NAPP eNews™/JUNE/2018

NAPP eNews™ for June 2018

June eNews

Hi All! Sorry for the delay getting this newsletter out. My wife and I took some well-deserved time off and spent the second half of May walking the Camino de Santiago in Spain. Between that and the pile on my desk when I got back, I'm limping a little behind. Nevertheless, things have been hopping here at NAPP, so let's get into it:

Amicus Briefs

The folks on our Gov't Affairs committee are working hard! Xhavin Sinha, Richard Baker, and Ben Williams drafted and submitted an amicus brief ( last month in the Google v Network-1 request for rehearing, calling the federal circuit to task for their departure from basic claim construction principles. Law360 even published a short news article about it! The committee is currently hard at work on NAPP's amicus brief for the Regeneron Pharma v Merus case (concerning whether litigation misconduct can be grounds for finding a patent unenforceable due to inequitable conduct). These are important issues for our profession and I'm delighted that the Gov't Affairs committee is weighing in on behalf of all our members. If you're interested in getting involved, please contact Committee Chair Xhavin Sinha via Brandi at [email protected]

AMC Registration – Early Bird Discount Extended

Under Alex Pokot's leadership, the AMC event is really coming together. We've got some exciting speakers lined up, including Wynn Coggings, Sarah Harris, Andrei Iancu, Drew Hischfeld, Jason Lye, Rick Neifeld, Mark Scott, Pete Thurlow. Ron Slusky will be providing a half-day workshop on claim strategies. I'll be speaking too, but don't let that discourage you from coming to hear from them! The latest conference information can be found here:, and the early bird discount deadline has been extended until June 18.

Note that affordable sponsorship opportunities are still available! Also, there are still $100 slots available at the pre-conference workshop on the Basics of Practice Management and Patent Prep & Pros., which I regard as an essential requirement for anybody who is starting a solo practice/small firm or trying to improve the procedures for running their existing practice. We've got four super-experienced members ready and eager to share their hard-earned wisdom: David Dickerson, David Grossman, Mark Nowotarski, and Bruce Young. Those of us who have been around for a while have all seen their form posts and know that they have a lot of wisdom to share.

The AMC presentations will be recorded and made available afterwards to non-attendees for a cost of $595. Selected sessions from Thursday and Friday will also be real-time webcast for free. However, I encourage members to attend in person if they can to take advantage of the friendly networking opportunities with your fellow members and practitioners!


At the AMC, we will be holding an election for three positions on the board of directors. The terms of Jeff Wendt, David Stein, and Alex Pokot are expiring. Alex Pokot is running for re-election, and currently we have Mike Carey (PR committee chair) and Richard Baker (Gov't Affairs Committee member) running for the other two positions. June 15 is the deadline for any other applicants who wish to have their election materials circulated to our members by the board. If you are interested in running, the application link is here:

All Practitioner members in good standing (paid in full) on the Record Date of July 1, 2018 are eligible to cast their votes in the above-mentioned Director election. If you will not attend the Annual Meeting, please cast your vote by selecting a member in good standing to be your proxy holder. Proxy holders must be in attendance at the Annual Membership Meeting in order to vote on your behalf. Instructions for naming a proxy holder can be found here: PROXY for Vote on ELECTION of Directors

Committee Chair Positions

If being on the board of directors appeals to you, but you'd like to start small, please note that there are opportunities to lead or participate in various NAPP committees. Also, we're always recruiting volunteers for short-term task force opportunties. We are still looking for a Legal Affairs committee chair to replace Jeff Wendt, so if you've got expertise in contract review, please contact Jeff directly or let Brandi know. Mavis Gallenson, our current Governance committee chair, is also looking for a replacement. If you're interested in getting our organization's policies and procedures organized (as I am), please contact Mavis directly or via Brandi. (If time allows, I will be getting involved in this committee in the fall)

Mentoring Task Force

Gary Maze's task force, which includes me, Louis Hoffman, Matthew Perrone, and Bill Richards, has submitted recommendations to the board for approval at the June meeting. Go team! While I'm obviously biased, I think the recommendations will form the foundation of an oustanding mentoring programfor NAPP members. The task force should be proud of the work it has done.

Forum Report

Our executive director Brandi Gerew is working with Invision to get our new Invision Community forums set up. Beta testing was successful, but at the beginning of June we ran into some hiccups importing our member list to the new platform. Apparently some lucky members received up to 30 email invitations to log on to the new platform, each invitation having a different account name and password. Obviously this wasn't intentional, and we apologize to those who got inadvertently spammed. I believe the issue has been corrected. Once I know for sure, I will be sending out information about the transition to the new forums. I fervently hope that by this time next week month we will all be enjoying the new platform.

NAPP's Blog for Patent Practitioners

There's a new blog post out from Ed Ryan! Check it out when you get a chance. Among other things, it explains why RCE's shouldn't be filed before an after-final amendment. As always, ongoing contributions are needed, so keep sending in your original patent-practice blog submissions or topic suggestions via Brandi at [email protected] . If we publish your blog submission, you'll receive a $25 Amazon gift card. You can also drop suggestions into the "Idea Box" on our website.

Public Relations Committee

The PR committee is still hard at work getting the word out about NAPP through conference sponsorship opportunities, local meetups, and more! If you hear about an opportunity for NAPP to get more members and/or brand recognition, let Mike Carey know via Brandi at [email protected].

The regional meetups are still mostly aspirational, but we're making progress toward our goal of having 30 or so local groups that meet regularly. Meetups are happening now in Seattle, Oakland, Santa Clara, Simi Valley, Denver, Houston, Atlanta, and Chicago. The Chicago folks are interested in getting a template/document repository set up on the NAPP website, a goal that I know is shared by other members including myself and David Dickerson. See the next entry!

Benefits Committee

Carie Mager is recruiting volunteers for the Benefits committee. Potential projects include a NAPP jobs board, a curated information repository, a group benefits program, etc. While NAPP's top priorities currently lie with the forums and AMC, the organization's attention will shortly turn to the repository and other such projects. In particular, I plan to kick off a new initiative for setting up and curating a repository beginning in August, so you'll be hearing more about this in the near future.  If you're interested in being involved, please contact Carie directly or via Brandi at [email protected].

NAPP logo policy

One of the things we'd like to encourage our members to do is brag about their NAPP memberships! With Jeff Wendt's help, we've put together a TM user agreement, which you can reach at the bottom of the pages on the website, via which you can secure permission to use the NAPP logo. (We're still doing a little cleanup on the logo graphic itself, but that should be done soon.) Submit the agreement, grab the logo, and display it proudly to all your colleagues and clients!! Your family and friends too! And acquaintances. And strangers on the street. Well, really, show it to everybody, cause it's awesome.


Alas, even nonprofit organizations must file tax returns. NAPP's 990-EZ was filed May 15 (just before I fled the country).

Welcome to NAPP!
We gained the following new members in May. 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!


-Dr. Ion C Abraham of Lincoln, MA

-John Davis of Salt Lake City, UT

-Dr. Catherine Asleson Dundon of Englewood, CO

-Xavier Hailey of New York, NY

-Tomohiro Mori of Tokyo, Japan







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.