It all started simply enough last year, when Thompson & Knight secretary Amanda Seward told her boss Max Ciccarelli about a Facebook post from the U.S. Patent and Trademark Office (USPTO). That post announced that the agency was looking for new cities in which to open its first-ever satellite offices.
The America Invents Act of 2011 requires the USPTO to establish at least three regional satellite locations by September 2014 as part of a larger effort to modernize the U.S. patent system. The new satellite offices are designed to reduce the backlog of patent applications and allow entrepreneurs and patent attorneys better access to patent examiners and to the USPTO’s comprehensive search databases.
The day after that announcement, Ciccarelli, then president of the Dallas Bar Association’s Intellectual Property Section, brought up the issue of how they could bring a satellite office to Big D during a meeting of the group’s officers.
Max Ciccarelli of
Thompson & Knight
Ciccarelli asked IP section member Lisa Evert, a partner in Dallas’ Hitchcock Evert, to help lead an effort to put together a written proposal for the USPTO. It detailed how Dallas met all the agency’s requirements for a proposed satellite office, including Dallas’ high concentration of engineers; its seven universities that offer science, computer and engineering degrees; and its numerous high-tech employers, including Texas Instruments and Ericsson Inc.
“We coordinated with the Patent Office’s search committee to determine what information we needed to show them to mount our best case, and together we reached out to the local resources to gather and present that information,” Evert says.
“We’re fortunate to have so many colleagues that were able to connect our effort with the Dallas Regional Chamber, local universities and city officials to gather the raw data we needed,” she says. “Our firm culled through that data to synthesize the key factors that were important to the USPTO, and we put it together for the draft proposal. The proposal was refined by the larger committee into a presentation that I think really captured the spirit of the North Texas community.”
Lisa Evert, a partner in
Dallas’ Hitchcock Evert
Evert worked to get regional business including RIM, Ericsson and MetroPCS to support the proposal.
“These are companies with superb in-house IP attorneys that wouldn’t have signed on unless they really thought what we were doing was important,” Evert says. “Even now, people still talk to me about how great our proposal was, what a coup it is for Dallas to have been selected, and how excited they are about the Patent Office coming in the next year or 18 months.”
On July 2, all the work on the proposal paid off, when the USPTO announced that Dallas, along with Denver and Silicon Valley, Calif., had been selected as sites for satellite offices. Dallas beat out proposals submitted by other large Texas cities, including Houston and Austin.
Dallas’ proposal made an impression on David Kappos, undersecretary of commerce for intellectual property and director of the USPTO, who noted this summer that the proposal highlighted the “185,000 technical professionals in the community, the huge technical community, large number of patents filed [and] great universities.”
“In fact, it was a no-brainer to choose Dallas, when you look at what it is to make an effective PTO presence,” Kappos said.
On Nov. 29 the USPTO decided that the office will be located in the Terminal Annex Building in downtown Dallas.
“It’s a big deal,” says Doug Cawley, an intellectual property lawyer and principal in Dallas’ McKool Smith. “It’s unquestionable recognition of North Texas as a technology center.”
Ciccarelli says, “If it wasn’t for the Dallas Bar IP Section, we would not be where we are today. And the reason is that the IP section was instrumental in pulling together all of these different groups from around Dallas to submit the bid to the PTO.” The Thompson & Knight partner says, “And it was really a team effort by all of these various groups. It just happened because of a creative secretary bringing it to our attention.”
Seward says it didn’t seem like that big of a deal at the time.
“I didn’t know what went into the submission, but I went on line and pulled all of the requirements and I said, ‘You know, I think we meet all of them,’ ” Seward says.