Richard Neifeld, Ph.D.
Patent Attorney
Email address: general @ neifeld.com
Education
J.D. The George Washington University Law School 1994 Ph.D. Rutgers University (Solid State Physics) 1985 B.S./B.A. University of Rochester (Physics and Mathematics)
(Cum Laude and Honors) 1980
Experience
Neifeld IP Law P.C. - 2002
Partner in the IP law firm of Oblon, Spivak, McClelland, Maier & Neustadt, PC. - 1996
Patent Attorney - 1994
Patent Agent - 1992
Patent Technical Consultant - 1990
Staff Scientist for the U.S. Army's Laboratory Command - 1986
Post-doctoral Fellow, Rutgers University - 1985-1986
Former chair of the Interference Committee and current chair of the Services Subcommittee of the Interference Committee of the American Intellectual Property Lawyers Association (AIPLA). Member of the AIPLA, American Bar Association, Maryland Patent Lawyers Association, and the Patent Information Users Group. Extensive experience in "specialty matters" in the U.S. patent office, such as appeals, petitions, reexaminations, reissues, public protests, and extensive experience in foreign prosecution, and interferences and related litigation. Extensive experience in due diligence work, including investigations, database searching, and opinions.
Admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, and the United States District Court for the District of Columbia.
Widely published in IP law publications, frequent lecturer to patent attorneys on patent law topics, and an active member of the patent bar associations. Founder and moderator for the popular "patentinterference" group on the groups.yahoo.com/group/patentinterference web site, which is a forum for general information on patent law and practice with a focus on patent interference issues.
Co-founder of the www.PatentValuePredictor.com automated patent valuation service, co-inventor of the underlying macro-economic model for valuing patents, and programmer of some of the code powering the automated valuations.
Five years of scientific research in applied physics areas of electro-optics, III-V materials, microwaves, vacuum deposition technology, superconductors, and electronics directed towards the U.S. Army's electronics, communication, and signal processing needs.
I. Introduction
The USPTO has a long range plan, its 21st Century Strategic Plan intended to transform the USPTO into a responsive efficient organization. As part of that plan, the USPTO published a set of final rules changes to the rules of patent practice in 37 CFR. The following lists the three most generally applicable and important changes for U.S. patent practitioners. Much the material below is taken directly from a power point presentation published by the USPTO on these rules changes.
II. Most Generally Applicable and Significant Rules Changes
1. The Ability to Type Sign Certain Papers, With What the USPTO Calls "S" Signatures
S-signatures (§ 1.4(d)(2)):
Example for signing applicant:
/James Jones/
James T. Jones
An S-Signature is any signature between forward slashes that is not a handwritten (§§ 1.4(d)(1) or (e)) or an EFS character coded signature (§ 1.4(d)(3)). It is inserted by electronic (e.g., a word processor) or mechanical means. S-Signatures may be used on documents that are either:
Mailed or hand (courier) delivered,
Transmitted by facsimile, or
Submitted via EFS directly as an EFS Tagged Image File Format (TIFF) attachment (e.g., scanned image), to the Office.
This provision enables practitioners to have an all electronic work flow, thereby enabling elimination of paper during the normal drafting and review activities.
2. The Following Rule Change for Preliminary Amendments Filed with New Applications
Preliminary amendments that are present on the filing date of an application are treated as part of the original disclosure. Applicants are responsible for reviewing all preliminary amendments present on the filing date and providing a reference thereto in a § 1.63 oath or declaration for each such preliminary amendment containing subject matter not otherwise present in the application as filed. Preliminary amendments seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
Therefore, inventor's declarations should include a mechanism (such as a check box) to indicate that a preliminary amendment is being filed with the application, that the preliminary amendment is part of the application as filed, and that the inventor has reviewed the preliminary amendment.
3. Limitations to Amendments After Responding to an Office Action
The following rule changes apply to filings after a response to a first office action.
Supplemental filings such as adding claims or evidence generally will not be entered unless they limit the examiner's work load. Specifically, after a complete reply has been filed, the Office may enter a supplemental reply that is filed before final rejection or allowance and in sufficient time to be entered into the application file, if the subsequent reply is clearly limited upon cursory review to: cancellation of claims; adoption of an examiner suggestion(s); placement of the application in condition for allowance; reply to an Office requirement made after the first reply was filed; correction of informalities (e.g., typographical errors); or simplification of issues for appeal.
This requirement forces practitioners to ensure that a response to a first office action is complete on all issues, and that the response presents all claims that the applicant might consider taking on appeal in response to a subsequent final action.
III. Conclusion
The most important rule changes in the USPTO's Strategic Plan motivated rules being implemented in November 2004 allow typed signatures, define amendments filed with a new application to be part of the new application, and generally precluded filing of amendments that are not in response to an office action after the USPTO has mailed a first office action. Each of these changes requires significant changes in our practice.
If you have any other questions or need further information please feel free to contact us via email at http://www.neifeld.com.
Richard Neifeld,
President, Neifeld IP Law, PC
- Related Videos
- Related Articles
- Ask / Related Q&A
- The Most Important Aspects of the New Patent Rules Supporting the U S P T O 's 21st Century Strategic Plan That Come Into Effective in November 2004
- Troubling Changes To Patent Rules
- The New Disincentive in the U.s. to File a U.s. National Application Prior To, and in Addition To, a Pct Application
- Pct Applicants Everywhere Should Continue to File Powers of Attorney From the Inventors
- Strategies for Preparing for a Patent Interference
- Government Resources for Inventors
- The Changes to the United States Prior Art Law Implemented
- Costs, Likelihood of Success, and Timing for a Trademark’s International Branding




Using A Divorce Attorney
By: Marlon Dirk | 06/07/2009As you may already know, divorce is a legal process of ending your marriage. So hiring a divorce attorney to take care of legal issues pertaining to your divorce is just quite normal.
Patent Attorneys: What They Do
By: Marlon Dirk | 06/07/2009Patent attorneys act as legal counselors of companies. When an inventor submits his invention, the patent attorney gets to start his work. The patent attorney reviews the invention and decides whether it is fit to be patented or not. It is his responsibility to evaluate if the invention is useful, unique, and relevant. Then based on his evaluation, he recommends to the client whether or not to submit a patent application for the invention.
The Decision on Rehearing in Amgen, Inc. v. Human Genome Sciences, Inc. (HGS) -
By: Richard A. Neifeld | 03/07/2009The Decision on Rehearing in Amgen, Inc. v. Human Genome Sciences, Inc. (HGS) - Interference 105,613 - Teaching Points on Interference Practice
Drug Safety: What Is it Worth?
By: PBR | 24/06/2009What country is so ruled by its desire for profits over people that it would sanction or condone the manufacture and distribution of unsafe pharmaceuticals to its own citizens, or by dumping them upon unsuspecting physicians, hospitals, and citizens of other nations? Under the category of global enterprise, nothing is more dangerous than to have too little protectionism and ineffective negotiations with governments and their medical management associations and regulatory agencies.
PATENT FILING REQUIREMENTS IN INDIA
By: Sudhir Kumar | 16/06/2009To minimize the cost of Patent filing and prosecution in India, there are number of things an attorney should take in to account. In the event you are filing a PCT national phase application, provide your associate in India following information:
How to obtain patent in India?
By: Senthil Kumar | 15/06/2009If you are an inventor or budding inventor, you might be having lot of questions in your mind before marketing your invention, such as how to obtain patent for my invention? Is my invention patentable? Can I file patent by myself? etc. There are certain basic guidelines are already known to the patent practitioners to help the inventors.
Finding and Choosing a Right Attorney
By: Aplgeal | 11/06/2009Finding and Choosing an Right Attorney - Before you decide which attorney you are going to hire, you might want to contact several of those that are in your area to help you choose one that can give you the affordable services that are best for you.
All About Candles
By: Fred Wild | 22/05/2009Candles used to be a primary light source many years ago, now they are used primarily for visual and fragrant value in your home. Candles are also used in many religions. For candle resources, visit
Can you Sue "the State" for Patent Infringement?
By: Richard A. Neifeld | 24/05/2007 | Intellectual PropertyReview of case law regarding protecting patents from infringement by the state.
Strategies for Preparing for a Patent Interference
By: Richard A. Neifeld | 24/04/2007 | PatentsPreparing for a successful patent interference and clues one winning.
Comments on United States Patent Assignment Information
By: Richard A. Neifeld | 24/04/2007 | PatentsThe text below is a copy of an email that I sent the Patent Interference User's Group (PIUG) on November 4, 2003, regarding United States Patent Assignment Information. My email was in response to a chain of emails discussing contents and accuracy of assignment information provided by the commercial database providers.
Electronic Notebooks and the Requirements to Prove Date of Invention in Patent Interferences
By: Richard A. Neifeld | 24/04/2007 | PatentsThis paper contains an excerpt of an email I sent to the PIUG (Patent Information User's Group) email distribution list on November 30, 2003.
A Supplemental Note on the Medical Practitioner's Act
By: Richard A. Neifeld | 24/04/2007 | Patentsimmunity from liability from patent infringment
Patent Valuation From a Practical View Point, and Some Interesting Patent Value Statistics From the Patentvaluepredictor Model
By: Richard A. Neifeld | 24/04/2007 | PatentsA review of how to treat patents from a financial and tax reporting standpoint.
What Any Decision Maker Needs to Know About Patent Protection
By: Richard A. Neifeld | 24/04/2007 | PatentsThis paper explains the basic information a decision maker needs to know regarding patents. There are certain concepts the understanding of which is a prerequisite for this topic.