 
NAPP Board of Directors 


Louis Hoffman, Attorney

[email protected] 
Jeff Wendt, Attorney

[email protected]  
David Stein, Attorney

[email protected]
William (Bill) Richards, Attorney
[email protected]
Dan Beinart, Agent
[email protected]
Jerry Miller, Agent
[email protected]
David Grossman, Attorney
[email protected]  
Bruce Young, Agent

[email protected] 
Lisa Adelson, Attorney [email protected] 





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To provide networking, education, collegial exchange, benefits, and a collective voice in the larger IP community on patent law and prosecution practice, so that patent practitioners can flourish and achieve the highest levels of competence and professionalism in their practice.