Patent Law Practice Center

Kappos Gives Presentation at PLI Post-Grant Program

On Wednesday, March 27, 2013, the Practising Law Institute hosted the New York edition of the all-new USPTO Post-Grant Patent Trials program. This was the second of four stops across America for the program. The first stop was in Chicago on March 4, 2013. The remaining live presentations will be in San Francisco, CA, on April 15, 2013, and in Austin, TX, on April 29, 2013.

The headliner for the New York event was David Kappos, the former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Kappos, now at Cravath, Swaine & Moore, provided an overview of what has been happening at the Patent Trial and Appeals Board (PTAB). The slides were prepared by the USPTO and the presentation was originally scheduled to be delivered by Chief Judge James Smith of the PTAB, who unfortunately had to back out due to sequestration/budget matters.

Kappos ably filled in and was a fountain of useful information on the PTAB, what the Office is doing and why. He was, of course, the head of the Office at the time the America Invents Act (AIA) was passed and was intimately involved with the formulation of the Appeals rules that went into effect at the end of 2011 and the many rules packages dealing with the new post-grant trial procedures that went into effect on September 16, 2012, the one year anniversary of enactment of the AIA.

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Patent News from the Holiday Week

Last week, we in the United States celebrated the Fourth of July, which landed right in the middle of the week on Wednesday. Having a national holiday on a Wednesday typically leads to many taking vacation time and creating their own very long holiday weekend. So while you were away, or perhaps distracted by the scalding hot heat that more than half of the United States suffered from, there were a number of noteworthy patent stories. Yes, decision makers and deal makers did not take a break last week. Not by a long shot.

So while you were otherwise occupied, what did you miss? Here is a run down of five of the most noteworthy stories from last week.

 

1. WIPO Under Fire For Sending Computers to UN Sanctioned Countries

Earlier this year, the World Intellectual Property Organization (WIPO) came under fire for sending computers to North Korea in violation of United Nations sanctions. See WIPO Embroiled in North Korean Computer Deal. Now WIPO is under fire again. It seems they not only shipped computers to North Korea, but also shipped computers to Iran as well. Congresswoman Zoe Lofgren (D-CA) called this latest WIPO transgression “an outrage.” The United States Department of State is attempting to work with WIPO to make sure that new procedures are put into place to ensure this never happens again.

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Patent Practitioners: You Are Free to Move About the Country

On November 29, 2011, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register requesting comments on where they should locate the additional satellite Patent Offices authorized by the America Invents Act (AIA).

Earlier today, Acting Secretary of Commerce Rebecca Blank and USPTO Director David Kappos announced three new locations for satellite Patent Offices, which will join the Detroit Patent Office scheduled to open just days from now, on July 13, 2012. The winners in the satellite Patent Office sweepstakes were San Jose, California; Denver, Colorado; and Dallas, Texas.

“By expanding our operation outside of the Washington metropolitan area for the first time in our agency’s 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce,” said David Kappos, Director of the USPTO. “These efforts, in conjunction with our ongoing implementation of the America Invents Act, are improving the effectiveness of our IP system, and breathing new life into the innovation ecosystem.”

The locations selected by the USPTO and Department of Commerce are hardly shocking, and certainly should help the Patent Office recruit high-caliber patent examiners and others who might not be willing to relocate to the Northern Virginia area, or commute there periodically as they work primarily from home.

All three of these locations were on my Top 10 List of possible locations published in December 2011 — sort of.

It was easy to predict that there would be a location in Northern California in or around Silicon Valley, which was my #1 of 10. Describing this no-brainer selection, the USPTO explained:

Silicon Valley provides the USPTO with a pacific time zone hub in the heart of California’s most vibrant innovation center. Silicon Valley, and the areas that surround it, contain many of the USPTO’s top filers as well as legions of start-up and small tech companies that depend on the USPTO. Further, Silicon Valley’s great quality of life and abundant population of engineering talent will provide fertile recruiting grounds for the Agency.

Similarly, Denver was easy to guess because back when the Detroit Satellite Office was announced, there were very disappointed people in Denver who had either been lead to believe they would get the location, or convinced themselves of that fact. I had Denver at #6 of 10. In explaining the selection of Denver, the USPTO explained:

The Denver area provides the USPTO with a mountain time zone hub from which to operate. Empirical evidence demonstrates that Denver is a sought-after place to live and work with relatively low cost-of-living—a critical combination for the recruitment and retention of top talent. Further, the economic impact of a USPTO satellite office in the Denver region is projected to be disproportionate relative to most other cities. Denver also boasts an above average population of potential Veteran employees.

The one that I sort of got right was Dallas. I had “Houston or somewhere in Texas” as #9 of 10. Given the importance of energy technologies for our nation’s future, a location in the heart of American energy country makes perfect sense. With a low tax burden, growing economy and numerous world-class Universities, Texas seemed to be a sure-win, and I would have put it higher on the list if there had been a true, clear-cut city as a front-runner.

The USPTO said this of their Dallas selection:

The Dallas area provides the USPTO with a southern, central time zone hub from which to operate. The region is exceedingly rich in engineering talent, patent applicants, and patent grants. Dallas boasts an above average population of potential Veteran employees.

The Patent Office could easily also have made a case for Houston, Dallas, San Antonio or Austin, but placing the satellite office more inland from the threat of adverse weather seems wise, as does putting it near a major airport.

So now the United States Patent and Trademark Office is going to be a truly National Patent Office. The headquarters will remain in Alexandria, Virginia (of course) and there will be another location in the Eastern Time Zone, but substantially north, in Detroit. There will now be Patent Office satellites in each time zone in the lower 48 — Central (Dallas), Mountain (Denver) and Pacific (San Jose).

I wouldn’t hold my breath for an Alaskan Satellite location, but members of various USPTO oversight committees could perhaps, down the road, be persuaded that a satellite location in Hawaii would make sense. While it would make for a very nice junket, it would also make a USPTO location more convenient to Asia, which is certainly a big USPTO constituency given the amount of filings from overseas. But that is almost certainly just wishful thinking on my part, the same way it was when I added Orange County, California to my top 10 list. How great would it have been for a satellite office in Laguna Beach, Newport Beach or Huntington Beach? Even Irvine or Costa Mesa! Oh well. I suppose that is what vacations are for.

Patent attorneys, patent agents and would-be patent examiners — in the words of Southwest Airlines, “you are now free to move about the country.” See Registration No. 2927614.

In Closing Black History Month, a Celebration of African-American Inventors from USPTO

As February draws to a close, we at the Patent Law Practice Center wanted to share in the USPTO’s celebration of African-American inventors and their role in the history of the patent office. In USPTO Director David Kappos’ blog, Director’s Forum, offers a look at “the invaluable contributions African-Americans have made, and continue to make, to the success of the American Experiment…”

In the article entitled, “In Celebration of Black History”, Kappos discusses the first African-American inventors to receive patents,

Among those to whom we owe our nation’s success are a number of innovative African-Americans who distinguished themselves in the field of intellectual property, even before the American Civil War and Emancipation. Although slaves were prohibited from receiving patents on their inventions in the antebellum period, free black inventors were not. Thomas L. Jennings, born in 1791, was 30 when he received a patent for a dry-cleaning process, making him what historians believe was the first black inventor to receive a patent. Jennings’s income went mostly to his abolitionist activities, and in 1831 he became assistant secretary for the First Annual Convention of the People of Color in Philadelphia. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include a new UPSTO branch in Detroit and IBM’s patent portfolio remaining the recipient of the most patents granted in the past year.  If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out!

1) Patently-O: New Detroit Office – It’s somewhat all-American to be happy for Detroit’s recent resurgence, and this post shares the details of the new Detroit Branch of the USPTO. The office is expected open by July 2012 and will employ about 100 individuals, mainly patent examiners.  Prospective employees can e-mail detroitHiring@uspto.gov.

2)Patents Post Grant: Patent Reissue Oath Practice Revised by the USPTO – As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems. This post explains the major changes to the inventor’s oath. (more…)