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Conference Abstracts and BiographiesIs Sovereign Immunity against Patent Challenges for Rent? Abstract Allergan markets Restasis®, a blockbuster drug that increases the eyes’ natural ability to produce tears, for the treatment of Chronic Dry Eye. In 2017, the drug, protected by patents expiring in 2024, generated $1.4 billion in U.S. sales. In 2015 and 2016, Allergan sued several generic companies, alleging that their proposed generic versions of Restasis® would infringe its patents. In 2016, some of these generic companies challenged the validity of the Restasis® patents in an inter partes review (IPR). A year later, Allergan announced that it had “sold” its Restasis® patents to Saint Regis Mohawk Tribe, with the Tribe exclusively licensing back commercial rights to Allergan. Once it had acquired the Restasis® patents in this transaction, the Tribe sought to terminate the ongoing IPR challenge to the patents based on its status as a sovereign tribal government. Experts weighed in on both sides: many in the pharma industry as well as patent law practitioners viewed Allergan’s deal with the Tribe as a sham transaction in which Allergan was attempting to rent tribal sovereignty to improperly shield patents from invalidity challenges, but others saw it as well within Allergan’s rights to sell its patents as private property and legitimately benefit from sovereign immunity. We shall examine how the Patent Office, district court and patent appeals court responded to this novel attempt to use sovereign immunity in patent law. Biography Ashton Delauney attended college in the U.K., obtaining a B.Sc. degree in Biochemistry from the University of Surrey, followed by a Ph.D. in Molecular Biology from Durham University. After a post-doctoral fellowship at McGill University in Montreal, he was a professor at the University of the West Indies (in Barbados), lecturing and doing research in biochemistry and molecular biology. While working at the UWI, he obtained a LL.B. degree from that university and made the switch from an academic career to patent law. He did a LL.M. at Columbia University, then worked at two patent law firms in New York, before joining the Patent Department of Bristol-Myers Squibb in Princeton, NJ, as a Senior Patent Counsel. Case Study on Determining Small Molecule Loss of Exclusivity Date from Multiple Sources Abstract LOE, or Loss of Exclusivity, is an important date in a pharmaceutical product’s lifecycle for the business to accurately estimate when generic competition can enter the market. A case study on Loss of Exclusivity for a small molecule pharmaceutical product in major markets including the United States and Europe will be presented. Information from a number of different resources, both subscription and publicly available, is required for accurate prediction of the LOE date. Biography Jason has been a Chemistry Patent Searcher in the Intellectual Property Group at Pfizer for the past 11 years, working with attorneys in both the Innovative Health business as well as the Essential Health business. In 2014, Jason also began assisting with Pfizer’s Exclusivity Data Management programs and is now responsible for providing LOE information to all of Pfizer’s Upjohn businesses around the globe. Prior to joining the searching world, Jason was a Medicinal Chemist with Wyeth for six years. Jason received his PhD in Organic Chemistry from the Massachusetts Institute of Technology and BS in Chemistry from Villanova University. Jason also holds an MBA degree from DeSales University. Jason is a member of the Patent Information Users Group and the American Chemical Society. A Day in the Life of a Patent Examiner Abstract The talk will briefly cover the following sub topics: Examiner recruitment-Patent Training Academy training, examination at respective Art units-coaching and mentoring. The talk will also cover some aspects of examiner dockets and docket management, examiner performance appraisal, examiner promotions and career opportunities. Biography Manjunath Rao is currently working as Supervisory Patent Examiner (SPE) for Art Unit 1656 at the USPTO in Technology Center 1600. He has been at the Office since 1999 when he joined the Office as a patent examiner examining in the area of Recombinant Enzymes. Before joining the Office, he worked as a Research fellow at the Department of Medicine, George Washington University/VA Medical center on molecular changes due to chronic alcohol consumption. He now lives in Maryland with his wife --who also works as an examiner at the USPTO-- and his son. Expanding Structure Search Capabilities in Patents Abstract Evaluation of Freedom to Operate or Invalidity in the small chemical space can hang on the successful discovery of a specific molecule in a patent publication. Innovative tools push the boundaries of structure searching in patents, with expanded coverage and capabilities that enable new ways to find and process chemical information. This talk with explore those capabilities, looking to their ongoing development as well as suggesting use cases. Biography Keith Schreiber received a BA in Chemistry at Oberlin College and a Masters in Organic Chemistry at the University of Rochester, after which he studied chemical information under Gary Wiggins at Indiana University. He started his career in the information services department at Procter & Gamble in 1997, where he supported the development of laundry and cleaning products. Moving to Wyeth Pharmaceuticals in 2002, he began structure searching in earnest, supporting the research on early-stage oncology projects. Upon Pfizer’s acquisition of Wyeth in 2009, Keith moved to the IP Legal Department search group, where he now supports late-stage Oncology development and external due diligence. Patentability Case Study: Mistakes Happen Abstract I will describe a true story in this patentability case study. Mistakes were made. It could have happened to any inventor, any attorney, and any patent searcher. I will cover how to avoid missing an obvious reference, how to own up to a mistake, how to treat clients with respect, and how caveat emptor applies to inventors and attorneys who must try to protect themselves from mistakes. Biography Thomas E. Wolff, Ph.D. formed Wolff Information Consulting LLC in 2006 to provide technical and patent information services on a contract basis, following a career at the company variously known as Amoco Chemical Co., BP, Innovene, and Ineos. Tom has two U.S. patents and is a registered patent agent with the USPTO. Tom is certified by the International Standards Board (ISBQPIP) as a Qualified Patent Information Professional (QPIP). One Company – Two Worlds and a New IP Terrain Abstract The Chamberlain Group has long been a traditional manufacturer of durable consumer goods: garage door openers, telephone entry systems and radio transmitters. While we still make lots and lots of stuff, we have also become a connected products company offering platforms and services directly to consumers (myQ) and in conjunction with partners and suppliers. From a patent perspective, this evolution has had a huge impact on almost everything we do. This presentation will review the changing dynamics of this new environment and how we are adapting to these new landscapes. Buckle up. Biography Jim Johnson has been lurking around the patent information world for over thirty years. He has been with the Chamberlain Group for over thirteen years and was previously with Baxter Healthcare for eighteen years. He has provided patent and technical research and analysis, competitive intelligence and product development support to executive management, scientists & engineers, regulatory personnel and almost anyone willing (or desperate enough) to ask. Sound the Alarm! Creating a Patent Early Warning System Abstract In today’s 24-hour news and social media cycle, information is more prolific and viral than ever. This can lead to a long trail of reactionary business responses across business functions. Through the creation of a Patent Early Warning System, the Hershey Company has been able to anticipate industry activity ahead of the media and prepare a pro-active business response. This presentation will address the business case for creating an early warning system and best practices and tips for making this system work for your organization. Biography Rosanna Lindquist is an Information Research Scientist in R&D for the Hershey Company, a global confectionery and snacking company, where she is part of the Technical Intelligence team. Rosanna specializes in technical and patent research with a focus on packaging and design. She is also passionate about business intelligence and enjoys using IP as one of many resources in her arsenal. Rosanna is acting board member and secretary of the Patent Information Users Group (PIUG). She is also an active member of the Special Library Association’s Competitive Intelligence Division. Rosanna holds a Masters in Library & Information Science from Clarion University of Pennsylvania and a BA in Creative Writing from Randolph-Macon Woman’s College. More Effective Reporting of Changes in Patent Families from Multi-Database Abstract Our job, as patent search professionals, is to wade through voluminous patent and non-patent literature in order to provide our clients with valuable information. While understanding database content and indexing policies are important pieces to a successful search, equally important is the way in which we communicate our search results. This presentation will describe the results of a collaborative effort to develop easier identification and presentation of changes in patent families in BizInt Smart Charts for Patents updated reports -- with a focus on reporting patent family changes across multiple databases. We will highlight some of the pain points and inefficiencies in reviewing and writing update search reports, specifically addressing the challenges of effectively reporting changes in patent families over time. The goal is to be able to clearly identify new families, families with new publications or legal status changes, and those families which have not changed since the last update. Biography Victoria Smith received her Ph.D. in Biological Sciences from the University of Notre Dame in 2016. While at the university, she worked in the areas of immunology, cancer biology, and infectious diseases. During her time in the lab, Victoria began to transition her career interests to intellectual property and, in 2015, enrolled in a Master of Science in Patent Law program at the University of Notre Dame. Through participation in this program and a subsequent internship at the University of Notre Dame Office of Technology Transfer, she was taught the foundations of patent law, application drafting, and patent searching and analysis. Victoria joined Novartis in October 2017 as a patent analyst for the Research & Development IP team at NIBR. Applications of Using Entity Size as an Indicia of Licensing for University Patents Abstract Building off of Arleen Malley Zank's 2015 PIUG NE Conference presentation "Patent Data, Evidence-Based IP Policy Making, and the Importance of Analytics", this presentation will explore applications of using US patent entity size and fee payments as indicators of licensing activity for universities, research institutes, and SMEs. This tool will be used for examining international filing strategies for university inventions with and without large-entity licensees. Other applications will include industry-specific licensing outcomes and methods to find non-patent sources that corroborate entity-size determinations. Biography Steven is a Patent and Market Analyst at the Wisconsin Alumni Research Foudnation (WARF), the technology transfer organization for the University of Wisconsin-Madison. He has been in this position for 5 years and works mostly in strategic initiatives and evaluation of early-stage technologies. Steven holds a Bachelor of Science in Chemical Engineering from University of Wisconsin-Madison, a minor in Computer Science from The University of Wisconsin-Milwaukee., and a J.D. from the University of Wisconsin-Madison. Patent and Non-Patent Literature as a Matchmaking Tool for Technology Transfer from Academia to Industry Abstract Patent literature and non-patent literature can be an effective tool for technology commercialization matchmaking between university technology transfer offices and companies. University technology transfer offices can conduct a patent landscape analysis to identify potential industry partners who can license university research for technology commercialization. Likewise, companies can conduct technology scouting using non-patent literature to identify technology disclosures from university research that can be appropriate to license for commercialization. This presentation will outline best practices and resources for university licensors to utilize patent literature in identifying potential company licensees as well as best practices for company licensees to utilize non-patent literature in identifying potential university licensors. Real world examples will be highlighted in demonstrating best practices and resources for using patent and non-patent literature to identify potential academia and industry technology commercialization partnerships. The use of academic and public libraries for analyzing patent and non-patent literature will also be highlighted. Biography Patrick Griffis has worked as the Business Librarian for the University of Nevada, Las Vegas Libraries since 2007. As part of his role, he provides patent research assistance to the university community and the local business community in Southern Nevada. He works regularly with the technology transfer office of his university providing research assistance in identifying industry partners for technology commercialization. He has presented at conferences and has written journal articles and book chapters on providing research assistance to the local business community. AIMTM Patent Landscapes – More Than “A State of the Art” Patent Search Abstract Patent landscape efforts can get hampered either by voluminous patent search results or the perceived need to manually tag every single feature. It can raise uncertainty, costs, timelines, and complexity. The final report can vary depending on the allocated time and the optimal usage of advanced patent analytics tools by professional patent analysts (or by end-users). On the other side of spectrum, many “state of the art” reports only provide patent search results with minimal analysis or visuals. This presentation highlights the use of a cost-effective accelerated, intentional, and multifaceted (AIMTM) patent landscape. The goal of an AIMTM patent landscape is to intentionally align scope with pending decisions and deliver the results within an accelerated 1-2 weeks’ timeline. A quick patent landscape search does not have to equate with low quality search. AIMTM patent landscapes are ideal in quicker patent portfolio bench-marking efforts and delineating white space opportunities for well-defined projects. Biography Yateen Pargaonkar is the Managing Partner of Riser IP LLC, a specialized patent search, analysis, and IP competitive intelligence service provider. Yateen’s experience includes roles of increasing responsibility in the Energy sector (Chevron), Consumer Goods (P&G) as well as legal supporting Biotechnology, and Pharmaceuticals (top-tier IP law firms). He has taught a course at UCSD on Patent Searching & Internet Research. Yateen has degrees in chemistry, biochemistry, and molecular biology, as well as three years of research experience at Columbia University. He is a registered U.S. Patent Agent, a reviewer for World Patent Information, and an active member of PIUG. Professional Development at a Triple Point: Technology, Information Retrieval, and Patent Law Abstract Patent information searchers need a unique combination of three specific skills: science or technology, information retrieval, and patent law. People skills, like communication skills or customer focus, are equally important. Professional development must include all of these skill areas. This discussion will focus on the minimum requirements for the “patent law” skill set and whether there are advantages to having more than the minimum requirements. Biography David S. Saari, Ph.D. is a Registered Patent Agent, USPTO Reg. No. 29,239, Dec. 22, 1978. He received a Ph.D. for original research in synthetic organic chemistry from the University of California, Davis, August 1980. David currently is a Senior Scientist with Science IP®, the official search service of CAS®. CAS is a division of the American Chemical Society. David is one of the original members of PIUG®. |
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