By Nathaniel Bruno and Ali Hossein-Khan-Tehrani [1]

While the United States Patent and Trademark Office (“USPTO”) has long been recognized as the U.S. government’s primary mechanism for encouraging and rewarding innovation by individuals, it has recently engaged in a concentrated season of internal administrative innovation.

The Leahy-Smith America Invents Act (“AIA”), signed into law on September 16, 2011, was designed to further modernize and bring U.S. patenting procedures into better conformity with patenting systems in the balance of the world. Major initiatives of the AIA include the transition from a first-to-invent system to a first-to-file system, and an expansion of procedures for obtaining prioritized and expedited review of patent applications. Those reforms are directly related to the patent application process.

But the AIA also mandates a very interesting sort of administrative reform. Although the USPTO has for 200-plus years been an institution confined to the Washington, DC metropolitan area, the AIA expands the reach of the USPTO by requiring it to establish at least three satellite offices around the country within a period of three years from the enactment of the AIA. [2]

The stated goals for the satellite offices indicate a desire by the government to proactively improve the quality of the patent application process and experience, and include the intent to: (1) increase outreach activities to better connect patent filers and innovators with the USPTO; (2) enhance patent examiner retention; (3) improve recruitment of patent examiners; (4) decrease the number of patent applications waiting for examination; and (5) improve the quality of patent examination. [3]

The government recognizes the interrelationship of these progressive goals, explaining that the satellite offices "will help the USPTO attract talented IP experts throughout the country who will work closely with entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process, allowing businesses to move their innovation to market more quickly, and giving them more room to create new jobs." [4] Perhaps the most encouraging advancement for inventors with applications on file is the emphasis on remedying the backlog of approximately 640,000 patent applications. [5]

In compliance with the AIA’s mandate, the USPTO opened its first satellite office in Detroit, Michigan on July 13, 2012. [6] The USPTO also recently announced that it plans to establish three more satellite offices in (1) Silicon Valley, California, (2) Dallas, Texas, and (3) Denver, Colorado by September 2014. [7]

The selection committee evaluated hundreds of applicant cities, and the selection of satellite office sites was based upon "a comprehensive analysis of criteria including geographical diversity, regional economic impact, ability to recruit and retain employees, and the ability to engage the intellectual property community." [8] The official press release predicts that the four offices selected "will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities." [9]

The presence of the new satellite offices will place Sheppard Mullin in an even better position to serve the intellectual property interests of its clients throughout the United States and the world. The firm has already developed a successful legacy of advocacy before the USPTO’s main office near Washington, DC. With the emergence of the USPTO’s upcoming Silicon Valley satellite office, the firm’s intellectual property attorneys in its Palo Alto and San Francisco offices specifically will have an even greater ability to prosecute patent applications efficiently and expeditiously.

By way of example, the new satellite offices are intended to help connect the USPTO with patent filers and enhance the quality of examination. In-person examiner interviews are one method of helping to accomplish these goals. Such interviews are frequently very persuasive tools for securing and expediting the allowance of a patent application, while lowering total costs. Sheppard Mullin’s convenient access to the new USPTO Silicon Valley satellite office will enhance its ability to cost-effectively conduct in-person examiner interviews. As such, the firm’s Bay Area intellectual property team will provide even greater strategic advantages to its clients in the procurement of their patent rights.

If all proceeds as planned, it appears the USPTO’s expansion will help by creating a better and more service-oriented patenting system overall. Or, as USPTO Director David Kappos describes it, "breathing new life into the innovation ecosystem." [10]

[1] Mr. Bruno is an intellectual property litigation associate in Sheppard Mullin’s Washington, DC office. Mr. Hossein-Khan-Tehrani is a law clerk in Sheppard Mullin’s Washington, DC office who holds an LL.M. and is currently a J.D. candidate at The George Washington University Law School.

[2] See H.R. 1249, at § 23 (2011) (enacted).

[3] Id. at § 23(b).

[4] Press Release, United States Patent and Trademark Office, 12-40 (July 2, 2012).

[5] See Implementation of the Leahy-Smith America Invents Act: Hearing on H.R. 1249 Before the H. Comm. on the Judiciary, 112th Cong. (2012) (statement of David J. Kappos, Under Secretary of Commerce for Intellectual Property and USPTO Director).

[6] Press Release, United States Patent and Trademark Office, 12-41 (July 13, 2012).

[7] Press Release, United States Patent and Trademark Office, 12-40 (July 2, 2012).

[8] Id.

[9] Id.

[10] Id.