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Raleigh Ranked No. 2 Place To Start A Business

It should come as no surprise that Raleigh was recognized again as a top city in the entrepreneurial world. The Washington-based National Federation of Independent Business (NFIB) ranked Raleigh as the no. 2 place in the United States to start a business. North Carolina’s capital city follows only California’s Silicon Valley, the no. 1 ranked city to start a business. The NFIB recognizes Raleigh’s increasing population, fast-growing job market, safety and great housing options. The Triangle is an established technology hub, making it a great place to practice IP law with the constant flow of new business and the latest innovations.

Click Here to find out more about National Federation of Independent Business’ ranking.



The Triangle is growing more and more each year and people are taking note. Raleigh is frequently listed as one of the top cities in the country for growing businesses, innovation, technology jobs, and for raising a family. By any measure, the Triangle region of North Carolina competes with other leading hubs of innovation, such as Silicon Valley, Austin, and Boston.  The Triangle region of NC, comprising Raleigh, Durham, Cary, Chapel Hill and the Research Triangle Park, hosts tech powerhouses CISCO, Lenovo, IBM, Redhat, SAS and pharma giant GSK.

Forbes magazine recently ranked Raleigh no. 4 out of 20 of the fastest-growing cities in the United States, following closely behind three Texas cities. With continued growth in STEM employment, Forbes also recognized Raleigh as one of the top “tech hotspots” in the country. listed Raleigh as the tenth best city for IT jobs in 2013. Forbes also ranked Raleigh as the country’s “most wired” city. The Daily Beast ranked Cary, NC as the 5th most innovative city nationwide. These articles indicate that the Triangle region is a leader in technological innovation and is producing jobs in the tech field, which both reinforce the importance of Intellectual Property (IP) law practice, including patents, trademarks and copyrights.  

Being recognized by these publications brings to light a positive perspective on the great strides that both businesses and residents of the Triangle are making towards establishing Raleigh as a thriving and successful city, and an excellent hub for technology/IPR practice. With the Research Triangle Park conveniently located next to Raleigh, top technology businesses and major corporations are furthering their research and creating new jobs focused on today’s latest innovations, making Raleigh an ideal location for IP practice. With almost half of the Triangle’s residents over age 25 holding bachelor’s degrees and a continual stream of world class STEM talent from schools in the Triangle, including Duke, North Carolina State University and the University of North Carolina at Chapel Hill, the area is full of educated people who will continue to make advances in technology and new career opportunities, reinforcing Raleigh as a desirable place to work and live.  

Click here to see a full list of Raleigh’s accolades over the past few years.


Supreme Court to Hear Oral Arguments in Patent Lawyer Malpractice

A client develops software and leases it to third party. The client hires a patent lawyer to file a patent application on the software. After the patent issues, the client directs the patent lawyer to sue the third party for patent infringement. The third party raises the “on-sale bar” rule at trial, which invalidates a patent if its subject matter was on sale more than one year before the patent application filing date. The court dismisses the lawsuit.

The client then fires the patent lawyer, and hires a different lawyer to re-litigate the case, raising the “experimental use” defense, which is an exception to the “on-sale bar” for certain limited sales that constitute on-going experimentation (that is, the software is still under development, with changes being made in response to the purchaser’s feedback). The court denied the re-litigation, stating that the experimental use defense was waived since it was not timely raised during the trial. The client then sues the original patent lawyer for malpractice.

The question before the Supreme Court is, should the malpractice suit heard in state court, which traditionally regulates and disciplines lawyers, or in federal court, which has exclusive jurisdiction for patent cases and would presumably be more familiar with the issues?

Oral argument this Wed.

Cornell’s Legal Information Institute preview of the case at:

David Kappos to Leave PTO Early Next Year

We received the sad news today from the USPTO  that David Kappos will be leaving the agency in January. We have enjoyed working with Mr. Kappos this past year and we will greatly miss his leadership and hard work. Best of luck to Mr. Kappos on his journey from everyone at Coats + Bennett. Find out more here:


The implementation of the America Invents Act last September 2011 provided for a new prioritized examination process for patent applications at the US Patent and Trademark Office. This prioritized examination, also known as Track I, allows for an applicant to obtain a speedy process through prosecution that promises to provide a final disposition of the application within 12 months. After using this option in several applications over the last year, I believe there are many times where this is a valid option. However, it does have limited applicability.


                Prioritized examination requires that the option be filed at the time the original application is filed with the Patent Office, or at the time of filing a Request for Continued Examination (RCE). The application must contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims. The request must include the prioritized examination fee, which is currently $4,800 for large entity ($2,400 for small entity), as well as the various other filing fees (basic filing fee, search fee, and publication fee). Interestingly, the publication fee is required even when a request for non-publication is filed with the application.

                Prioritized examination is only available to the first 10,000 requesters for each PTO fiscal year. However, this has not yet been an issue as the number of requesters thus far using the system is well below this limit. In Fiscal Year 2012, a total of 5,036 requests were filed. Thus far in 2013, a total of 128 requests have been filed. The Patent Office maintains the current statistics on the number of requests filed for each fiscal year.


                The obvious advantage of this option is the speed in which a first examination if received from the Patent Office. The program attempts to provide the first examination within 3-4 months. In the majority of the applications that I have filed under this option, this time window has been met. However, the last few applications have seen the first examination taking longer, more in the 5 month range. I do not have enough data to determine if the delay is dependent upon the Art Unit performing the examination, or if the system is not as speedy as when it initially started.

                Another advantage is this option merely requires the payment of the prioritized examination fee. There are not requirements for a pre-examination search, a support document differentiating the prior art, or a requirement for restrictions to be elected without traverse which are included in the accelerated examination procedure. Further, the option is available to any application and not just those specifically defined for a Petition to Make Special (applicant’s age or health, the invention will materially enhance the environment, conserve energy, or counter terrorism).

                One good context for using this option is when a client is determining whether to file for foreign patent protection. It is very beneficial to have an initial examination in the U.S. upon which to base this determination.


                The biggest disadvantage is that the prioritization of the application only lasts until final disposition. In the event prosecution leads to a final rejection, the applicant does not receive priority for any appeal or continuing examination (unless another fee is paid at the time of filing an RCE). Therefore, it is important for the application to have carefully crafted claims at the time of filing. A minimum amount of prosecution is desired to keep the application on the prioritized track. This option may not be best if one is attempting to obtain broad patent protection relative to the art within the area. Further, this may not be the best option if one has not done any prior art searching prior to filing the application.

                Prosecution of the application requires a response to any rejection to be filed within three months. Extensions are available, however this will result in the application falling out of the prioritization program. Therefore, if there is any foreseeable reason why a response cannot be answered within a three-month window, then this may not be an attractive option.

                Another drawback is the rather large examination fee required for this option. $4,800 for a large entity ($2,400 for small) is a hefty price and may not be affordable for many applicants.

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