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.

New PTO Initiative Gives More Opportunities to Amend After Final

Last week, the United States Patent and Trademark Office (USPTO) announced the start of the After Final Consideration Pilot, a new, internal pilot program geared toward advancing the goal of compact prosecution by allotting additional time to examiners to consider applicant submissions after final rejection. Gene Quinn, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, published an article discussing the After Final Consideration Pilot and how applicants may avail themselves of it.

Here is a brief excerpt from Gene Quinn’s article:

Over the past several months, including at the PLI Patent Law Institute and at the MIP Patent Forum in Washington, DC, last week, former Commissioner for Patents Bob Stoll took the blame for the growing RCE backlog.  Those familiar with patent practice know that RCEs were previously placed at the front of the line in the patent examiner’s active work pile.  Stoll changed this, placing RCEs on the new work docket, which effectively lengthened RCE consideration from several months to several years.  This was done to expedite patent examiners picking up new cases, which worked, but came at the expense of what is now over an 85,000 case RCE backlog.  In retrospect Stoll says moving RCEs was probably a mistake.  It has taken the USPTO well over a year to do anything about this because of the need to negotiate with the union over additional examiner time and credit for dealing with After Final submissions in the pilot program.

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

To read the article in its entirety, please visit

IP Watchdog’s Interview with David Kappos

A few months ago, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, Gene Quinn was granted an exclusive interview with USPTO Director and Under Secretary of Commerce for Intellectual Property, David Kappos. Throughout the lengthy interview, the focus shifted from acceleration of applications through the Track 1 program, to agency-wide uniformity despite having 7,000 examiners, and to current initiatives geared toward making the near future for the patent system more efficient. It is amazing to see how Quinn, one of the primary instructors of PLI’s Patent Bar Review, is treated with such respect by the Director of the USPTO.

For the transcript of the interview in its entirety, click here for the IPWatchdog postings. Here are some of the key points taken from the conversation between Quinn and Kappos: (more…)

IPWatchdog Review of “Dialogue Between the Bench and Bar” recently published an article reviewing the “Dialogue Between the Bench and Bar” panel featuring Chief Judge Rader at this year’s Patent Law Institute. The article entitled, “Chief Judge Rader Takes on Lobbying White House and SCOTUS”, was written by Gene Quinn, the blogger, Practice Center Contributor, and panelist at the Patent Law Institute.  Gene describes the interaction between the panelists who were not interested in “pulling punches” with each other. According to Quinn’s article,

The discussion was lively, perhaps even explosive.  You could nearly see sparks fly when Chief Judge Rader continued to pepper Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice.  Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.”

To read the article, “Chief Judge Rader Takes on Lobbying White House and SCOTUS”, click here.

Top 5 PLI Patent Law Posts of the Year

Every Friday, the Patent Law Practice Center likes to provide our readers with highlights from the week’s best patent law blog posts and articles. As 2011 reaches its end, and as the new year causes people to look back on the year that was, we thought it was a great opportunity to present to you the Patent Law Practice Center’s top 5 posts of the year:

1) America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Parts 1 & 2: Explanations provided by Robert A. Armitage of Eli Lilly and Company, and Janet Gongola, Patent Reform Coordinator at the USPTO, helped in breaking down the AIA for the masses.

2) A New Doctrine of Equivalents? CAFC Defines “Use” Under §271Written by Gene Quinn, of IPWatchdog and Practice Center Contributor, this post discusses Centillion Data Systems, LLC v. Qwest Communications International, Inc.and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a). (more…)