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As intellectual property attorneys await word on whether the U.S. Patent and Trademark Office will drop controversial rules facing a court challenge, the agency’s direction is quickly shifting under a new leadership regime. The ultimate goal is reducing patent application processing time. Commerce Secretary Gary Locke tapped Foley & Lardner partner Sharon Barner as deputy director on Oct. 2. The appointment of Barner, the Chicago-based chairwoman of the firm’s intellectual property department, follows PTO director David Kappos’ Sept. 30 announcement of a proposed overhaul to patent examiners’ deadlines and how their work is evaluated. The patent bar, meanwhile, is awaiting word on whether the PTO will fight for or drop divisive rules that private parties are trying to stop through a lawsuit at the U.S. Court of Appeals for the Federal Circuit, Tafas v. Kappos. The Federal Circuit agreed to stay the case during the PTO’s leadership transition, but the agency’s next brief is due on Oct. 20. The agency’s directional shift began when President Barack Obama nominated Kappos to lead the agency in June. Kappos, a former International Business Machines Corp. in-house attorney, took the agency’s helm in August amid strong support from trade groups. Even before Kappos came on board, Locke hired Nicholas P. Godici, the PTO’s commissioner for patents from 2000 to 2005, to help reform the agency. Now another lawyer from outside the government, Barner, will join the leadership team. In a statement, Locke said Barner is part of the agency’s plan to cut patent application processing times. “Sharon is a deeply qualified IP attorney and her experience is an important addition to the USPTO senior leadership as they reshape the office and work with Congress to pass comprehensive patent reform,” Locke stated. The PTO’s proposed update to its count system, or how it evaluates patent examiners’ work, would give examiners more total time to process applications. It would also give examiners more incentives to process applications the first time around rather than work on continuing applications. The revisions would allot more time for examining applications filed for the first time; give examiners time to initiate and conduct interviews with patentees; and offer fewer credits for working on continuing patent applications. Herb Wamsley, executive director of the Intellectual Property Owners Association, said the organization is still studying the nuances of the proposal, but it “appears to be a significant and useful change in the system.” The changes should cut down on the number of continuing applications, which should largely offset the increased time that examiners would have to review an application, Wamsley said: “We believe it is moving the incentives in the right direction for efficiency and a more compact examination process. Allowing examiners to spend more time on the first application will ultimately shorten the average length of time patent applications are in the system, agreed Erik Belt, a Boston intellectual property/information technology partner at Newark, N.J.-based McCarter & English. In the long run, it will have the effect of shortening the patent application process, by getting a better examination in the first place,” Belt said.

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