Abstracts – Fall ‘08
Abstracts & Speaker Information-Sunday, August 17, 2008
Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions
9:30 Strengthening Your Future Patent Rights in Light of Recent Federal Circuit Court Decisions
Xavier Pillai, xpillai@leydig.com, Leydig, Voit & Mayer, Ltd, Two Prudential Plaza, Suite 4900, Chicago, IL 60601, Fax: 312-616-5700, Phone: 312-616-5600, and Jay M. Brown, jmb@eclipsegrp.com, THE ECLIPSE GROUP LLP, Durham, NC 27713.
Chemical and pharmaceutical companies invest enormous amounts of money and inventor hours to discover and develop new materials such as drugs and processes for making them, as well as other inventions. Such companies also attempt to protect their inventions by securing patents. The success of these inventions in the marketplace depends on a number of factors, the foremost of which being the strength of the patents obtained to protect them. These patents are expected to protect the vast investment of money and time in creating these inventions, and the product market share, for the next nearly twenty years. However, competitors will try to undermine the value of the inventions by challenging the strength of the patents, including their validity and coverage by the patent claims of their own products, in a court of law. Recently, many seemingly strong and valuable patents have been invalidated or narrowly viewed and found not infringed. Recent court decisions reinforce the axiom that every word that goes into describing the invention in a patent application must be chosen with extreme care. This session will provide insights into how to reduce the chances of losing in a patent battle against an infringer, including practical pointers on how to write winning patent applications. This session will also analyze recent Federal Circuit court decisions that have invalidated such patents or found them not infringed, as real world examples of what can go right or wrong years after a patent is granted.
11:30 Question & Answer
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Think You May Be an Inventor for a Patent Application?
1:30 Whose Invention is it Anyway?
Joshua B. Ryan and William P. Long , DLA Piper USA LLP, One Liberty Place, 1650 Market Street-Suite 4900, Philadelphia, PA 19103, Phone: 215-656-2448.
If you are employed by someone else and have invented something, even on your “own time,” that invention may not belong to you. It may belong to your employer. This presentation discusses when an employer may own its employee’s inventions or has rights to use these inventions.
Jay M. Brown, THE ECLIPSE GROUP LLP, 5003 Southpark Drive, Suite 260, Durham, NC 27713, jmb@eclipsegrp.com, Phone: (919) 313-6161, and Xavier Pillai, Leydig, Voit & Mayer, Ltd, Chicago, IL 60601.
Among the topics covered will be “shop rights,” which are common law rights of an employer to use an invention patented by one or more of its employees without liability for infringement. Employment contracts with assignment clauses will also be discussed, in light of the United States Court of Appeals for the Federal Circuit’s recent decision in DDB Technologies, L.L.C. v. MLB Advanced Media LP, 2008 U.S. App. LEXIS 2086 (Fed.Cir. Feb. 13, 2008). In DDB Technologies, DDB’s patent infringement suit against Major League Baseball was dismissed after the court found that the inventor’s former employer owned the patented invention under a prior employment agreement. A brief question and answer session will follow the presentation.
2:00 Navigating Inventorship in the Chemical Industry
Bradley W. Crawford, McDonnell Boehnen Hulbert & Berghoff LLP, 300 South Wacker Drive, Chicago, IL 60606, Fax: 312-913-0002, Phone: 312-913-0001.
When filing a patent application, the inventor(s) must be identified. However, determining inventorship is often fraught with peril because everyone that works on the project wants to be recognized as an inventor. Failure to recognize a purported inventor (or giving inventorship credit where it doesn’t belong) can lead to acrimony, hostility, loss of financial rewards, patent invalidity or a lawsuit. Consequently, it is useful to understand the rules governing inventorship. This talk will focus on the mechanics of determining inventorship, including focusing on the following questions: I am the group leader, so I am always an inventor, right? Can anyone be an inventor? I did X, Y, and Z, am I an inventor? I was listed on the journal article, so why am I not an inventor?
2:30 Inventorship Disputes with Academic Research Groups
Sean Seymore, Washington & Lee Univ. School of Law, Sydney Lewis Hall, Lexington, VA 24450, Phone: 617.894.5079.
The statutory requirement of identifying the first and true inventor is often muddled by the mores and practices of academic science. Unfortunately, and despite claims of scientists and attorneys to the contrary, I contend that the inventive entity is not discovered but rather determined in and through social relationships. Although universities should always strive to promulgate policies which fully comport with the law, the biggest incentive for universities to insist on correct inventorship is financial. I argue that the rise in mentee claims for sole or joint inventorship, as well as the ever-present threat of an inequitable conduct defense in a patent infringement suit, jeopardizes the ability of the university to generate royalties from licensing agreements. To protect this revenue stream, I contend that universities must revisit their hands off approach to the inner workings of the academic research group, at least with respect to determining the correct inventorship for a patent application.
3:00 Question & Answer
Monday, August 18, 2008
Non-Traditional Careers in Chemistry: CHAL’s 25th Anniversary Series
9:00 Lead Scientist of Nanosystems Group
Carl Picconatto, The Mitre Corporation, N2-30, 7515 Colshire Drive, McLean, VA 22102, Phone: 703-883-7465.
Dr. Picconatto is presently the lead scientist of the Nanosystems Group of The MITRE Corporation in McLean, VA. His work involves both technical and programmatic support to various government nanotechnology programs as well as fundamental R&D in the area of nanotechnology and molecular electronics. Dr. Picconatto served in the United States Congress as the chief science advisor to Congresswoman Constance A. Morella, a senior member of the House Committee on Science. Dr. Picconatto was National Academy of Sciences Christine Mirzayan Winter 2001 Fellow and worked for the Committee on Science, Engineering, and Public Policy at the National Academy of Sciences. He holds a PhD in Chemistry from Columbia University and a BS from the University of Notre Dame.
9:30 Equity Research
Michael Tong, Wachovia Capital Markets, LLC, Equity Research, New York, NY 10001, Phone: 212-214-8020.
Dr. Tong is part of Wachovia Capital Markets, LLC. Michael has a PhD in organic chemistry from Cornell University.
10:00 Independent Consulting
Lisa M Balbes, Balbes Consultants, 648 Simmons Ave., Kirkwood, MO 63122, Phone: 314-966-5298.
Dr. Balbes has been an independent consultant for almost 15 years, and part of Balbes Consultants, which provides technical writing, editing, and information architecture services for technical companies. She has experience in producing documentation, peer-reviewed and trade journal articles, and workshops on technical writing topics. Additional expertise includes career development for scientists, and especially the use of new technologies (blogs, wikis, social networking, etc.) to increase efficiency and enhance professional development. She also has a PhD in chemistry from the University of North Carolina, Chapel Hill and a BA in Chemistry and Psychology, from Washington University.
10:30 Patent Law
Monique Cole, Birch, Stewart, Kolasch & Birch, LLP, Suite 100 East, 8110 Gatehouse Road, Falls Church, VA 22042, Phone: 703-205-8000.
Ms.Cole worked as an Examiner in chemical art units for nearly 9 years. She has worked as an associate in a law firm for about two years. Monique has a BS in chemistry from Norfolk State University, an MS in biotechnology from Johns Hopkins University and her JD from American University Washington College of Law.
11:00 Art Conservation
Jennifer Mass, The Department of Art Conservation, University of Delaware, 303 Old College, Newark, DE 19716-2515, Fax: 302-831-4330, Phone: 302-831-3489.
Jennifer Mass received her B.A. in chemistry from Franklin and Marshall College and her MS PhD in inorganic chemistry from Cornell University with a concentration in Materials Engineering. After graduating from Cornell she received a fellowship from the Andrew W. Mellon Foundation to conduct research at the Sherman Fairchild Center for Objects Conservation at the Metropolitan Museum of Art. Dr. Mass spent 1998-2001 as an assistant professor in the Art Conservation Department at The State University of New York College at Buffalo. During this time she continued her research on ancient Roman and Egyptian glassmaking practices, and began her studies in glassmaking in late antiquity Venice. In the fall of 2001 she joined Winterthur’s Conservation Department and became an adjunct faculty member for WUDPAC. Dr. Mass is currently a Senior Scientist and Adjunct Assistant Professor in the department of Art Conservation at the University of Delaware.
11:30 Question & Answer
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The Many Facets of Intellectual Property-From Procurement to Enforcement and Multimillion Dollar Damage Awards: CHAL’s 25th Anniversary Series
1:30 Strengthening Patent Enforcement by Smart Patent Procurement
Louis Troilo, Finnegan Henderson Farabow Garrett and Dunner LLP, 901 New York Avenue, NW, Washington, DC 20001, Phone: 202-408-4000.
Prudent patent strategies which are employed during early stages of product development may save a company millions of dollars. Effective claim drafting, international patent prosecution strategies, proper inventorship, proper invention disclosure reports, and advising companies how to ensure proper records are a few significant considerations when filing a patent application. Discussing these considerations with scientists and corporate managers can make a vast difference in the strength of a patent portfolio.
2:00 Recent Developments in US Patent and Trademark Office Patent Practice
Charles E. Van Horn, Finnegan Henderson Farabow Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413, Phone: 202.408.4000.
This presentation will examine recent developments in United States Patent Office practice and procedure particularly of interest to those involved in the chemical and pharmaceutical arts.
2:30 Pharmaceutical Patent Litigation
Allen Sokal, Finnegan, Henderson, Farabow, Garrett and Dunner LLP, 901 New York Avenue NW, Washington, DC 20001, Phone: 202-408-4000.
The statutory scheme provides a great incentive for generic pharmaceutical manufacturers to challenge patents on blockbuster drugs. Mr. Sokal will discuss that incentive and what happens in those patent infringement suits.
3:00 Playing High Stakes in Intellectual Property Cases: Proving Your Damages
Griffith B. Price Jr., Finnegan Henderson Farabow Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413, Phone: 202.408.4000.
Damage awards in intellectual property cases have increased sharply within the last decade, creating an exciting new set of legal challenges. What are the most effective methods for claiming lost profits, and how can a reasonable royalty be best determined? What are the best strategies for handling intellectual property issues in antitrust cases? Recovering damages — either lost profits, or a reasonable royalty — resulting from infringement of your company’s patents depends on competent, admissible proof of causation and amount.
3:30 IP Counseling and Due Diligence in the Pharmaceutical and Chemical Industries.
David Frazier, Finnegan, Henderson, Farabow, Garrett and Dunner LLP, 901 New York Avenue NW, Washington, DC 20001, Phone: 202-408-4000.
Of the various types of intellectual property, patents provide the engine that most often drives mergers, acquisitions, and initial public offerings. Copyrights, trademarks and trade secrets are certainly important intellectual property assets, but it is the patent’s power to exclude competitors from selling products or providing services that elevates the value of a patent. When properly executed, IP due diligence can simultaneously accomplish several objectives. It can provide information sufficient to assure the company that it is receiving value for its investment. It can identify impediments to developing the intended business. It can equip the acquiring company with the means to renegotiate terms of the transaction if there exists less value than was initially perceived. And it can familiarize the acquiring company with the assets it is acquiring so that the acquiring company can manage them appropriately once the transaction is complete.
4:00 Question & Answer
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Sci-Mix
8:00 PM-10:00 PM
Chocolate is the Food of the Gods-Especially on the Queen Mary 2
Howard Peters, peters4pa@sbcglobal.net, 228 Sand Hill Circle, Menlo Park, CA 94025, Phone: 650-854-4614, and Sally Peters, speters@parc.xerox.com, Xerox-Parc, Palo Alto, CA 94304.
Chocolate (theobroma cocoa) as a processed food has been consumed for centuries. This poster will explore a brief history, processing, food values, structures of components, and some surprising trivia about chocolate – the food of the gods.
National Inventors Hall of Fame Inductees 2008
Howard Peters, peters4pa@sbcglobal.net, 228 Sand Hill Circle, Menlo Park, CA 94025, Phone: 650-854-4614, and Sally Peters, speters@parc.xerox.com, Xerox-Parc, Palo Alto, CA 94304.
The National Inventors Hall of Fame in Akron, Ohio (www.invent.org) selects about 10 new inventors each year for induction into the Hall. This poster will provide a photograph, biography and some patent information for each 2008 inductee. The Induction ceremony occurred in mid-May 2008 in Akron.
Double Patenting: What Constitutes a Patentably Distinct Invention?
Christopher T. Jagoe and Graham M. Pechenik, Kaye Scholer LLP, 425 Park Avenue, New York, NY 10022, Fax: 212-836-8689, Phone: 212-836-7800.
The chemical synthesis of a novel compound can lead to a number of different patentable inventions. For example, if the compound has some practicable utility, the compound itself may be the subject of a patent claim. The method of synthesizing the compound and the method of using the compound also may be patentable. However, the doctrine of obviousness-type double patenting precludes a patentee from obtaining a second patent with claims that are not patentably distinct from claims in an earlier patent unless the two patents expire on the same date. Recently courts have applied the doctrine to invalidate a number of U.S. patents. This presentation will discuss the doctrine of obviousness-type double patenting and what constitutes a patentably distinct invention in the chemical arts.
Experimental Use Exception to Patent Infringement
Christopher T. Jagoe and Peter Fratangelo, Kaye Scholer LLP, 425 Park Avenue, New York, NY 10022, Fax: 212-836-8689, Phone: 212-836-7800.
U.S. patent law continues to recognize a judicially created experimental use defense to patent infringement. The defense currently exists in a form limited to actions performed “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.” Activity does not qualify under the defense when it is undertaken in the “guise of scientific inquiry” but has “definite, cognizable, and not insubstantial commercial purposes.” However, there has never been a line, precisely defined, between permitted experimental uses and prohibited infringement. This presentation will examine recent case law regarding the experimental use exception to patent infringement as well as activities protected by the statutory safe harbor for obtaining data for submission to the FDA.
Patent Law 101
Jared Bunker, Knobbe Martens, 2040 Main Street, 14th Floor, Irvine, CA 92614, Phone: 949-760-0404.
This poster will provide an overview of patent law in the United States, with an emphasis on the chemical arts.
Tuesday, August 19, 2008
At What Point in Drug Development do you File A Patent
Application?
Cosponsored by HEALTH
9:30 How to Ensure Pharmaceutical Patents and Drug Development Go Hand in Hand
Zareefa Flener, John Richards, and Janet Cord, Ladas & Parry, LLP, 224 S. Michigan Ave., Suite 1600, Chicago, IL 60604, Phone: (312)427-1300.
The patent system is based on a social contract between the inventor and the state. In return for a disclosure of the invention by the inventor, the state grants to the owner of the patent a period in which the owner or an entity designated by the owner can exclude others from using the invention. This is reflected by the two principle parts of a patent: 1) the description of the invention and how to put it into practice and 2) the claims or definition of the invention which determine who can be sued for using the invention. In recent years the courts have placed increased emphasis on trying to establish a proper balance between what is set out in the description and the permissible breadth of the definition set out in the claims. Different countries sometimes take different views as to where the balance point should lie and in today’s global marketplace, such differences can be very important. In this session we will look at how pharmaceutical inventions may be defined, the requirements of the disclosure in order to support such definitions and the ways in which the intended use of the patent can affect the way in which one defines the invention. In addition, we will discuss challenges that may arise in obtaining and enforcing the patent, and what information such as experimental data may be needed to combat such challenges.
11:00 Question & Answer
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Patent Law and Protecting Chemical, Pharmaceutical, and Biotechnological Inventions
Cosponsored by MEDI
1:30 Generics: Global and Legal Developments Affecting Pharmaceutical Companies’ Patenting and Marketing Strategies
Teresa Lavoie, Fish & Richardson PC, 3300 RBC Plaza, 60 S. Sixth St., Minneapolis, MN 55402, Phone: 612-335-5070.
With average R&D costs for bringing a drug to market topping $1B, and with numerous blockbuster drugs coming off patent in the next decade, the pharmaceutical industry is facing enormous pressures. China and India are emerging as significant players in the pharmaceutical outsourcing and generic fields. The health care industry is becoming global and fluid, with a reduced importance placed on the United States market. Proposed legislation for biosimilars or follow-on biologics in the United States is gaining traction. The impact of these developments on big pharma’s ability to maintain relevance in a world of change will be addressed, with a focus on legal strategies.
2:05 How Obvious is Obvious? Recent Developments in The Law of Obviousness of Chemical, Pharmaceutical, and Biotechnological Inventions
Susanne H. Goodson, Fish & Richardson PC, 919 N. Market Street, Suite 1100, P.O. Box 1114, Wilmington, DE 19899, Phone: 302 652-5070.
U.S. and international law denies patentability to subject matter which is “obvious” or which lacks an “inventive step”. This presentation will discuss recent developments in the law of what counts as “obvious” in the context of chemical, pharmaceutical, and biotechnological inventions.
2:40 Inequitable Conduct and What Chemists Need to Know About It
Eifion Phillips, Fish and Richardson PC, 919 N. Market Street, Suite 1100, P.O. Box 1114, Wilmington, DE 19899, Phone: 302-652-5070.
Misrepresentation or withholding material information from the U.S. Patent Office may be found to be “inequitable conduct” and lead to an otherwise valid patent being held unenforceable. While this is intended to deter deceptive conduct, innocent conduct could be accused of being “inequitable” during litigation of a patent. It is therefore important for inventors and others involved in obtaining patents to be aware of the law about what should be disclosed to the Patent Office during patent prosecution. This presentation will address some of these issues.
3:15 Keeping Up With The Federal Circuit
Stamatios Stamoulis, Fish & Richardson PC, 919 N. Market Street, Suite 1100, P.O. Box 1114, Wilmington, DE 19899, Phone: 302 778-8431.
The Federal Circuit has recently issued numerous rulings that will have a significant impact on patent litigation. Even the drafters of the pending patent reform bill are struggling to keep up. This presentation will discuss some recent noteworthy decisions and how they are impacting the litigation-related provisions of the pending patent reform legislation.
3:50 Licensing Strategies for Monetizing Chemical and Pharmaceutical Knowledge Assets
Edna Vassilovski, Fish & Richardson PC, 60 South Sixth Street, 3300 RBC Plaza, Minneapolis, MN 55402, Phone: 612-766-2073.
This past year has brought sweeping changes to the patent system. The courts, including the Supreme Court, has issued opinions on cases impacting how patents can be licensed. This talk will discuss those cases, their ramifications to traditional licensing tactics, and strategies for licensing and monetizing patents in view of the legal changes.
4:25 Question & Answer
Wednesday, August 20, 2008
The Business End of Patent Law Developments: Is There Good News for Drug Discovery
Cosponsored by MEDI and HEALTH
9:00 Recent Court Decisions in Pharmaceutical and Chemical Patent Cases
George F. Wheeler, McAndrews, Held & Malloy, Ltd, 500 W Madison Street, Suite 3400, Chicago, IL 60661, Fax: 312-775-8100, Phone: 312-775-8000.
The United States Court of Appeals for the Federal Circuit, which hears appeals of patent cases, now has a heavy docket of pharmaceutical and other chemical patent cases. This Court regularly decides Hatch-Waxman litigation, determining whether new generic drugs can go on the market before the patent(s) on the pioneer drugs expire. The Court also has a large docket of chemical patent infringement appeals. This presentation will address recent decisions of the Court and how they are affecting many of the most valuable patents in the United States.
9:30 Intellectual Property Strategies for Bioproducts
Gregory A. Cox, Patent Counsel, Eli Lilly and Company, Lilly Corporate Center, Indianapolis, IN 46285, Phone: 123-456-7890.
Biotechnology inventions are unique due to redundancy of the genetic code, the ability to easily manipulate DNA and protein sequences, the ability to easily make large populations of antibodies which can be studied for subsequent therapeutic development, as well as the rapid advancement of technology to allow the creation of diverse populations of peptides and proteins that bind the same target. While the number of bioproducts will continue to grow over the next several years, the public may or may not receive the benefit of any particular product, depending on the balance the patent law strikes between rewarding the initial discovery and promoting subsequent innovation. Both the courts and the United States Patent & Trademark Office have struggled with applying traditional legal principles related to obviousness, enablement, and written description to biotechnology inventions. We will explore the relationship between the new standard for obviousness of the KSR decision and the written description requirement in the context of biotechnology inventions, discuss whether recent decisions of the courts and the USPTO are striking the right balance between rewarding the initial discovery without discouraging competition and subsequent innovation.
10:00 Patent Reform Legislation: Headed in the Right Direction?
Herbert D. Hart III, McAndrews, Held & Malloy, Ltd, 500 W Madison Street, Suite 3400, Chicago, IL 60661, Fax: 312-775-8100, Phone: 312-775-8000.
The proposed patent law reform bill is an amalgam of provisions intended to improve various aspects of the patent system. For example, one provision would create of a proceeding in the Patent and Trademark Office for challenging a patent after it’s issued, while another would shift to patent applicants the burden of creating a prior art record upon which examination would be based. But there’s been great debate about the wisdom of various provisions of the bill, and we’ll explore how some of these may burden or benefit the pharmaceutical sector.
10:30 Strategic Patent Searching: Now a Viable Tool for Guiding Your Life Sciences Product to a Successful Commercial Launch
Jonathan Sick, McAndrews. Held & Malloy LTD, 500 West Madison Street, 34th Floor, Chicago, IL 60661, Phone: 312-775-8000.
Comprehensive patent searching programs have long been eyed with distrust because of the threat of willful infringement – the more patents uncovered, the greater the chance of a willfulness finding in subsequent litigation. Last year’s decision in In re Seagate and possible upcoming patent reforms will significantly lessen this threat. This presentation will explore the impact of Seagate and proposed legislation on the practice of patent searching, and will discuss the benefits of strategic patent searching in the regulatory and resource intensive life sciences industry. The presentation will also explore practical tips for setting up patent searching programs.
11:00 Question & Answer
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International Patent Protection: How to Go Global
1:30 Patent Protection in Canada: What’s New?
Beatrice T. Ngatcha, Ridout & Maybee LLP, 150 Metcalfe St., 19th. Floor, Ottawa, ON K2P 1P1, Canada, Phone: 613.236.1995.
An update on recent legislation changes as well as recent court decisions that have an impact on the patent prosecution practice at the Canadian Intellectual Property Office will be presented.
2:00 Patent Infringement Warnings in a Common Law vs. Civil Law Jurisdiction
Hans-Peter Brack, Lexan® Technology, SABIC Innovative Plastics, Plasticslaan 1, P.O. Box 117, Bergen op Zoom, Netherlands, Fax: 0031-164-29-1686, Phone: 0031-164-29-2539.
There are several aspects to consider when sending warning letters to potential infringers. These include the strength of validity of the patent and of the infringement claim, the nature and position of the party to whom one wishes to send the warning, the benefits and risks of sending a warning, and whether it might be preferable to take an alternative approach. An important underlying issue is that under certain conditions a patent warning might be considered actionable as a threat, especially if there is not a strong justification and/or if it is sent to customers of a competitor. The patent holder is then exposed to the risks and expenses of unwanted litigation and may even have to pay damages. When a patent warning is an actionable threat and the divergences in the approaches of common and civil law jurisdictions will be discussed, using the U.K. and Germany as examples.
2:30 A Second Patent on My Patented Compounds: The Law of Selection Patents in Canada
Beatrice T. Ngatcha, Ridout & Maybee LLP, 150 Metcalfe St., 19th. Floor, Ottawa, ON K2P 1P1, Canada, Phone: 613.236.1995.
A first patent application on a newly discovered group of compounds is generally filed with claims having a broad scope. As further work is performed, the invention presents better defined or new “shapes”, which are generally associated with a reduced group of compounds within the original group. These shapes are certainly seen from an inventor perspective, as new inventions that deserve proper patent protection. However, they are seen by many as an unlawful attempt to extend patent rights beyond the normal time frame. Patents relating to these shapes have been termed “Selection Patents”. The law governing them has evolved over the years. We will present the current status of the law on selection patents in Canada.
3:00 Patenting Strategies in BRIC Countries for Pharmaceutical Companies
Peter D. Mlynek, Synnestvedt & Lechner LLP, 1101 Market Street, Ste. 2600, Philadelphia, PA 19107, Fax: 215-923-2189, Phone: 215-923-4466.
Brazil, Russia, India and China (“BRIC”) are posed to be the four dominant economies of the mid-21st century world. Because economic, social and legal realities facing each BRIC country are drastically different from those of traditionally technologically driven countries, the thrust behind patent protection reforms in BRIC countries is different than in Europe, USA or Japan. The political clout and economic resources of BRIC countries assures that the needs of BRIC countries will not be easily subjugated to global harmonization of patent protection. It is thus appropriate for pharmaceutical companies which wish to take advantage of the BRIC market to consider the unique aspects when formulating global patenting strategies. Such aspects include different standards for novelty and inventiveness, relationship of invention and utility models, requirement of first local filing, compulsory licensing, genetic resource identification, pipeline provisions, limitations on treatment claims, governmental stakes in patent rights, pricing structures limitations, and others.
3:30 Question & Answer
Thursday, August 21, 2008
The Many Faces of CHAL: Where Chemistry Meets the Law
10:00 Practical Tips on Patent Prosecution from the
Perspective of a Former Examiner
Kevin Capps, University of San Diego School of Law, 5998 Alcala Park, San Diego, CA 92110, Phone: 703-801-4084.
Corresponding with the United States Patent and Trademark Office can be a mysterious process for some patent applicants, particularly new inventors or patent attorneys that do not have experience working there. This talk will provide practical tips from the perspective of a former patent examiner focused on facilitating better communication during the application process, expeditious examination of the applications, and arrival at high quality patent claims.
10:30 GSK v. Dudas: The US Patent and Trademark Office’s Rulemaking Authority
Sarah E. Perlinger, Franklin Pierce Law Center, Two White Street, Concord, NH 03301, Phone: 731-225-5315.
This presentation will examine the recent decision of the U.S. District Court for the Eastern District of Virginia in GSK v. Dudas. In this case, the Court limited the authority of the U.S. Patent and Trademark Office to make procedural rules that impact substantive patent law.
11:00 High Stakes ANDA Litigation
Justin J Hasford, Finnegan Henderson Farabow Garrett & Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001, Phone: 202-408-4000.
An Abbreviated New Drug Application (ANDA) is an application for a US generic drug approval for an existing licensed medication or approved drug. The Hatch-Waxman Act expedites the availability of less costly generic drugs by permitting FDA to approve applications to market generic versions of brand-name drugs without conducting costly and duplicative clinical trials. At the same time, the brand-name companies can apply for up to five additional years longer patent protection for the new medicines they developed to make up for time lost while their products were going through FDA’s approval process. Brand-name drugs are subject to the same bioequivalence tests as generics upon reformulation. Hatch-Waxman gives generics considerable leverage in patent litigation: the exposure to liability amounts to litigation costs, but pales in comparison to the immense volume of generic sales and profits.
11:30 The Future of Business Method Patents
William C. Youngblood, Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd, 11th Floor, Seven Penn Center, 1635 Market Street, Philadelphia, PA 19103-2212, Phone: 215.567.2010.
In 1998, the Court of Appeals for the Federal Circuit decided that there was nothing in patent laws that prevent “business methods” from being patented assuming the methods meet all of the patentability requirements. As a result, the United States Patent and Trademark Office (USPTO) began to receive thousands of patent applications directed to all types of “business methods.” In 2006, for example, the USPTO issued more than 1,000 business method patents. However, the Federal Circuit recently decided to revisit the issue of whether “business methods” should be patentable when it agreed to rehear a case involving a method for managing the risk of bad weather through commodities trading (In re Bilski). The outcome of this case will be very important to all types of businesses, including businesses focused on providing chemical products and services.
1:30 Intellectual Property Rights in the Regulatory Stage: Generation and Possible Infringement of Rights in Patents, Trademarks and Copyrights
Joel G. Ackerman, Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111, Fax: 415-576-0300, Phone: 415-576-0200.
Often overlooked in the search for IP are events, discoveries and opportunities for generation, as well as potential for infringement, from activities that occur in the regulatory stages of both health-related products and pesticides. This presentation will discuss some of these.
2:00 Are Attorneys Viable Chemists?
Carl Meyer, 1416 E. Alder, Walla Walla, WA 99362, Phone: 123-456-7899.
The respect due to a person depends on the activities of that person. While having a degree in chemistry qualifies one to become an ACS member, chemistry is a practical field, and in order to be a viable chemist, one needs to have a lot more than a chemistry degree. However, many members of CHAL, including patent attorneys know more than a BS holder in chemistry and practice more chemistry than many of the formally listed patent authors on the end of their work. Likewise, many other members of CHAL are highly viable practicing chemists independent of the degree they earned and the job title they currently have. Thus, the answer to the original question depends on an analysis of individual activities, more than on a job title or a license in some other field.
2:30 Public Outreach: Chocolate is the Food of the Gods Especially on Cunard’s Queen Mary 2
Howard M. Peters, peters4pa@sbcglobal.net, Peters, Verny, Jones & Schmitt, LLP, 425 Sherman Avenue, Suite 230, Palo Alto, CA 94306, Fax: 650-324-1678, Phone: 650-324-1677 X-103, and Sally Peters, PETERS4PA@aol.com, PARC Inc, Palo Alto, CA 94304.
This talk discusses the surprise first-time experience of the husband-and wife ACS Councilor/authors as invited science-author lecturers on Cunard’s Queen Mary 2 (QM2). It all started with a telephone call on Feb. 27, 2008. A speaker had cancelled and would we be invited lecturers on a 10-day cruise on the QM2 to the Caribbean embarking from New York City in 55 hours? Having just finished a 12-days as an ACS Tour Speaker in NC, SC & GA, the talks were ready for “Chocolate-Food of the Gods,” “Patriots, Immigrants & Patentees – (the US’s debt to its immigrant inventors)” and “Joseph Priestley – Minister, Inventor & Radical (& the British Father of American Chemistry).” (For some slides see www.howard-peters.com , p. 2 under PRESENTATIONS). Is this a new venue for public outreach to put a human face on chemistry and chemists for ACS and its Tour speakers?
3:00 The Inadvertent Lexicographer: Lessons from the Sinorgchem Case
Gino Catena, Fulbright & Jaworski LLP, 1301 McKinney Suite 5100, Houston, TX 77010, Phone: 713.651.5144.
The long-held rule that a patentee may act as his own lexicographer provides well-known advantages to the patent draftsman. However, a recent Federal Circuit case in the chemical arts shows that this rule can cut both ways when a patentee inadvertently defines a claim term narrowly. The Sinorgchem case dealt with chemical process claims for the production of intermediates for rubber antidegradation compounds. It is reviewed with a discussion on how one might avoid a similar fate.
3:30 Comprehensive, Systematic Intellectual Property Capture and Management
Craig H. Miller, Intellectual Property, Targacept, Inc, 200 East First Street, Suite 300, Winston-Salem, NC 27101, Phone: 336-480-2147.
The efficiency and comprehensiveness of intellectual property capture and management relate directly to the integration of intellectual property functions into a company’s organization. Careful and thorough integration of IP functions provides a variety of advantages in this regard (e.g., good alignment of the patent estate with corporate goals; efficient use of patent counsel resources; appropriate levels of attention given to good and bad ideas; robust patent applications; appropriately timed filings; employee enthusiasm for IP capture), and the associated benefits to the company are substantial. A systematic approach to integrating IP functions with corporate structure will be presented. Structural, procedural, educational, communication and relational aspects will be discussed.
End of Program: Thank you to everyone who attended these fine sessions, and please feel free to contact the speakers in order to obtain additional information or to answer questions.