Program

Tuesday, September 26, 2017

Conference Abstracts and Biographies 

Keynote Address - Patentable Subject Matter in the Life Sciences: Where Do We Go From Here?
Andrew Berks (Cittone & Chinta LLP)

Abstract

The question of patentable subject matter under 35 U.S.C. §101 in the life sciences has become a significant challenge in the post-Myriad era. This talk will explore the background of the problem and summarize the state of the case law. Solutions for dealing with the problem will be discussed.

Biography

Andrew H. Berks builds and protects patent portfolios for his clients. He is a partner at Cittone & Chinta LLP, a full service intellectual property law firm in New York City. Andrew specializes in all aspect of patent matters, and IP transactional matters. Andrew’s practice includes •patent strategy and counseling, patent drafting, prosecution, and appeals •patent opinions including patentability, freedom to operate, non-infringement and patent landscape reviews •license agreements and other IP-related contracts •confidentiality (non-disclosure) agreements •research and development agreements Andrew’s prior experience includes work at several law firms and corporate environments, including Wyeth Corp., Merck & Co., and Ivax Pharmaceuticals. Andrew’s clients include Fortune 500 corporations, University technology transfer offices, established businesses, foreign companies, entrepreneurs, startups, and individuals. Andrew's technical emphasis is in chemistry, pharmaceuticals, and biotechnology. Andrew is a graduate of Fordham Law School and has a Ph.D. in organic chemistry from the University of Colorado, Boulder. He has two daughters now graduated from college and lives on Staten Island with his wife, bicycle, and dog.

Freedom-to-operate Searching: What’s in the Tube?
Tom Wolff, Wolff Information Consulting LLC

Abstract

Presentations on freedom-to-operate searching have been made by me and others at recent PIUG Conferences. Some have covered the whole process of FTO searching from defining the scope of the search to presenting the results, while others have concentrated on various biological matters. This presentation will cover formulations or compositions with multiple components. These could be the kinds of products that consumers would find in tubes, cans, bottles or dispensers on retailers' shelves. Non-chemists should be able to relate to other fields and matters, such as devices with many parts or methods with many steps. This talk will focus on how to develop search strategies that allow staying within budget and yield appropriate information from which the client's attorney may render a freedom-to-operate opinion.

Biography

Thomas E. Wolff, Ph. D, formed Wolff Information Consulting LLC in 2006 to provide technical and patent information services in the chemical arts on a contract basis. Tom works directly with patent attorneys in law firms and at chemical and consumer products companies large and small, as well as with R&D chemists and engineers. Tom covers all manner of polymers, formulations, and organic and inorganic chemistry, including structure and Markush searching. His areas of expertise have greatly expanded since leaving Amoco/BP Chemicals where he developed knowledge of addition and condensation polymerization and preparation of organic chemicals. He has a BS in chemistry from the Massachusetts Institute of Technology and Ph. D. from Stanford University. Tom has two US patents and is registered patent agent. For more information, see www.wolffinfo.com.

Creating and Delivering Innovation Intelligence (One-Hour Master Class)
Nat Brooks, Strategy Shapers LLC

Abstract

In this presentation, we’ll explore the vital intersection of competitive intelligence and IP analysis.  We’ll look at how understanding technical capabilities and intellectual property is critical to assessing rival strategies, innovation options and in-market actions.  We’ll make the case for developing a more comprehensive “innovation intelligence toolkit” that cuts across traditional IP analysis and market analytics.  We’ll also look at how some firms use IP analysis as part of developing innovation plans and projects.  We’ll examine different analysis objectives and techniques that can increase the impact of traditional IP analyses.  These different objectives and techniques will be demonstrated through numerous case studies that cover the consumer products, industrial manufacturing and high tech industries.  The presentation will be interactive with plenty of time allowed for questions and discussion.

Biography

Nat is the Principal of Strategy Shapers LLC and Managing Partner of SynFiny Advisors.  Prior to his current positions, Nat spent 25 years in Fortune 500 management roles in finance, operations, strategic planning, and competitive intelligence.  From 2005 to 2012 Nat built and led Procter & Gamble’s Competitive Intelligence organization, which became an 850 member global community of practice responsible for competitive analysis, early warning, technical intelligence and strategic analysis. 

Through Strategy Shapers LLC, Nat works with clients in a wide range of industries, from consumer products and healthcare to manufacturing and basic materials. He focuses on organization development, intelligence best practices, and war gaming. As Strategy Practice Leader for SynFiny Advisors, Nat leads strategy development and market viability engagements with a wide range of clients. 

The Many Faces of Derwent
Kimberly Miller, Novartis Institutes for Biomedical Research

Abstract

Markush searching used to be focused around two primary databases: CAS Marpat and Questel MMS. Enter new STN platform and suddenly chemistry searchers find themselves knee deep in resources: classic STN Marpat, WPI and Questel MMS, new STN Marpat and DWPIM. If a searcher has access to the old and the new, which is “better”? This presentation will focus on aspects of searching the Derwent files; MMS (DWPX and PHARM) vs. new STN (DWPI/DWPIM/DCR) in a case study. Particularly, it will address how answer sets differ from one platform to the other, what you need to be aware of when using superatoms (HEA, HEF etc.) vs. CA generics (Hy, Cb etc.) and provide tips for comprehensive patent searching.

Biography

Kim Miller has a degree in chemistry from Western New England University. She began her chemistry searching career in 1997 and has been with Novartis Search and Analytics Team since 2007. She has performed numerous patentability, FTO and (in)validity searches for patent attorneys and research scientists as well as lead project teams. In addition to these duties, Kim is involved in development and presentation of patent information classes and workshops for chemical scientist. She is a past PIUG Board of Director officer and author of several papers and presentations on structure searching.

Patent Topical Analytics
Alan Porter, Director of R&D for Search Technology, Inc.

Abstract

Recent “Big Data” excitement is prompting efforts to advance various data analytics. Data science approaches (machine learning, topic modeling, auto-classification, etc.) offer prospects of more effective intelligence being derived from various technical information resources. Our interest is in patent analytics, expressly on identification of topics.   This presentation shares our experimentation with patent abstract record analyses. It keys on two dimensions: 1) which data fields provide the best resources for topical investigation? And 2) what data treatment works best?  We share results from an ongoing study of “autonomous systems” patents. We compare results based on use of alternative data fields: title and abstract NLP (Natural Language Processing) phrases from Derwent Innovation Index vs. those from PatStat; comparing to content deriving from Claims and to patent class information. We concurrently compare alternative term cleaning and consolidation routines on those NLP phrases by feeding those into further routines (e.g., PCA factor generation, Emergence Indicator generation) to assess what gives the best results. The payoff is insight into more effective means to generate informative topical content.

Biography

Alan Porter is Director of R&D for Search Technology, Inc., Norcross, GA. He is also Professor Emeritus of Industrial & Systems Engineering, and of Public Policy, at Georgia Tech, where he is Co-director of the Program in Science, Technology & Innovation Policy (STIP). He is author or co-author of some 230 articles and books, including Tech Mining (Wiley, 2005). Publications are available at: http://www.researchgate.net/profile/Alan_Porter4.

Intellectual Property Patent Mapping in New Product Development
Sharon R. Benjamin & Charlie W. Silver, W. L. Gore & Associates

Abstract

Are you trying to develop a robust IP strategy for your New Product Development front end programs? Are you interested in developing a comprehensive summary of your competitive IP portfolio and would like to know where to start? Are you spending too much time on the Internet trying to get the answers? If you've answered "yes" to any or all of these questions, here is your opportunity to learn useful IP tools and techniques in the most time and cost effective manner. Participants will learn how to identify IP analysis and mapping tools to increase their efficiency; determine the limits of those tools and the best way to optimize information; learn how to develop and present competitive IP summaries for organization of information. The presentation will highlight: IP Resources, both free and fee based sites; development of competitive IP analysis processes using appropriate resources and various formats to deliver valuable information.

Biography

Sharon is a Registered Patent Agent with the USPTO. She has supported a variety of intellectual property initiatives at 3M, Medtronic, and W. L. Gore & Associates.   Charlie has a background in library science. He has been with W. L. Gore & Associates for 25 years in a variety of functions. These functions have formed and shaped his skills in the area of information management and intellectual property. 

Understanding the IP Landscape in Drug Discovery - Finding Complex Bioactivity Datasets Using Manually Excerpted Databases
Jim Rinker, Elsevier

Abstract

Painting a complete picture of the IP landscape for a drug discovery project or an entire therapeutic area can be a daunting task. Biomedical search tools such as Pubmed, Embase, and Scifinder offer extensive literature and patent coverage but  are limited to searching either by chemical structure or biomedical terms. This leaves the researcher with the daunting task of reviewing 100’s of articles and patents, many of which containing irrelevant information,  to ensure full coverage of the desired landscape. Manually excerpted databases such as Reaxys and life science text mining tools such as Pathway Studio offer greater insights for the researcher both for quick identification of relevant data and also understanding this data within the context of a therapeutic area or disease state. Practical use cases on how one can use these information search tools in better defining the IP landscape for a project will be demonstrated.

Biography

Jim joined Elsevier in April of 2014 as a customer consultant responsible for the sale and retention of Elsevier’s life science information solutions portfolio . In this position,  Jim creates practical workflows to solve complex drug discovery information problems utilizing multiple data sources.  Prior to joining Elsevier,  Jim worked for 25 years as a synthetic organic and medicinal chemist in drug discovery in the pharmaceutical industry. In addition to his work in the lab, he also spent several years working as a cheminformatics specialist at both 3-Dimensional Pharmaceuticals and Janssen where he was responsible for managing chemical data generated by the high throughput chemistry team and compound selection for HTS from the virtual library collection.

The CPC as a Search Tool - Mind the Gap(s)
Sarah W. Stokes, FIZ Karlsruhe

Abstract

The Cooperative Patent Classification (CPC) has been established as a high precision search tool for accessing world-wide patent literature since its launch in 2013. However, expert users need to be aware of the less obvious limitations related to coverage gaps, timeliness and reclassification issues (invalid codes). This presentation will show which gaps need to be considered and give recommendations how to make the most of the CPC and how to overcome these limitations with the example of  various STN databases such as CAplus, DWPI and INPADOC.

Biography

Sarah is currently a manager and trainer with FIZ Karlsruhe, based in North Carolina.  She has been working in training for nearly three decades and with STN for over 15 years.  She spent many years as an STN trainer with CAS and several years as a patent analyst at a large search firm before to joining the team at FIZ-K.  Prior to entering the IP world, Sarah worked as a Science Reference Librarian at a large government library.  Her academic background is primarily as an inorganic biochemist, studying the geometry of protein metal binding sites via NMR.

Case Studies in the Use of Advanced Search Strategies for locating Prior Art
Ron Kaminecki, Questel

Abstract

Most searchers adopt a method of search techniques that includes the Building Block approach of stringing together groups of keywords or classification codes and use Boolean operators to increase precision while keeping recall reasonable.   But what else can be done to help to improve results?  This presentation will cover several case studies discussing advanced search strategies that can be used on every search platform along with an explanation of these strategies work including a comparison of citations, keywords and classifications. In addition, a strategy to help determine when a search is done will be covered.

Biography

Ron continues to help patent searchers, inventors, examiners, attorneys and other patent professionals in his role at Questel and also as an adjunct professor in patent law at various universities, having worked at Dialog, Thomson-Reuters, Abbott Laboratories and others. He has worked with patent and patent information all of his career as a searcher, manager, representative, consultant, expert witness and attorney and is also involved in PIUG activities. He has written many articles and presented many papers in the field of patent information, has a patent pending, and is a co-author of NISO Standard for a Common Command Language for Online Interactive Information Retrieval. He has a BS in Chemistry, an MS in Computer Science and a JD with a Certificate in Patent Law. He is a US Patent Attorney and is a member of the Illinois Bar and is admitted to the Northern District Court of Illinois.