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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07.10.12 | Patent Issues, Patent Litigation, USPTO | Kara OBrien

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.

07.2.12 | America Invents Act, posts, USPTO | Kara OBrien

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. 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) Whitehouse.gov: Help Us Shape Our Strategy for Intellectual Property Enforcement – This post from The White House Blog was written by Victoria Espinel, U.S. Intellectual Property Enforcement Coordinator. The purpose is to announce the Executive Office of the President’s newest initiative to develop a “new strategy of intellectual property enforcement”. Public comments on how to efficiently combat intellectual property infringement are being requested for this Strategy. For more info, click here.

2) Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon? – This post from Oblon Spivak’s Scott McKeown discusses how the reduction in incoming requests and how these new options for contested proceedings will free up much of the Central Reexamination Unit’s examiner’s time. As such, this post suggests ex parte patent reexamination filings could potentially benefit from the newly available bandwidth.

3) Patently-O: Supreme Court Grants Cert in Already v. Nike – This post reports on Already, LLC dba Yums v. Nike, Inc., No. 11-982, and how the Supreme Court’s grant of certiorari in this trademark law matter could impact patent litigation.

4) Patent Docs: USPTO Takes Next Step Towards Cooperative Patent Classification System – This post shares the USPTO’s announcement in the Federal Register that on July 10, 2012, it will be hosting a Cooperative Patent Classification (CPC) External User Day event (77 Fed. Reg. 37879). During the event, the USPTO will provide an overview of the CPC, a new patent classification system being jointly developed by the USPTO and the European Patent Office (EPO).

5) IP Watchdog: Practice Before the Patent Trial and Appeal Board – This post discusses the impact of the September 16th implementation of the new post grant review procedures on law firms and the USPTO alike. The post explains the new Patent Trial and Appeal Board and its duties, the hiring of new Administrative Patent Judges “at an astounding rate”, and what the new proposed trial rules will mean to patent lawyers.

06.29.12 | America Invents Act, posts, Reexamination, USPTO | Mark Dighton

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