NAPP eNews™/FEB/2018

NAPP eNews™ for Feb 2018

Patent Prosecution Program

Mark your calendars! NAPP's annual meeting and conference for patent prosecution professionals will be held July 19-21, 2018, at the Alexandria USPTO (600 Dulany St). For novice practitioners wanting to learn the essentials of patent prosecution and running a patent practice, there will also be a pre-conference "Nuts & Bolts" workshop on July 18 at the Residence Inn in Old Town Alexandria. The conference is the highlight event of the year for NAPP, so I encourage you to be there if you can! Registration will be opening up later this month.

NAPP's Blog for Patent Practitioners

The Professional Development Committee working to launch our new blog. They’ve compiled a list of topic that have seemed interesting to members in the past and now we are looking for volunteers to write on these topics (or other patent-practice topics you may wish to discuss).

Proposed Blog Topics:

  • Women Entrepreneurs
  • Women in Technology
  • Examiner time analysis
  • Subject matter eligibility
  • Patent Advisor vs. Juristat 
  • Issues with Alice
  • U.S. Design Applications
  • Ownership Issues
  • Deficiencies in the US patent legal system favoring large companies.
  • Trade Secrets
  • RCE’s
  • 101 eligibility guidelines.
  • How the BRI rule has impacted your practice or your clients' efforts to obtain patents.
  • Doctrine of Equivalents and relevancy
  • Patent invalidation rates and perceptions of patent quality, "abstractness," etc.
  • Impact of Abusive Patent Litigation
  • PCT
  • No statutory basis for an 'all prior art elements' 103?

Most popular threads:

  • No statutory basis for an 'all prior art elements' 103?—60 responses
  • Simple question: ADS for a design app to claim priority to a utility app?— 19 responses
  • [NAPP-Practice] Functional Claim Language—15 responses
  • Let’s play the 101 game—13 responses
  • Question about international 'absolute' novelty vs US 102(b)—11 responses

A good blog post length is about 800 to 1200 words, but there's room for variation. To make it as easy as possible for our volunteers, we'll even do the editing and proofreading for you! If you're looking for an easy way to share your experiences or increase your exposure with colleagues, drop an email to Priya Cloutier directly ([email protected]) or via our executive director ([email protected]).

World IP Day 26 April

The annual celebration of World IP Day is on the 26th of April, which this year is on a Thursday. NAPP's Professional Development committee is looking for suggestions and opportunities for NAPP members to reach out to the community to educate the public and other professionals about the value of the patent system and experienced patent prosecutors. Anybody with suggestions or time to volunteer for a presentation at a local school, please reach out to Priya Cloutier or our Executive Director Brandi Gerew at [email protected].

Committee Chair Positions Available

You may recall that Dan Beinart stepped down as chair of the Member Benefits committee last month. Long time committee member Carie Mager has stepped into his shoes to keep the important work of this committee on track. Thank you Carie!

On a similar note, David Stein has stepped down as chair of the Government Affairs committee, and Jeff Wendt is planning to step down as chair of the Legal committee. Both are planning to remain as members of those committees, but are asking for other volunteers to take charge of the organizational aspects of the committee work. If any NAPP members are interested in joining these committees as members or chairs, please let David Stein or Jeff Wendt know directly or via our executive director at [email protected].

On a personal note, I want to thank Dan, David, and Jeff for all their efforts, and I'm glad they're continuing on as volunteers despite their limited spare time. Not only is it good for the organization, it's good for all of us who enjoy interacting with others who see the bigger picture and go the extra mile for their friends and colleagues. Other benefits to volunteering for committee work include a greater sense of connectedness to your colleagues, and better opportunities to make your mark on NAPP, on your profession, and on society.

Local Meetups

Aside from the usual meetups in Houston and Santa Clara, the NAPP members in Seattle got together for a Friday lunch last month. The Denver folks organized a group lunch with Nathan Kelley, Deputy General Counsel for IP Law and Solicitor at the USPTO, and hosted Mark Radke, Assistant Regional Director of the Rocky Mountain USPTO at an afternoon meetup. Such contacts can only strengthen NAPP's reputation and influence with the leadership at the USPTO. Way to go guys!

The local meetups are continuing to expand. As I mentioned last month, Herb Lacey is organizing a NAPP meetup group in North Carolina, extending into Virginia and South Carolina, possibly using videoconferencing options to enable folks to attend even if they can't be there in person. John T. Davis is organizing in the Dallas-Fort Worth area, and Bill Campbell has a meetup planned this month in Southern California. If you're interested in any of these meetups, or curious about setting up your own, please contact Mike Carey, either directly or via our executive director at [email protected] .

Renewal Difficulties

Sorry folks! Several of our members encountered difficulties when trying to renew their memberships in January. This difficulty was caused by some parameter settings on the old platform that caused at least some of the website's links (and our emailed renewal links) to be broken. Brandi was able to get this fixed within hours of her attention being called to the issue. Even better, the original source of the problem will disappear as we complete the migration to the new platform.

Note that soon after we complete the migration, we will begin synchronizing the future renewal deadlines to a fixed date (probably July 1, 2019). By arranging a common renewal date for all our members, we hope to make the budgeting process easier for the organization, as well as simplifying our reminder/renewal/follow up procedures. More news will be forthcoming on this front, as we decide how best to handle the transition.

Forum, Old and New

To refresh the memory of all of us who have forgotten how to sign up for the forums, or how to update our contact info when our email address changes, the process appears on the last page of this pdf: access instructions . If you already had access and lost it because your email address changed, then log into your Yahoo account, find the tab for "Groups", and look form "Manage My Groups" on the left side of the page. There are some drop-down boxes for selecting the Yahoo profile and Email ID to associate with each group. If you don't see the address you want, you'll need to add it to your profile and go through the email verification process first.

But Dan, you say, aren't we moving to a new platform in February? Surely it's easier for me to just wait until then. Of course you're right, but there's already a lot of good information on the existing forums, which will continue to be there for the next year or two. We have hopes that we can move at least some of this information over to the new platform, but that process is likely to take some time and for feasibility we may limit the migrated information to posts that were made after 2015. For these reasons, you should make sure you are able to access the old forums, now and after the migration.

The long-long-awaited new forums are almost here, and I can't wait. Unlike the old forums, you'll be able to access the new forums from the website. I'll save my rave for the new platform for next month, but it's going to be AWESOME!

Website Update

In January, our executive director, Brandi Gerew, began working with Memberclicks (the provider of our association management platform and website) to migrate our information to their latest platform. I'm delighted to report that the migration is progressing well and we may be able to complete the migration by Feb 15. Once we complete the transition, you will see some new features that we hope will improve the membership experience, including a new, easy-to-use forum that should be much easier for members to search, to post, and to respond. I will keep you updated as progress happens.

I know many of us remain unaware of how much the website has improved already, even though the migration isn't yet complete. However, you should definitely check it out. It's much more responsive and easier to navigate. Among the gems on the website is the discount page , which now features a couple of new entries for Concord and Hard IP.

10% Off Tuition at Concord Law School

The first new entry is for Concord Law School, the first and largest online law school. Concord offers a 4-year part-time program for ~$48k that qualifies graduates to sit for the California Bar. (As none of the online law schools are ABA accredited, just be aware that various obstacles to a bar license in other states may be encountered, and perhaps worked around.) Of course, there are also other reasons to go to law school besides becoming an attorney or even getting a law degree. In such cases, online law schools such as Concord present an affordable option, which has now become even more affordable due to a 10% discount they are offering to NAPP members. Check out their page on our website for more info, or visit them at

Hard IP Docketing & Paralegal Services

Our second new entry on the Vendor Discount page is Hard IP LLC, a patent firm out of Florida. If you're interested in outsourcing your firm's docketing and/or paralegal services, they offer packages starting at $50/month for docketing and $65/hour for paralegal work. For NAPP members, they are offering 15% discount off your first year with them, and thereafter an ongoing "13 months for the price of 12" if you do an annual subscription. They offer access to a customizable, cloud-based docketing platform, or use your existing platform so long as it supports remote access. Check out their page on our website for more info, or visit them at .

Patent Institute Offers Patent Portfolio Management Course for $200

NAPP Member Darryl Newell called my attention to an upcoming course offering by the Patent Institute, which may be of interest to other NAPP members. The course consists of four 1-hour classes at 7PM EST Monday evenings from Feb 19 thru March 12. The course is taught by Patent Agent Riyon Harding, and covers topics including thinking strategically about patent portfolio development and competitive patent landscape analysis. More info is available at

Welcome to NAPP!
We gained Nine new members in January. If you know or encounter any of the following folks on the forums or at a local event, please be sure to welcome them to NAPP and let them know we’re glad to have them on board!

-Charles Bacon of Buffalo NY

-Ralph Chabot of Camarillo CA

-Ragaii El Dekki of Alexandria, NA

-Elie Gendloff of Vista CA

-Charmaine Neal of Elizabethtown KY

-Ed Ryan of Melville NY

-Allan Segal of Costa Mesa CA

-Tim Smith of Sugarland TX

-Brent Yonehara of San Francisco CA







Officers (also serve as Directors)


Daniel J. Krueger, PhD


Term 2017-2020

Lisa Adelson

Vice President/Director

Term 2016-2019

Dan Beinart


Term 2016-2019

Image result for William Richards patent

William Richards


Term 2016-2019



Jeff Wendt


Term 2015-2018


David Stein


Term 2015-2018


 Alexander Pokot 


Term 2017-2018 


Louis Hoffman

Board Chair/Director

Term 2017-2020

Priya Sinha Cloutier 


Term 2017-2020



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.