IP Fridays – Episode 22: Understanding The USPTO’s SAWS Program With Peter Zura – JP And The US Join The Hague-System – Validating European Patents In Morocco

Author:Dr. Rolf Claessen, Kenneth Suzan and Peter Zura
Profession:Barnes & Thornburg
 
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This time Peter Zura gives us the inside scoop of the SAWS program at the USPTO. Also, you will find out how to validate European Patents in Morocco. And finally, Japan and the US joined the Hague-System for design protection. Have fun!

Episode 22 – February 20, 2015

RC = Rolf Claessen

KS = Kenneth Suzan

Hi.  This is Gene Quinn.  I am a patent attorney and the founder of ipwatchdog.com and you are listening to IP Fridays.

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC:      Welcome to the 22nd episode of IP Fridays.  Today we have a special guest, Peter Zura, who is a fellow patent attorney and he is also a fellow blogger.  He is the author of the blog "The 271 Patent Blog" which has been a little bit quiet in recent times but I really enjoyed listening to that blog, or actually reading that blog.  Peter, if you listen to this, I really want to encourage you to start blogging again and I promise if you start blogging again, I will repost everything you do on IP news.com and maybe we can also include one of the stories in IP Fridays.  Peter will tell us more about the SAWS Program within the USPTO.  It is a program to deal with let's say difficult patent applications and you will learn more about that in this episode.  Then I will tell you about the U.S. and Japan joining the Hauge system.  Basically an international design protection system administered by WIPO and I will also tell you more about Morocco which is now accepting granted European patents as their own patents so you can basically validate European patents in Morocco which is not in Europe but in Africa.  For now, let's turn over the microphone to Ken who had the chance to interview Peter Zura.

KEN SUZAN'S INTERVIEW WITH PETER ZURA:

KS:      Rolf, I am speaking now to Peter Zura, a partner in the Chicago office of Barnes & Thornburg and a member of the firm's Intellectual Property Law Department.  Mr. Zura's practice includes preparing, prosecuting and securing patent portfolio development and enforcement, preparing, prosecuting and securing patent protection for his clients' innovations, and providing intellectual property counseling including advice on patent infringement, validity and large portfolio due diligence studies for acquisitions, licensing and pre-suit purposes.  Peter spent time as a patent examiner in the United States Patent and Trademark Office and as an electrical engineer at General Dynamics Land Systems Division.  Mr. Zura earned his B.S. in electrical engineering from Oakland University in 1990 and his J.D. from Michigan State University College of Law in 1997.  He also received his LLM from the George Washington University School of Law in 2002.  Welcome, Peter, to IP Fridays.

PZ:      Thanks Ken.  Thanks for having me on.

KS:      Peter, we are going to talk today about the SAWS Program at the USPTO.  What exactly is the SAWS Program?

PZ:      Well it's one of these things that everybody kind of has known about but it's never really been in any public consciousness so to speak.  I was an examiner in the late 90's and I was aware of the program.  However, I had not ever used it.  It was brought up as an option once in a case that I had but essentially at the time there were other tools available for us to be able to deal with the application.  From what I have seen from internal PTO memos, the earliest one I have seen dates back to 1989 and what that was was essentially kind of the stop gap and it became a little more prevalent during the last 90's, particularly after the State Street Bank decision and what had happened was there would be instances where you receive a patent application and reading through the specification there is enough technical information in there however something doesn't quite smell right, as it were.  You would have inventions that essentially worked on things that you could borderline describe as a perpetual motion machine, cold fusion, things of that nature where there were these fantastic inventions and quite often, at least in my experience and from the circumstantial evidence I have seen from speaking with others, that quite often they would be involved in typically individual inventors that believe that they have found this great breakthrough technology but going through it you are left with a sense that this can't possibly work.  The SAWS Program was a way for examiners to kind of flag it to bring in more senior patent office personnel to have a look at the...

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