PIUG 2009 Northeast Conference
| Overview | Program | Presentations (PIUG members only) | Sponsors | Travel | Workshops |
Monday, October 12 to Thursday, October 15, 2009Hyatt Regency New Brunswick
2 Albany Street
New Brunswick, New Jersey, USA 08901
Program – Tuesday, October 13, 2009
Conference presentations are available to PIUG members and conference attendees on the PIUG 2009 Northeast Conference Papers wiki page in the PIUG wiki members-only section. Conference attendees who haven't joined PIUG (see the PIUG membership page) and want access to these conference presentations should contact the PIUG Wikimaster by email.
Conference Abstracts and Biographies
Have we returned to the days when the PTO's mantra was "We are the patent office, not the rejection office"? Perhaps. New leadership is in place at the PTO: David Kappos as Director and 35-year PTO veteran Bob Stoll as Commissioner for Patents. The Federal Circuit has ruled that the PTO rule changes are for the most part within the PTO's authority -- will the PTO proceed or decline to finalize the rule changes? Patent reform is stalled for now. The courts have been active: Bilski, KSR, Ariad v. Eli Lilly, Prometheus v. Mayo. It remains true that there is never a dull moment in patent law!
Rouget (Ric) Henschell
Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and is Vice-Chair of the Chemical & Pharmaceutical Practice Group. Ric's practice focuses on counseling clients in patent matters, representing clients before the U.S. Patent and Trademark Office (USPTO), litigation, and licensing. Specifically, his practice includes validity and freedom-to-operate opinions; due diligence investigations; negotiating and interpreting patent licenses; procuring domestic and foreign patents; post-grant reexamination and reissue proceedings; and interferences. His practice also includes litigation in federal and state trial courts and appeals before the USPTO Board of Patent Appeals and Interferences and the U.S. Court of Appeals for the Federal Circuit. His experience includes technologies such as pharmaceuticals, biotechnology, polymers, nanotechnology, cosmetics, and business methods. Ric served as clerk for Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.
Patent classifications are powerful tools in performing comprehensive and efficient searches. Patent documents are classified by up to four different major classification systems - the international classification, European classification, US classification and Japanese classification systems. This talk will give an overview of each of those four systems; how to find the proper classifications in each system, how they are applied, updated, etc. Also included in the talk will be some examples showing the benefits of the different systems.
Jim Brown joined FIZ Karlsruhe, Inc. in 2008 after working at IFI Patent Intelligence for 23 years. At IFI, Jim started as a chemical patent indexer, and then moved on to chemical patent indexing training and chemical patent searching. He was also a special indexing project manager and technical representative. His current duties at FIZ Karlsruhe Inc. include customer trainings, authoring workshop manuals and presentations, and representing FIZ at conferences and exhibitions. Jim has a Bachelor's degree in Chemistry from the University of Delaware.
This paper will discuss the definition of semantic search, the types of solutions that have been historically labeled semantic, and the modern state of the art today. Emphasis will be on dynamic vs. static, "black box" vs. open and indexed vs. non-indexed systems. This latest version of semantic search will be discussed and contrasted with prior semantic solutions.
Michael Hudelson is a Director of Intellectual Property Solutions with LexisNexis. Michael holds Bachelor & Master's degrees from Indiana University and a J.D. degree from the University of California. He practiced law before joining LexisNexis in 1996, and has spoken at various conferences and authored articles about IP.
Filings for invention patents in China have been growing at an average of over 24% per annum since the turn of the new millennium. Last year, just shy of 290,000 invention patent applications were published by the Chinese Patent Office. However, this is not the complete story.An alternative protection is available to inventors through Chinese Utility Model patents. These lesser known patents provide a more affordable route for protection of inventions and hence are very popular with Chinese domestic innovators. Annual filing growth rates are significant at over 16% per annum since 2000. Last year, just over 225,000 of these patents were published by the Chinese Patent Office. More importantly, very few of these patents are filed outside China and hence are available only in Chinese, yet they constitute publicly published information and therefore form an important part of the prior art.
This presentation will review sources of Chinese Utility Model information and will report original research conducted to highlight where the innovation disclosed in Chinese Utility model patents is originating, who is using this route to protect their innovation and in what technology areas this method of IP protection is most used.
Bob Stembridge acts as the liaison between Thomson Reuters and intellectual property user groups and is a regular speaker at industry meetings. As a member of ACS, CILIP and PIUG, Secretary of CEPIUG, and current Chair of PATMG, and with many years of patent-related experience, Bob is one of the expert faces of the IP Solutions business of Thomson Reuters.
Bob graduated from University of Sussex, UK, with an honors degree in Chemistry. He joined Derwent (one of the founding components of the IP Solutions business of Thomson Reuters) in 1980 and has held various roles in editorial, marketing, sales and product development over the years. He has also held positions as Senior Information Analyst specializing in patent analytics at British Petroleum and European Sales Liaison with Dialog. He is currently Customer Relations Manager for Thomson Reuters with responsibility for interfacing with customer user groups for the organization. He was elected to the CSA Trust Board of Trustees in February 2007.
Managing the patent lifecycle, from idea creation and development through invention submission and prosecution, all the way to portfolio management and litigation support, can be as complicated as it is essential to a healthy enterprise. Further complications or obstacles can arise from the involvement of a wide range of players (including corporate R&D centers, corporate legal departments, and IP researchers) that may be located in different geographic regions and time zones. Successful navigation of the challenges inherent in this lifecycle can increase collaboration and research quality, and significantly strengthen the decision making process, resulting in decreasing the time to market. We will review some recent technologies available to help streamline this process, focusing on collaboration and researcher tools, and advancing a discussion of what these tools can and cannot to do assist in these complex and al processes.
Mr. Dickens has a BSBA from the University of Florida and has published several articles in World Patent Information, Managing Intellectual Property and IEEE Optical Communications.
India and China have emerged as big powerhouses in global economy with rapidly expanding markets and hubs for research and development. Accordingly, the need and importance of IP protection and enforcement in these countries have increased proportionately. The patenting landscapes in these countries are undergoing rapid changes due to surge in patent filing and reforms initiated by the government to improve IP infrastructure. India is specially important for pharma community as it has a strong presence in APIs (it holds the largest number of DMFs outside US) and is gradually moving towards innovative research. Also, it allows for both pre grant and post grant opposition.
Often, lack of thorough IP research has lead multinationals into difficult situations, as witnessed in recent litigation cases involving multinational companies in these emerging markets. Conducting thorough patent research is, hence, becoming an increasing challenge and expensive hurdle for companies across many industries. This situation is aggravated by the difficulties involved in searching and analyzing patent data, for example, the lack of an online patent database in India. As a result, multinational corporations are largely unaware of the ground realities and are unprepared to operate in such a scenario.
This interactive and practical session will provides useful insights to overcome these challenges and limitations. In this we will cover, various databases that can be used for searching patents in India, their strengths and limitations, and the strategies that one should adopt. We will present a case study that showcases all these aspects.
Ashish Nawani is an Engagement Manager with Evalueserve. She is also a registered Indian Patent Agent. She has been responsible for setting up the Pharma/Biotech practice within the IP group of Evalueserve. She now spends her time in managing and developing client relationships, and tailoring Evalueserve's offerings as per their needs. She has been a speaker at many events including those organized WIPO, LES, CII etc.