NAPP eNews™/Nov/2016

 NAPP eNews™ for November 2016

 Dear NAPP Members,

I had occasion, while convalescing from surgery recently, to view a movie starring Bette Davis. I had always known her to be an iconic American actress, but I wanted to know more. I found her to be highly intelligent. She once said,

Without wonder and insight, acting is just a trade. With it, it becomes creation.

The same may be said for our profession, patent practice. Perhaps not as glamorous. But Bette had a thought addressing that too:

To fulfill a dream, to be allowed to sweat over lonely labor, to be given a chance to create, is the meat and potatoes of life. The money is the gravy.

Well, we all want to be successful monetarily, too, thought I. Bette also said:

A sure way to lose happiness, I found, is to want it at the expense of everything else.

Sometimes, when work is piling up, employers and clients are demanding more, and families cry out for attention, it seems we as patent practitioners are, as Bette said;

I am doomed to an eternity of compulsive work. No set goal achieved satisfies. Success only breeds a new goal. The golden apple devoured has seeds. It is endless.

In the area of patent eligibility, Bette had a thought for that too:

This has always been a motto of mine: Attempt the impossible in order to improve your work.

I do not mean to imply challenging Section 101 rejections is impossible; but if Bette could, I think she would say it is a great opportunity for all of us to improve our work!

 I think the Academy was very smart to elect Bette as the first woman President for the Academy. She is also one of, if not the only actor to have won an academy award on a write-in vote, not having been on the ballot! Those on the ballot essentially demanded it. That really says something for me!

Engage, Lead, Advocate
These are NAPP's goals. Regarding our unique interaction with the USPTO, we "Lead" by being an active voice for the patent prosecution community; we "Engage" by calling the examiner or SPE when we can, not only to complain, but to praise when it is due; and we "Advocate" by submitting constructive comments to the USPTO's requests for comments, and the occasional amicus curie brief.

These are not the heart of our marketing efforts, but think about what Engage, Lead, Advocate does for NAPP's image. This reputation is worth untold marketing brochures, banners, and other bread and butter marketing efforts.

In our recent board meeting, board members commented that more than one attendee at the Annual Meeting & Conference actually felt they had improved their practice by attending. This is where NAPP separates from other IP organizations, we all agreed. All IP organizations have some degree of engaging, leading, and advocating. Some may even do more than NAPP. But no one, in my opinion, does more for the patent practitioner in actually improving their practice than NAPP.

Other News

Gill Suh, esteemed NAPP Member in Seattle, recently achieved United States citizenship. Congratulation Gill! If I had known you were studying for this, I would have recommended John Adams on Netflix®, based on the David McCulloch book of the same title. I learned quite a bit about how the Declaration of Independence and the U.S. Constitution came about. I also did not know (or forgot) that John Adams represented the British solders in what came to be known as the Boston Massacre. Very interesting and I recommend it!

Member Benefits
We are always looking to improve the benefits of NAPP members. As you probably already know, the Member Benefits Committee is conducting a technical review of the Patent Practice Forum¿. After this is completed, or con-currently if we can get enough qualified members to help, we are considering very seriously conducting a Request for Proposals for mal-practice insurance providers and brokers. If you have significant experience in this area (say by having had a MP policy for at least 5 years), and would like to join in this effort, please contact Dan Beinart, chair of the Membership Affairs Committee. Even if you have not had such a policy yourself (perhaps you were covered by a law firm policy), but are familiar with its terms, and are now looking for your own policy, I'm sure Dan would consider you for committee, task force, or sub-committee membership.

Government Affairs
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.

On October 14, the USPTO announced two roundtables on Section 101 (patent subject matter eligibility), the first to be held in Alexandria November 14, the second to be held December 5 at Stanford University. A fully copy appears below. NAPP has not as of this writing formulated exact plans, but will certainly endeavor to make our feelings known, that the USPTO and courts should return to "the way it was", everything under the sun touched by man or woman is patent eligible.

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 our Executive Director John Meidl or myself.

Jeffrey L. Wendt


October 14, 2016 #16-17

CONTACT: (Media Only) Paul Fucito at (571) 272-8400 or [email protected]

USPTO Seeks Further Public Input on Patent Subject Matter Eligibility

Washington - The U.S. Department of Commerce's United States Patent and Trademark Office (USPTO) today announced that as part of its effort to solicit input from the public regarding the legal contours of patent subject matter eligibility, it will be holding two roundtables, one in November and one in December.

"In recent years, the jurisprudence on the very basic issue of what is patent eligible subject matter has been evolving requiring adjustments by innovators, businesses, lower courts and administrative agencies such as the USPTO," said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. "Our goal is to minimize any uncertainty in the patent system by ensuring we not only continue to apply the statute and case law in this area as faithfully as possible, but also understand the impact of the jurisprudence on innovation by assessing what, if any, changes might be helpful to further support innovation."

In a notice published today in the Federal Register, the USPTO announced that it will begin a nationwide conversation on patent eligible subject matter through two roundtable discussions. The first roundtable will be held November 14, 2016, at the USPTO headquarters in Alexandria, Virginia. This roundtable will focus on the USPTO's continuing efforts to seek input from across the country and across industries on how the USPTO can improve the agency's subject matter eligibility guidance and training examples. To facilitate a broader legal discussion on the contours of patentable subject matter, the USPTO will host a second roundtable on December 5, 2016, at Stanford University in Stanford, California. Through the power of USPTO's nationwide footprint, each of our regional offices will also participate in both roundtables, enabling individuals and industries from around the country to share their perspectives at a location closest to them, in addition to written submissions.

Together, these roundtables will help facilitate discussion on patent subject matter eligibility in view of several decisions in recent years by the courts. If you wish to attend or participate in a roundtable, please see the Federal Register notice to learn more. You may also visit the USPTO's Events Page.

Stay current with the USPTO by subscribing to receive e-mail updates. Visit our Subscription Center at


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]

Volunteer Opportunity

Calling all Intellectual Property paralegals and licensed attorneys!

Volunteer today with Illinois Legal Aid Online as a Legal Content Editor/Contributor!

As a Legal Content Editor/Contributor, you'll use your expertise by helping to keep our content current and accurate. You can work as little or as much as you'd like (volunteers receive as many projects as they want in a given year and contribute an average of 4 hours per project over a 3 week period) while enjoying the flexibility of volunteering from any desktop computer or laptop with reliable internet access. Work at times that are convenient for you to work while receiving training (as necessary) and ongoing support whenever you need it.

If you're interested in volunteering or would simply like to learn more about this volunteer opportunity, please contact Elizabeth Medina, Legal Contact Volunteer Coordinator (LCVC). You can E-Mail her at [email protected] or call her at (312) 977-9047 Ext. 17. 

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] 





To be the organization of choice for all patent prosecution professionals.


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.