Archive for July, 2012

Implementation of First-to-File: PTO Rules and Guidelines

July 26, 2012

PTO Rules

The PTO has now published proposed rules to implement the change from first-to-invent to first-to-file that applies to applications filed on or after March 16, 2013.  The rules seek to accomplish several goals required by the America Invents Act:  (1) convert the US patent system from a first-to-invent to a first-to-file system; (2) treat US patents and published applications as prior art as of their filing date, whether in the US, as international applications, or as foreign applications; (3) eliminate the requirement that prior public use or sale be “in this country”; and (4) treat commonly owned (or subject to a joint research agreement) patents and published applications that have been filed but not published as being by the same inventive entity for both novelty and non-obviousness purposes.

The proposed changes will permit an applicant to file an affidavit or declaration showing that:  (1) A disclosure upon which a claim rejection is based was by the inventor or joint inventor or by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) there was a prior public disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.  This declaration could be used by the applicant to show that certain prior art should fall under a grace period exception and not be used to reject the claims of the application.

To implement the change that permits patents and published applications to be prior art as of their earliest effective filing date, even if not in the US, the PTO proposes to require a certified copy of the earlier-filed non-US application by the later of 4 months from the US application filing date or 16 months from the foreign application filing date.

The most onerous of the new requirements will be for applications filed after March 16, 2013 that claim the benefit of a US or foreign application filed prior to that date.  If the later-filed application contains a “claim to a claimed invention” (?) that is not supported by the earlier-filed application, or if the later-filed application includes subject matter that was not disclosed in the earlier filed application, the applicant must provide a statement to that effect.  The time-frame for providing such a statement is the later of 4 months from the filing date of the later-filed application, 16 months from the filing date of the earlier-filed application, or the date that a “first claim to a claimed invention” is presented that is not supported by the earlier-filed application.

PTO Guidelines

The PTO has also published examination guidelines for implementation of the first-to-file regime.  This is an important document that should be read carefully to determine how the PTO plans to interpret various provisions of the America Invents Act. 

For example, contrary to caselaw, the PTO will interpret “disclosure” as a “generic expression intended to encompass . . . being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application.”

The guidelines also provide other guidance on the “grace period” exceptions.  One of the exceptions provides that a subsequent disclosure by another is not prior art if made after the inventor discloses the subject matter of the invention, provided that the subject matter was obtained the subject matter directly or indirectly from the inventor.  The guidelines make clear, however, that this exception should not be relied upon. 

This exception does not apply, however, if the “subject matter” disclosed is not identical.  Even insubstantial changes, or only trivial or obvious variations will take this exception out of play.  For example, if an invention is disclosed by an inventor, a competitor sees the disclosure (i.e., obtained it from the inventor) and then discloses an improved version of the invention, this exception would not apply.  The inventor would not be able to rely upon this exception.


As others have pointed out, whether a patent claim is supported by an earlier disclosure that may be somewhat general in nature is often a very fact specific inquiry.  Examiners and applicants often disagree about this issue.  Why is the burden on the applicant to make such an admission?

What is the penalty for not making the statement within the required time period or for later withdrawing the statement?  The PTO may require the applicant to point out exactly where (by page, paragraph, or line number) support for the claims is present in the earlier application.  The PTO wants to “readily determine” whether to follow the first-to-invent or first-to-file rules when examining an application with a filing date after March 16, 2013.

And, why does the PTO need to know if new disclosure was added?  The statute only requires the application to fall under the first-to-file rules if it includes a claim that is not supported by the earlier application.  The statute doesn’t refer to added subject matter.  What is the purpose of this requirement other than to trip up applicants?

If the new rules and changes sound confusing, that’s because they are.  My earlier advice regarding the transition remains.  My other advice is to seek the help and assistance of a patent attorney in dealing with this transition.

The comment period for the proposed rules lasts until October 5, 2012.  These proposed rules and guidelines demonstrate how significantly the US patent system will changes after March 16, 2013.


PTO Numbers – June 2012

July 23, 2012

We have now reached the three-quarters mark in FY2012.  It’s time to review PTO numbers again.

The following is a comparison of the PTO’s numbers from the end of January 2012 (at my last numbers update) with the end of June 2012.  Time to refer again to the PTO’s Data Visualization Center to see how things are going. 

First Action Pendency – 22.6 Months

At the end of FY2011, first action pendency was 28 months.  In January, it dropped under 2 years for the first time in recent memory at 22.8 months!  In the 5 months since then, pendency has been fairly flat, dropping by less than a week, or about 0.9%.

“Traditional” Total Pendency – 33.5 Months

Traditional pendency has been fairly flat, down from 33.9 months in January.  The reduction of about 2 weeks is about 1.1% of the total time.

Application Pendency with RCEs – 40.0 Months

This number was at 40.6 months in January.  We’ve gotten to the elusive 40 month goal, but need to continue to do better.  This represents a 1.5% reduction since January.

Applications Awaiting First Office Action – 632,981

The PTO continues its steady, impressive performance in working through the backlog.  At the end of January, the backlog of unexamined applications was 657,378.  Since then, the backlog has decreased another 3.7%.  This is a very positive trend for the PTO.   

Patent Application Allowance Rate – 50.4%, 67.2%

The first number counts RCE filings as abandonments, while the second number does not, but counts them as continuing prosecution.  These numbers are up from 49% and 65.8%, respectively, in January.  While these numbers continue to show slow, steady improvement from earlier record low numbers, they also continue to demonstrate that many patents are allowed by forcing applicants to file RCEs that are not allowed initially.  This is another area where the PTO is making slow, steady progress.  The new after final intiative could help this as well.

Number of Patent Examiners – 7,280

This number is up from 6,815 in January and represents a significant spring/early summer hiring blitz.  It’s still tough for the PTO to budget properly with no guarantee that fee diversion won’t continue.  This appears to be an all-time high for number of patent examiners.

Pendency from Application Filing to Board Decision – 85.5 Months

The crisis at the Board continues to get worse and shows no signs of abating.   This number continues to climb–from 81.9 months in January, to now over 7 years!  New technologies become obsolete prior to getting a patent or decision by the Board.  The PTO hired a number of additional patent judges and attorneys to deal with this issue, but the sharp increase in the number of appeals filed has made tackling this an impossibility.   Soon, the Board will have significantly greater responsibilities with the beginning of the new post-grant review proceedings.

At the end of June, the Board had 26,686 pending appeals from ex parte application prosecution, up 4.7% since January.  Through June, 9,625 new appeals were filed during the fiscal year, a pace for 12,833.  During FY2011, 13,501 new ex parte appeals have been filed, so the filings are expected to show a 4.9% decrease.   Meanwhile, the Board has disposed of 6,902 through June, a pace for 9,203, an increase of 26.2% from FY2011’s 7,292 such cases!

In other types of cases before the Board, the number of new interferences is fairly steady with 46 through June compared to 64 during FY2011.  The Board has already disposed of 48 cases, while concluding only 51 during FY2011.  The number of new ex parte reexam appeals filed through June is 82 (a pace for 109), fewer than the 125 filed during FY2011.  Meanwhile, the Board decided 88 of these cases, as its inventory from 14 to 20 such cases since January.

The other area of significant increase is inter partes reexams.  While 114 appeals were filed in FY2011, 133 have already been filed through June.  This is on pace for a 55.6% increase.  The Board has decided 116 through June, after having decided only 86 last year. 


After making good progress during FY2011, the descreases in pendency have remained steady.  Hopefully, once the new influx of examiners are trained and ready to go, this number will continue to decrease.

The PTO must come up with a plan to deal with its crisis at the Board.  Applicants deserve the ability to get a final agency decision on a patent application within a reasonable time frame, which 81.9 months is not.  The PTO is working hard to try to hire more judges and patent attorneys to work on this situation, but Congress added to its workload as well.  The Board will soon need to deal with post grant oppositions and other procedures from the America Invents Act.

To truly fix these issues, Congress must end fee diversion permanently and permit the PTO to be fully funded so that it can be fully staffed to meet users’ needs.  The patent community must continue to pressue congress to keep its hands off the PTO’s money.

Third Party Pre-Issuance Submissions

July 17, 2012

The America Invents Act includes provisions to permit third parties to submit information to the PTO that is relevant to the patentability of pending applications.  The PTO previously published proposed rules regarding these submissions.  Final rules have now been published to implement these provisions.

Third parties may submit patents, published applications, or other printed publications that may be of relevance to pending patent applications.  The submission must include:

(1) a list identifying the items being submitted;

(2) a concise description of the relevance of each item listed;

(3) a legible copy of each non-U.S. patent document listed;

(4) an English language translation of any non-English language item listed;

(5) a statement by the party making the submission that the submission complies with the statute and the rule; and

(6) the required fee.

A timely third party submission must be filed before the earlier of:  (a) mailing date of Notice of Allowance; (b) six months after first publication of the application; or (c) mailing date of first Office Action where a claim is rejected.  Third party submissions will not be available for in post-issuance proceeding, including reissues, reexaminations, or the like.

The PTO is encouraging third party submissions to be filed electronically.  Submissions that meet the requirements of the rule will be entered into the IFW.  Submissions that do not comply with the rule will be discarded.  The submitter will not be given the chance to fix or amend the non-compliant submission, nor will the fee be refunded.  The timer period for submissions will likewise not be tolled to permit resubmission.  If a third party submitter provides an e-mail address with the submission, the PTO will notify the submitter at the e-mail address that the submission did not comply with the rules.

There is no service requirement upon the applicant.  Applicants who participate in the e-Office Action program, however, will receive notice from the PTO when submissions are made.  Third party submissions will be considered by the examiner when he/she next examines the application.  The submission will be handled the same way as an IDS submitted by the applicant.  Third party submitters will not be permitted to respond to the examiner’s action regarding their submissions or participate further in the prosecution of the applications.

The concise description of the relevance of each document submitted is not an invitation for third parties to participate in the prosecution of the application.  The rule does not require third party submitters to identify themselves, i.e., such submissions may be made anonymously.

The fee for submitting documents will be $180 for each 10 documents or fraction thereof submitted.  The rule includes an exemption of the fee for a first submission by a particular third party in an application where the submission is of 3 or fewer documents.  Similar fee-exempted submissions may be made by other third parties in the same application, provided the third parties are not in privity.

The final rule goes into effect September 16, 2012.

First-To-File or First-To-Invent: What’s the Difference? The U.S. Patent System Transitions

July 16, 2012

I have a new article in the June/July 2012 issue of Virginia Lawyer.

The article concerns the transition from first-to-file to first-to-invent.

New Website for Patent Inventor Data

July 12, 2012

Attention Inventor Addicts, New Online Database

By Lauren Gurley, writing intern at FindTheBest

Here is a new, user-friendly index for those who are interested in the history of inventors and intellectual property or who are personally involved in the creation of patents you can find it all at:

More than just your average patent database, this side-by-side comparison tool has great facts about inventors and the various aspects of their inventions. Users have the option to search by a number of criteria such as the date that an inventor’s most important patent was issued, the number of U.S. patents, their field of study, and their home country.

Also, each inventor has a profile that includes their biographical information, and descriptions of significant inventions and their impact.

Whether you wish to research specific inventor or just want to browse the database for your next piece of trivia, is the perfect resource for inventor enthusiasts of all sorts.

The Importance of Employment Agreements

July 10, 2012

The Federal Circuit issued a decision regarding ownership of a patent invented by an employee in Preston v. Marathon Oil Co.

In February 2001, Preston signed a letter agreement to begin employment with Marathon.  His employment actually began in March 2001. 

On April 5, 2001, he signed a standard Marathon employment agreement.  The agreement provided a definition of “Intellectual Property” that included all inventions made or conceived during the term of employment that relate to present or anticipated company business or that were created with company information, factilities, material, etc.  The agreement further provided that the employee “promptly disclose” and “does hereby assign” all such Intellectual Property to the company. 

Finally, the agreement gave the employee the opportunity to provide a list and brief description of any unpatented inventions that would not become Intellectual Property under terms of the agreement.  Under this section, Preston wrote “CH4 Resonating Manifold.”

In late 2002, Preston developed an invention related to improved machinery for extracting methane gas from a gas well.  During 2003, a baffle system based on his idea was developed and installed in several Marathon wells.  Preston’s employment ended April 15, 2003.  Prior to that, he had overseen some of these installations, which continued after his employment ended.

After leaving Marathon, Preston filed a patent application based on his idea that issued as the ‘764 patent in 2005.  Marathon filed an application on the invention in 2004 that issued as a patent in 2007.  During prosecution, Marathon was required to distinguish its patent claims from those of the ‘764 patent.


The parties began these legal proceedings in 2007 and 2008 regarding ownership of the patents and associated rights.

First, Preston argued that the April 5, 2001 agreement regarding IP rights was invalid because he wasn’t given any additional value (called “consideration”).  He signed the original letter employment agreement as a condition for beginning employment.  He was already employed in April 2001 and didn’t get anything else of value for giving up his rights as recited in that agreement.

The Federal Circuit asked for an interpretation of Wyoming law in determining that continued employment is sufficient consideration for signing an agreement that includes an IP assignment clause.  Thus, the April 2001 agreement was valid.

Next, Preston argued that he specifically excluded the inventions claimed in the patents by his writing “CH4 Resonating Manifold” as an exclusion to the April 2001 agreement.  The parties disputed what Preston meant by this phrase.  He was not able to produce any evidence, such as drawings or written descriptions, of the inventions dated prior to his employment with Marathon.  During testimony, he indicated that he had such drawings but that he “lost them” in 2005 or 2006.  The court discredited this testimony and found that he did not conceive of the inventions prior to his employment.

Finally, the terms of the April 2001 agreement indicate that Preston “hereby assigns” his IP rights to Marathon.  Therefore, this assignment occurs automatically.  His later refusal to execute an assignment is irrelevant because the patents have already been assigned.


This case provides a number of lessons for employers (and potential employees) who may have employees that create valuable IP during their employment.

First, be certain to have IP disclosure and assignment clauses in employment agreements for all employees.  Have all new employees sign such agreements prior to employment or at least on the first day.  Some states may require additional consideration once employment has already commenced for such clauses to be valid.

There was some dispute in the case as to what the agreement meant by “conceive” and “make” an invention.  Try to stick with the definitions that are common to patent law.  “Conception” refers to “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied to practice.”  This is more than just a vague idea, it requires definite plans for how to implement the invention.  “Make” or “reduction to practice” refers to the act of actually making the invention work for its intended purpose.

Next, to avoid a dispute as to whether the employee developed the invention prior to employment, when executing the agreement, give the employee the opportunity to indicate that he developed the invention prior to commencing employment.  Require that he prove this development by providing sufficient detail that he can’t later argue that vague statements constiatute conception.

Finally, use language that requires the employee to promptly disclose inventions to the company and to “hereby assign” all future inventions.  The assignment is not required later once the employment has ended and you need to chase the employee and potentially sue him.  Instead, make it effectual as soon as inventions are conceived.

Federal Circuit Rules Computer-Related Claims to be Patentable Subject Matter

July 9, 2012

The Federal Circuit reversed a district court’s summary judgment ruling of invalidity of computer-related claims in CLS Bank Int’l v. Alice Corp. Pty. Ltd.  The district court ruled that certain system, method, and media claims were not dircted to patentable subject matter under § 101 of the Patent Act.  A split panel of the Federal Circuit reversed.

The patents at issue are directed to computerized trading platforms for exchanging obligations in which a third party settles obligations between first and second parties so as to eliminate “settlement risk”.  The patents included method, system, and media claims.  Representative claims from each category are set forth below.

Method claim: 

A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these [sic] transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing one of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.

System claim:

A data processing system to enable the exchange of an obligation between parties, the system comprising:

a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

 Media claim:

 A computer program product comprising a computer readable storage medium having computer readable program code embodied in the medium for use by a party to exchange an obligation between a first party and a second party, the computer program product comprising:

program code for causing a computer to send a transaction from said first party relating to an exchange obligation arising from a currency exchange transaction between said first party and said second party; and

program code for causing a computer to allow viewing of information relating to processing, by a supervisory institution, of said exchange obligation, wherein said processing includes

(1) maintaining information about a first account for the first party, independent from a second account maintained by a first exchange institution, and information about a third account for the second party, independent from a fourth account maintained by a second exchange institution;

(2) electronically adjusting said first account and said third account, in order to effect an exchange obligation arising from said transaction between said first party and said second party, after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and

(3) generating an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.

Federal Circuit Opinion

The district court ruled that all of the claims fell within the “abstract ideas” exception to patentable subject matter.  The Federal Circuit panel, per Judge Linn, noted that the line between patent eligible subject matter and abstract ideas is an elusive one.

The court noted that performing an otherwise abstract idea on a computer does not render it patentable.  That does not mean, of course, that all methods performed with a computer are patent ineligible.

It can, thus, be appreciated that a claim that is drawn to a specific way of doing something with a computer is likely to be patent eligible whereas a claim to nothing more than the idea of doing that thing on a computer may not.

(emphasis in original).  As the Supreme Court noted in Prometheus, at thieir most basic, all patent claims can be stripped down to abstractions and natural phenomona.

Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised.

The majority basically holds that patent claims are presumed valid and that they are only invalid when they are clearly directed only to abstract ideas.

[T]his court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.

The court then proceeded to do something that the Supreme Court in Prometheus failed to do.  The majority of the court held that before determining whether a claim is directed to patentable subject matter, the court must consider the scope and content of the claims, i.e., a claim construction analysis should be undertaken.  This is the only way to determine what is actually claimed.

It is inappropriate to view the claims as separate limitations–the computer implementation itself does not render them patent eligible.  Instead, a review of the entire claim as a whole demonstrates that the asserted claims appear to cover the practical application of a business concept in a specific way.

Judge Prost issued a dissent where she suggested that she could not answer the patent eligibility questions of the case with absolute certainty.  She would, however, rely on common sense (?) to hold that they are directed to abstract ideas.  She would follow the Supreme Court’s opinion in Prometheus to inquire whether the claims include an “inventive concept” to determine whether they are patent eligible.  She strongly criticizes the majority for disregarding the Supreme Court’s decision.

It now seems that patent eligibility at the Federal Circuit could turn on the panel that hears a particular appeal.  It is not surprising that Judge Linn, typically a strong patent rights advocate as a former patent attorney, would uphold the claims whenever possible, while Judge Prost, typically not favoring strong patent rights, would not.  This, of course, adds further uncertainty to an issue that should be quite clear if separated from questions of prior art.

Judge O’Malley joined Judge Linn in the majority.

PTO Interim Guidance on Process Claims Involving Laws of Nature

July 6, 2012

Earlier this week, the PTO provided a memo to the examining corps to supercede its earlier memo for analyzing patent claims that may be implicated by the Supreme Court’s decision in Mayo v. Prometheus.  The PTO calls the guidance “interim” because the Myriad and Ultramercial cases have been remanded by the Supreme Court and are pending at the Federal Circuit.  Thus, this guidance may require updating once opinions are issued in those cases.

The memo provides a summary of the analysis to be undertaken to determine patent eligibility for claims that include natural principles.

In summary, process claims having a natural principle as a limiting element or step should be evaluated by determining whether the claim includes additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself.

Process claims that do not include a law of nature or naturally occurring phenomenon should continue to be analyzed under the PTO’s 2010 Interim Bilski Guidance.

In analyzing claims that may be implicated by this policy, examiners are to address three questions.

1.  Is the claimed invention directed to a process, defined as an act, or series of acts or steps?

2.  Does the claim focus on use of a law of nature, a natural phenonenon, or naturally occurring relation or correlation?  (Is the natural principle a limiting feature of the claim?

3.  Does the claim include additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, or are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? (Is it more than a law of nature + the general instruction to simply “apply it”?)

The heart of the matter, of course, is the third inquiry.  The memo provides a number of examples taken from judicial opinions and others to attempt ot provide guidance on this inquiry. 

Responses to rejections based on this inquiry may include amendments to add additional steps or amend existing steps or acts that are not merely conventional or well-known (this is based on the Supreme Court’s confusion of prior art and patentable subject matter).

The bottom line is that this analysis is confusing and difficult to determine.  The PTO did a decent job of providing this guidance given that the Supreme Court’s opinion is not a model of clarity on how to handle these issues.

The memo continues to emphasize that under the principles of compact prosecution, examiners should also examine these claims for patentability under the other sections of the Patent Act as well.  Only in the most extreme cases would a § 101 rejection alone be appropriate.

Judge Gajarsa Retires From Federal Circuit

July 3, 2012

Judge Arthur J. Gajarsa, who last year took senior status, announced his retirement from the Federal Circuit as of June 30.  Judge Gajarsa, 71, was appointed to the Federal Circuit in 1997 by President Clinton.  Given that he was already on senior status, this announcement does not create a further vacancy on the court.

Other Judges and Possible Vacancies

The senior active judge on the court is Pauline Newman.  Judge Newman, 85, was appointed to the court by President Reagan in 1984.  She hasn’t given any indication that she may retire.

Judge Alan Lourie, 77, has been on the court since 1990.  He is also eligible for senior status.

Chief Judge Randall Rader, 63, would be eligible for senior status in 2014.

Judge William Bryson, 66, has been a member of the court since 1994.  He is eligible for senior status.

Judge Richard Linn, 68, joined the court in 2000.  Judge Linn will become eligible for senior status in 2013.

Judge Timothy Dyk, 75, has also been on the court since 2000.  He is eligible for senior status.

Judge Sharon Prost, 61, has been on the court since 2001.  She will be eligible for senior status in 2016.

Judges Kimberly Moore, 44, Kathleen O’Malley, 56, and Jimmie Reyna, 59, each have a number of years before they will be eligible for senior status.

Judge Evan Wallach, 63, has been on the court since 2011.  By virtue of his service on the Court of International Trade, he will be eligible for senior status in 2014.

Judges Robert Mayer, Jay Plager, Raymond Clevenger, and Anthony Schall also continue to serve on the court in senior status.

There is also a vacancy on the court as the Senate Judiciary Committee approved Richard Taranto’s nomination March 29.  The full Senate has yet to take action on the nomination.

HT:  Hal Wegner

PTO Announces Three More Satellite Offices

July 3, 2012

The PTO is scheduled to open its first satellite office in Detroit on July 13.  The PTO has also announced that it has chosen the sites for three more satellite offices:  Dallas, Denver, and San Jose.

The Detroit office is expected to include 120 employees during its first year of operations.  The PTO’s announcement does not include a timetable for the other offices at this time.

The three announced locations make a lot of sense geographically.  San Jose gives the PTO a foothold into Silicon Valley, California where many high tech industries are located.  The challenge will be how to hire and retain examiners in this area given the extremely high cost of living and the ready availability of more lucrative employment for highly qualified individuals, especially once they have several years of PTO experience.  The challenge will be even greater than at the current PTO location in the Wasington-D.C. metro area.

Dallas provides the PTO with another geographically distinct location in the country’s second most populous state, while also providing proximity to other areas of Texas including Austin and Houston.

Finally, Denver provides a location in the Rocky Mountains.  The PTO will now include a location in each time zone.  All of the locations are serviced by major airports that will permit travel to the office for attorneys and applications as necessary.

As noted recently by Hal Wegner, the question arises as to the PTO’s new organization when all 5 offices are up and running.  Will certain technology areas exist only in certain offices?  If so, that makes examiner hiring and retention somewhat more challenging given the specialization.  Or, will attorneys and applicants be able to “forum shop” or pick a particular office in which to file and prosecute an application?  This could pose the type of problems that the Federal Circuit sought to alleviate in the courts.

The PTO will need to address many of these questions in the coming months as it begins the process of setting up these new offices.