NAPP eNews™/JULY/2018

NAPP eNews™ for July 2018

July eNews

AMC is Almost Here!

Alex Pokot and Brandi Gerew are nailing down the last-minute details for the fast-approaching AMC. The early-bird discount has expired, but we can still work something out for group sign-ups, so convince a colleague to come along and give us a call! Otherwise, you can see the pricing info here, and note that it's not too late to be a sponsor (but you better act fast!!). I've got a lot more to say about this amazing program, but I'm keeping it short so I can get started on my own presentation. Just a quick plug here for the Basics of Practice Management and Patent Prep & Pros. workshop on Wednesday, put together by David Dickerson, David Grossman, Mark Nowotarski, and Bruce Young. Also, a link to the latest brochure.


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. We've got 3 candidates for 3 spots, but it is still important to vote, please!! All Practitioner members in good standing 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

Last-minute candidate announcements are still possible if you are interested in being on the board. Even if you aren't, PLEASE TELL US what you hope to see from the organization. I will be soliciting member feedback during the annual meeting, but don't feel like you have to wait. The board (and me in particular) really do want to receive your feedback. You can email me directly at [email protected], or submit your comments to our executive director at [email protected].

Committee Chair Positions

Hey, I know you're busy! Patent prosecution ain't exactly the easiest way to make a living, and the workload only increases if you are also have to deal with the overhead of running the practice. But it's also important to be a part of something bigger than just your job, and an easy way to do that is to volunteer for a NAPP committee or task force. The time commitment is minimal, in most cases about 1-2 hours per month preparing for and participating in the committee meeting. If a committee member chooses to volunteer for a one-time project, each project would typically take 4-6 hours, except for the Gov't Affairs committee where participation on a brief can take 15-20 hours, and the Legal Affairs committee where contract reviews generally take only an hour or two. Committee chairs typically need to invest an extra hour per month to prepare meeting agendas and board reports. In short, the time commitment is manageable and can increase or decrease as your availability dictates.

We are still looking for a Legal Affairs committee chair to replace Jeff Wendt, and a Governance committee chair to replace Mavis Gallenson. Please contact me or Brandi at [email protected] if you're interested.

Project Management Model

In addition to the committee opportunities, I'm hoping to deploy a new project-based model for additional volunteer opportunities. We'll post the opportunities on the website with descriptions of the mission, timeline, recommended team size, and the estimated time commitment, accompanied by sign-up forms. Our executive director Brandi Gerew, will kick off and monitor each project until complete. Though we'll try to keep most of the opportunities very focused to make the time commitments small, all volunteers will be recognized, lauded, and thoroughly appreciated for their efforts!

Government Affairs Committee

The Gov't Affairs committee, chaired by Xhavin Sinha, continues their vigorous representation of NAPP on the public stage. The committee assisted a journalist from Law360 reporting on further developments in the Google v Network-1 request for rehearing en banc (at issue is the Fed. Circuit's departure from basic claim construction principles), and continues working on the 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), which is due to be filed this month. The committee is considering whether to respond to the PTO's Notice of Proposed Rulemaking (about aligning the IPR claim construction standard with that used by courts during litigation), but comments are due by Monday July 8 and the proposal isn't controversial. NAPP has also received a request to join an amicus brief requesting en banc review of the Fed. Circuit's conflicting precedents regarding single-reference obviousness, and the committee is further considering various proposals for revising the language of 35 USC 101, including proposals from AIPLA/IPO and the ABA. Some on the committee are suggesting that NAPP develop its own proposal. If you're interested in being part of the process, please contact Xhavin Sinha via Brandi at [email protected]

Community Outreach

John T. Davis is encouraging NAPP members to submit suggestions for changes to USPTO policies. John is working with the State Bar of Texas's new Patent Policy Committee to formulate a formal set of recommendations, which will be discussed with Hope Shimabuku, Director of the Texas Regional USPTO, in late August before being refined and submitted to USPTO Director Andrei Iancu. I know I've got some suggestions….. anyhow, watch for an opportunity to contribute on the forums soon.

Member News

Among the features on our website is the Member News! If you’ve got any events in your professional life that you want to share, please send a short news snippet to Brandi at [email protected] , and she’ll add it to the rotation on the website. It doesn’t have to be anything momentous – we just want to increase the sense of community among our members. For example, I’m working furiously to get my AMC presentation finished this week – and learning some new things in the process!

Benefits Committee

Carie Mager will be recruiting volunteers for the Benefits committee at this year’s AMC. Potential projects include a NAPP jobs board, a curated information repository, a group benefits program, etc. On that note, Joyce von Natzmer is leading the Task Force investigating the possibility of a group health plan, and has observed that the Dept of Labor has recently published its final rules for Association Health Plans, which at first glance look quite promising. If you’re interested in helping her make this happen, please reach out via Brandi at [email protected].

Carie Mager is also soliciting comments on what members would like to see in a NAPP jobs board, so let her know if you have any thoughts on this.

The Benefits Committee will also be taking charge of NAPP’s new Mentoring Program, which is being implemented according to the recommendations of Gary Maze’s task force that the board approved last month. John T. Davis of the Legal Affairs committee is working on application/liability waiver forms, and the Benefits Committee will be assembling a Mentoring Subcommittee to establish procedures and oversee the program. Carie Mager will investigate options to award CLE credit for mentoring activities (at least in Illinois). Stay tuned for further developments.

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! Sponsorships so far include CIPI (Atlanta) and HIPLA (Galveston). If you hear about other opportunities for NAPP to get more members and/or brand recognition, let Mike Carey know via Brandi at [email protected].

The PR committee is collecting statistics on how our new members find us, and though we’re only a few months into it, some patterns are emerging. Nearly half of our new members hear about us from a colleague, so word of mouth is vitally important. About a third find us via online searching, so increasing our online visibility will be one of the agenda items for the next meeting.

We continue to make progress on the regional meetups, which can be done in any fashion ranging from one-on-one meetings to quarterly lunches to playing chess at a local game store. Please take advantage of opportunities to connect with your fellow NAPP members and local members of the patent bar – you all have a lot in common!

Forum Report

Whoops! Sorry for spamming many of you as we deployed our new forums on the Invision platform. We were not hacked or otherwise compromised; the platform software had some unforeseen bugs triggered by the 10-digit Yahoo member ID numbers which were larger than the platform knew how to handle. Invision was very apologetic and quick to address the issue, along with other customization issues impacting the way we wanted the platform to behave. We’re still addressing some residual issues, but we hope to make the new platform the “official” NAPP forum later this month.

I know there are still some concerns about the ability to make posts or replies via email. Unless we find some motivated programmers to create a design-around, this won’t be a feature we can offer. Invision and the other forum providers regard email posting as a security risk, and apparently the only reason Yahoo still has it is because they consider Yahoo Groups to be a legacy feature that they stopped updating 4-5 years ago. Nevertheless it is possible to receive the latest posts via email and to click a link to respond. With only slightly more navigation, new posts can be made with similar ease. I’m excited about the new platform and hope to see you there soon!

NAPP's Blog for Patent Practitioners

NAPP’s latest blog post is from Bruce Young! Check it out when you get a chance. It discusses several of the subtle issues involved with deciding how and where to file PCT applications, with suggestions and links to authoritative resources. 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. (I used mine to buy a new cordless drill.)

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


-Patricia Chisholm of Flemington, NJ

-Ali Cirik of Herndon, VA

-David Eyvazzadeh of Denver, CO

-Christopher Horgan of San Jose, CA

-Hyoungsuk Jeon of Herndon, VA

-Jinggao Li of Fairfield, CT

-Kosuke Miyatani of Chiyoda-ku, Tokyo, Japan

-Kyungmin Park of Herndon, VA

-James Potts of Chicago, IL

-Greg Sach of San Diego, CA

-Thomas Stanton of Tampa, FL

-Victoria Vaughn of Westchester, CA

-George White of Long Beach, CA

-Hua Zhou of Herndon, VA







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.