PIUG 2013 Northeast Conference

Program – Tuesday, October 1, 2013

Conference Abstracts and Biographies

Crossing the Line: Is It a Drug or a Device?
Kristine H. Atkinson, A/A Patent Investigations

Abstract

Pharmaceutical patents usually claim chemical structure for a certain effect with great specificity, and are less concerned with the means of delivery. Medical devices claim function and mechanical structure in painstaking detail, but claims for drugs may be general, vague, or include hundreds of alternatives. What do chemical searchers need to know when studying applications of their drug in medical devices? We will look at the categories where combination devices are classified, and compare examples of search results when different synonyms for a compound are used, or restricted to certain fields.

Biography

Kristine Atkinson’s doctoral treatise delved into genetic speciation driven by continental drift and host/parasite coevolution; it led to her first job in industry as the inventor of a vaccine using mammalian cell biotechnology.  She also holds an M.S. in cell biology, a bachelor’s in foreign languages, and has enjoyed postings as a protein chemistry laboratory director, electron microscopist, biomanufacturing trainer, business analyst, medical editor, and patent litigation discovery contractor. She is a registered U.S. patent agent specializing in patentability, freedom-to-operate and medical device technology landscapes; her new venture A/A Patent Investigations is designed to provide advanced patent search services on a contract basis.

Implications of the Myriad Supreme Court Decision -- Human Genes Are Not Patentable, But What About Everything Else?
Paul Golian, Bristol-Myers Squibb

Abstract

On June 13, 2013, the U.S. Supreme Court in Association for Molecular Pathology v. Myriad Genetics, Inc. answered the question, “are human genes patentable?”  The court unanimously held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.”  This decision not only overturned 30 years of U.S. Patent Office practice, but also raises questions as to its ultimate impact -- including whether other isolated from nature molecules are patent ineligible under the law of nature exception.

Biography

Paul Golian is Assistant General Counsel at Bristol-Myers Squibb Company, based in Princeton, New Jersey.  He is the Protein Therapeutics & Biotechnology Patent Practice Group Leader, and also has responsibility for the Oncology Therapeutic Area.  He worked at law firms prior to joining Bristol-Myers Squibb in 2002.

China Utility Model Patent: Trash or Treasure? A citation based analysis
Binqiang Liu, IP Law Master Student, UNH Law

Abstract

This topic aims to make a general introduction to the Utility Model Patent system in China. It carries out a data-based analysis of the China Utility Model Patent (CUMP), mainly focused on citation, litigation and finance perspectives, so as to show the audience the importance (or non-importance) of this specific patent type in the vastly growing patent market in China. Based on citation data, litigation and finance data and sample cases, conclusions are derived on facts but not anecdotes (indicating CUMPs being treasure but not trash at all). Authoritative and useful sources to search CUMPs will also be mentioned.

Biography

Mr. Binqiang Liu is now an IP Law Master Student at UNH Law, New Hampshire. Before coming to US, Mr. Liu was a patent examiner at SIPO (State Intellectual Property Office of China) for more than 7 years after his graduation in 2006. He has both Bachelor and Master Degrees in Engineering and an advanced-study Master degree in Civil and Commercial Law.

His research interests extend from patent examination to patent policy and patent commercialization. He is experienced in patent analysis, patent market and NPE phenomenon. Mr. Liu speaks at IP forums and conferences held by various institutions, including Tsinghua University School of Law, Peking University School of Law and China Patent Agent Committee. He is member of AIPPI (Association Internationale pour la Protection de la Propriete Industrielle) and PIAC (Patent Information Annual Conference) China.

Mr. Liu is a regular writer, and has published more than 20 papers on patent related topics published at journals within SIPO and outside.

Working with Examiner Citations from US Patent Documents
Anthony Trippe, Patinformatics, LLC

Abstract

Patent documents from the United States have a number of different types of citations associated with them. The majority of the citations are communicated between the examiner and the applicant via forms 892 and SB08. Form SB08 is better known as the Information Disclosure Statement (IDS) and is used by the applicant to communicate the prior art references that they are aware of. Form 892, on the other hand, is referred to as the List of References cited by examiner. This is the list of references identified during the examination process and represents the prior art used for the various office actions that take place during prosecution. In all cases, citations on Form 892 are hand-picked by the examiner, based on their relevance to the application at hand, and can be considered to be highly likely to be on the same topic as the case.

During this presentation, various methods, by way of a case study, will be explored for identifying and analyzing examiner citations coming from US patent documents including blocking citations that have been used in an office action during the examination of a subsequent patent application.

Biography

Anthony (Tony) Trippe is Managing Director of Patinformatics, LLC. Tony has been a patent information professional for more than eighteen years and has spent the last fifteen specializing in technical intelligence and patent analytics. He was Technical Intelligence Manager at P&G where he was responsible for evangelizing the use of patent analytics for business decision making at the company. Tony was Practice Director at Aurigin Systems where he traveled the world working with companies of all sizes use patent analytics for competitive advantage. While at Chemical Abstracts Service Tony was the principle architect behind the development of Analyze Plus, STN AnaVist and SubScape for SciFinder. As Director, IP Analytics at 3LP Advisors Tony developed methods for analyzing and validating individual patent documents and portfolios by measuring indicators associated with the examination of patents during prosecution.

Drug Formulations
James L. Grant, Novartis Inc.

Abstract

Drug formulation patents present unique challenges for searching and analysis due to the complex nature of multiple components (adjuvants, ingredients, etc.) which act as a delivery matrix for the API (Active Pharmaceutical Ingredient).  Specific ingredients may be described in broad terms which create dominating claim complexities.  A theoretical case study [“Virocillin”]  is presented to demonstrate the use of Claim Charts to assist in FTO analysis once the searching has drawn upon broad methods based on key words, class codes, and citation analysis.  As FTO demonstrates that a proposed product does not infringe any in-force patents, an expanded discussion on the legal status of withdrawn applications, maintenance fee payments, and oppositions will be included. The [“Virocillin”]  case will also be utilized in a discussion of patentability analysis especially around the public disclosure of inventive concepts prior to critical filing  dates by the inventors.  A brief discussion of biologics formulations will be included.                    

Biography

James works as a Patent Analyst within the Novartis Institutes of Biomedical Research.  James has developed an expertise in small molecule chemical patent studies and additional interests in biotech intellectual property.  James has participated in the PIUG-WIPO initiatives to present patent information for patent authorities in Tunis and Casablanca.  James holds a Ph.D. in Chemistry working in drug design at UC Berkeley and UC San Francisco.  He is a Registered Patent Agent (USPTO).  James is also on the Advisory Board of the Pharmaceutical Patent Analyst.

Citation searching; Getting the big picture
Donald Walter, Thomson Reuters

Abstract

We take it as a matter of faith that heavily cited patents are “important” patents.  This session will review examples and counterexamples, and how to tell the difference.  We will also explore whether patent-to-patent citations are sufficient or whether family-to-family citations are a better predictor of importance. 

Biography

Donald Walter is a solutions consultant at Thomson Reuters where his primary responsibility is to train and consult with users on Thomson Reuters' databases and solutions, specializing in patent and chemical information.  He also conducts patent searches and analyses for legal and industrial clients, with a special emphasis on pharmaceutical and chemical subjects, as part of the Thomson Reuters Search Service.  Since joining the company, which was then Derwent Information, in 1992, he has given many presentations at national meetings, and been invited to speak at international meetings.  He learned his craft at Exxon Research and Engineering, conducting patent and scientific literature searching for clients in the legal and technical departments.  Don received his Ph.D. from Yale University in Chemistry.  He lives just outside Washington DC.

Case Study: Avoiding the Black Box in Patent Analysis
Melissa Burt

Abstract

As the demand for both meso-level and macro-level patent analysis continues to increase, the complexity of worldwide patent information makes it difficult to apply generic visualization tools and methods. Patent Information professionals are uniquely positioned to create, interpret and tweak patent-based visualizations. Specifically, using a command-line search based axis within the visualizations allows you to be as precise in your project deliverables as in your searches. Further customization can be implemented by being in control of data normalization. 

Having flexible, integrated search and analysis capabilities is vital; a case for avoiding a visualization black box is presented. Other data-centric analytical functions will be addressed. 

Biography

Melissa Burt is currently an Account Executive at Questel – Orbit, Inc. She joined Questel in the spring of 2012 and is based out of Questel’s US Headquarters in Alexandria, VA. Melissa previously worked as a lead Data Analyst for online products in the publishing industry, where she spearheaded efforts to integrate visualization into existing data products.

When was that first available online? Understanding the importance of ahead-of-print coverage in STN’s non-patent literature databases for prior art searching
Brian Sweet, Chemical Abstracts Service (CAS)

Abstract

Many leading bibliographic databases on STN now provide access to ahead-of-print content. While the extra timeliness is welcome, the abundance of dates associated with these documents can make it difficult to answer patent searching’s million dollar question: When was that first available online? This talk will explore ahead-of-print content in CAplus SM, Embase™/Embase Alert and MEDLINE®, and show how to determine when records in those databases first became available online.

Biography

Brian Sweet is a Senior STN Product Manager at CAS, where he has worked for over 11 years. He focuses on STN®'s patent and biomedical content, STN Express, STN® AnaVist and on the new STN platform. Brian began his career at BIOSIS in Philadelphia, then moved on to Elsevier in New York and Amsterdam, where he managed the development and marketing of EMBASE and a number of other scientific databases. He also worked at Ovid. Brian holds a Masters in Information Studies from Drexel University, and did undergraduate work in biology as well as history. Brian has been a PIUG member for over ten years and is delighted to be attending the PIUG NE Meeting again this year.

Finding better patents faster – combining the expertise of patent examiners to help find prior art and similar patents
Mike Lloyd, Griffith Hack/Ambercite

Abstract

Patent searching is mainly done by searching for patents with targeted keywords or patent codes, or a combination of the two, but there are limitations with both of these approaches. Keywords and patents codes can be overly broad and yet still miss relevant prior art. These search processes can be time consuming, and USPTO and Federal court invalidation data suggest that both approaches are imperfect.

Another method increasingly used to search for patents that are citationally linked to known patents of interest. However, users can be overwhelmed with hundreds of citation connections, and it is still necessary to determine which citation connections are most relevant to the user’s objective.

Network patent searching is the process of agglomerating all of the citations in an area (thereby combining the search expertise of examiners) to identify the most similar and influential patents in relation to a patent of interest. It can work remarkably well in practice, saving searchers hours of time, while identifying highly relevant documents missed by conventional techniques. This presentation will provide case studies using the graphical network patent search tool AmberScope.

Biography

Mike Lloyd, has a joint role of Senior Vice-President of Business Development for Ambercite, as well as acting as an IP Management consultant for Griffith Hack. Mike brings extensive knowledge and experience of IP management and more traditional forms of patent analysis to help apply NPA™ patent analysis for the benefit of clients. Originally from New Zealand, Mike has a background and advanced degrees in chemical engineering and IP law, and has studied and worked in New Zealand, Sweden, Finland and Australia. Mike first developed an interest in patent data when working as a research scientist, and deepened this interest when working as an IP manager. Mike has published in the areas of chemical engineering, patent management, the value of patents and the use of patent data in in a wide range of publications and forums, including the international journals Les Nouvelles, and Managing Intellectual Property. Mike has also presented on NPA in conferences in Australia, Singapore, the US and France.