Dallas Bar Association
HEADNOTES
Focus Corporate Counsel/Government Law
August 2012 Volume 37 Number 8
DBA IP Section Lands Dallas Patent Office by Vincent J. Allen
The United States Patent and Trademark Office (USPTO) and the Department of Commerce announced July 2 the selection of the Dallas area as the home to one of four new regional offices of the United States Patent and Trademark Office. The creation of satellite offices marks the first time in the 200-plus year history of the USPTO that it will have operations outside of the Washington, D.C. area. In selecting the sites for the satellite offices, the USPTO considered factors such as geographic diversity, economic impact, available workforce and the local intellectual property community. Dallas was a good candidate for an office to serve the South, but there were other attractive cities vying for an office as well, including Houston, Atlanta and Austin. With more than 50 metro areas under consideration nationwide, the selection process was highly competitive according to Acting U.S. Commerce Secretary Rebecca Blank. But it was Dallas’s intellectual property community that was instrumental in putting Dallas at the top of the list. A proposal in support of the selection of Dallas prepared by the DBA IP Section highlighted Dallas’s strong university and research community, talented workforce and robust business community. Emphasis was also placed on the fact that Texas is second only to California in the number of patent applications filed each year. David Kappos, the Director of the USPTO reportedly said, “The DFW area sprang off the page at me.” He knew when he read the proposal that the USPTO had to select Dallas as one of the satellite offices. Hilda Galvan, Chair of the DBA IP Section and a partner at Jones Day, reports that although the proposal in support of Dallas was a group effort, Lisa Evert, a founding partner of Hitchcock Evert, is the one who spearheaded the preparation of the proposal. Marc Hubbard, a partner at Gardere, and Wei Wei Jeang, a partner at Andrews Kurth, were also instrumental in refining the proposal and rallying community support. Max Ciccarelli, a partner at Thompson & Knight, is credited with bringing the opportunity to the attention of the IP Section after his assistant saw a post by the USPTO on Facebook inviting comments on the selection of the satellite offices. The proposal was joined by the Center for American and International Law, the Dallas Regional Chamber, Southern Methodist University, the University of Texas at Dallas and the University of Texas at Arlington. Michael Pegues, a partner at Bracewell Giuliani, reached out to various organizations and local and national political leaders to garner support. Through the efforts of the IP Sec-
tion members, local companies Research in Motion, Ericsson and MetroPCS wrote separate letters in support of the proposal, as did Dallas Mayor Mike Rawlings. Although the deadline for establishing at least three of the offices is August 2014, the USPTO has already begun developing a “concept of operations” for the Dallas office. On July 11, just nine days after the announcement of the cities selected, Secretary Blank and Director Kappos met with local officials, attorneys, university representatives and company representatives in Dallas to discuss the opening of the new office. Vikram Aiyer, Special Advisor to the Under Secretary of Commerce, says that although he cannot commit to an exact timeframe for the opening of the Dallas office, the plan is to open the office “as quickly as we can,” noting that the Detroit office was opened well ahead of schedule. Aiyer reports that the USPTO “couldn’t be happier or more excited to come to Dallas.” The July 11 meeting he said “energized the USPTO to move even faster.” The Dallas Bar Association will play a key role in helping to develop the new office, and the USPTO looks forward to working with the DBA, according to Aiyer. Aiyer could not comment specifically on the location, but Galvan, who attended the meeting with Director Kappos, says that the UPSTO will take into consideration the location of its client base, namely patent attorneys, as well as access to public transportation. The Dallas office of the USPTO will have a significant local economic impact. The opening of the Detroit office will result in the creation of 125 new jobs in its first year, and it is expected that the Dallas office will create a similar number. Dallas area patent attorneys expect that they will be able to attract new clients, and in particular foreign clients, that might otherwise select a D.C. based firm because of proximity to the USPTO. Roger Burleigh, Director of the U.S. Patent Department for Ericsson, noted that a local USPTO office will provide tremendous value through the ease of faceto-face meetings with Examiners, which has been at best a rare occurrence during his twelve-year tenure as a patent attorney for the company. Moreover, “The Office will provide a fantastic opportunity for new Texas engineering graduates and could serve as a breeding ground for new patent attorneys who could gain the necessary experience to go directly into in-house practice at the completion of law school.” The DBA IP Section will post updates in the future on the USPTO’s progress at HN www.dbaip.com. Vincent J. Allen is co-chair of the Publications Committee and is a partner at Carstens & Cahoon, LLP where he specializes in intellectual property law. He can be reached at allen@cclaw.com.
DBA Wins State Bar Awards
The DBA received numerous awards at the State Bar of Texas Annual Meeting in June, including the Award of Merit for best overall programs, the Star of Achievement for the DVAP Campaign and Headnotes was recognized as best overall newsletter. SBOT President Bob Black (left) presents the association’s awards to DBA President Paul Stafford.
Focus
The SEC’s Whistleblower Program: Its First Birthday Approaches by Steve Korotash
Since the inception of the SEC Whistleblower program in September 2011, the SEC has not revealed a great deal about its operation. Particularly, there has been little light shed upon two areas of corporate concern: whether the SEC’s response to whistleblower allegations will prove unduly burdensome for companies; and whether costly Sarbanes-Oxley mandated compliance programs will be circumvented. This article attempts to illuminate these areas. The agency provided its first insight into the program’s workings in a 2011 endof-year report to Congress, revealing the receipt of 334 Whistleblower tips during the program’s initial 7 weeks of operation. The tips came from 37 states and numerous foreign countries. The most common complaints were market manipulation (16.2 percent), offering fraud (15.6 percent), and corporate disclosures and financial statements (15.3 percent). Significantly, whistleblower activity has not diminished since the report. Sean McKessy, head of the SEC’s Office of the Whistleblower, has advised staff members that the volume of tips being received is
Inside 5
Demolition Cases Require More Stringent Review
9
Toto, We Are Not at a Law Firm Anymore!
11 New Securities Offering Possibilities Under the JOBS Act 13 Ethical Pitfalls for Government Contractors
Corporate Counsel/Government Law
continuing at the level initially reported, and according to officials, the tips are improving. In April, SEC Enforcement Director Rob Khuzami noted that “the quality of tips has increased” over time, citing a greater level of detail and supporting documentation. He attributed the improvement to whistleblowers increasingly retaining counsel. SEC Assistant Director Michael King, a supervisor in the Commission’s Foreign Corrupt Practices Act (FCPA) Specialization Group, recently echoed Khuzami’s point. At a gathering of Houston oil company compliance leaders, King noted that whistleblowers’ attorneys have made detailed presentations to the enforcement staff. These presentations sometimes include PowerPoint materials that outline evidentiary support for the whistleblowers’ claims. He also cited an instance in which attorneys brought their whistleblower client from overseas to participate in the presentation to the SEC. It also appears that the prospect of whistleblowers circumventing internal reporting mechanisms at their companies continued on page 12
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