PIUG 2011 Biotechnology Meeting
New Biologics: Proteins & Beyond
Program
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7:30 AM |
Breakfast & Registration |
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8:15 AM |
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Morning Session: Patenting Players and Perspectives |
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8:30 AM |
Potent
Antibody Drugs by Design Paul Carter, Genentech |
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9:05 AM |
Biosimilars:
New Decisions and New Opportunities Michelle Lewis,
ZymoGenetics |
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9:40 AM |
Sequence Business Process and
Frequently Asked Questions on Sequence Compliance Issues
Dave Nguyen, USPTO |
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10:15 AM |
Break |
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10:45 AM |
Search
and Examination for Biotech Applications in JPO Takashi
Saku, JPO |
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11:20 AM |
Beyond gene patenting
turmoil: a reality check for patent protection of biosequences in Europe
Luca Falciola, Genfit
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12:00 PM |
Lunch & Vendor Exhibits |
Afternoon Session: Biotechnology Searching Practice |
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1:30 PM |
Advice to Beginner and
Intermediate Searchers for a Biotechnology Patent Search
Ken Hoppe, Science IP |
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2:05 PM |
Comparison of USGENE vs.
GQ-PAT and Geneseq Fanny Coignard, PDG Biotechnology
Information Working Group Chair |
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2:40 PM |
Break |
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3:10 PM |
Comprehensive Search
Strategy for Genomics-Based Intellectual Property Protection
Steve Mitchell, TPR |
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3:45 PM |
Improving FTO Patent
Analysis- Focusing Results Using Scientific Analysis
Barbara Miller, Novartis |
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4:20 PM |
Biologics - Searching Patent
Classes at the USPTO, WIPO, EPO, and JPO James Grant |
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4:55 PM |
Concluding Remarks
Doreen Alberts, Planning Committee Chair |
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5:00 PM |
Vendor Exhibits and Networking |
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5:30 PM |
Adjourn |

Meeting Abstracts
Untitled 1
"Welcome to the PIUG 2011 Biotechnology Meeting"
Monica Weiss-Nolen, Program Chair
Biography
Monica Weiss-Nolen is currently an Information Scientist in the scientific and patent Information Research and Analysis group at sanofi pasteur, supporting the North America Intellectual Property group and R&D scientists. Previously, she served as a Senior Analyst for the Business Intelligence group at Ortho Biotech, a Johnson & Johnson company, and prior to that was an information scientist at DuPont Pharmaceuticals for 10 years, conducting patent and scientific searches for R&D. She started her information science career at BIOSIS creating current awareness searches. She holds a BS in Biochemistry from Millersville University of PA and an MSIS from Drexel University. She has been a member of the PIUG for over 10 years.
Untitled 1
Potent Antibody Drugs by Design
Paul Carter
Genentech, Inc.
Abstract
Antibodies have come of age as therapeutics since the late-1990s with 24
antibody therapeutics marketed in the USA and >240 additional antibodies in
clinical development. The focus of this presentation is the creation of even
better next generation antibody drugs - a major area of interest in the field.
The rationale to develop better even antibody therapeutics comes from a
convergence of clinical, scientific, and commercial considerations in
conjunction with technological advances that provide the tools to do so.
Biography
Dr. Carter has 25 years of experience in biotechnology: Genentech (1986-2000
and 2010-present), Immunex/Amgen (2000-2003), Seattle Genetics (2003-2008) and
VLST (2008-2009). Dr. Carter's accomplishments in drug development include
initiating the antibody humanization program at Genentech and co-inventing
Herceptin®, a humanized antibody approved by the FDA for the treatment of
HER2-overexpressing breast and gastric cancers. He is an inventor or co-inventor
on 25 issued US patents. Dr. Carter has authored or co-authored 95 scientific
publications that together have been cited >7,000 times. Dr. Carter received a
B.A. in Natural Sciences from Cambridge University in 1982. He obtained a Ph.D.
in 1986 under Sir Gregory Winter, Ph.D., F.R.S. at the MRC Laboratory of
Molecular Biology in Cambridge. From 1986-1989 Dr. Carter was a Postdoctoral
Fellow with Dr. James A. Wells at Genentech.
Untitled 1
Biosimilars: New Decisions and New Opportunities
Michelle Lewis
ZymoGenetics, Inc.
Abstract
The enactment of the legislative basis for biosimilar approval in March 2010
has brought some clarity to this area for those involved in the biotechnology
industry. However, details about the specific procedures, the specific standards
to be applied, and the ultimate impact of biosimilars on current and future
products remain uncertain. During the maturation of the biosimilar approval
process biotechnology industry leaders will face new decisions - decisions, if
to be made intelligently, that will require accurate information about their
products, their competitor's products, and the involved intellectual property
coverage and approval histories. This presentation will examine new decisions
related to biosimilars that will be faced by management in the coming years and
the type of information that will be required to make informed choices at these
junctures. If armed with correct information, biotechnology companies will be
able to seize the new opportunities presented by the biosimilar approval process
and use it to expand the choices available to patients relying on biologic
treatments.
Biography
Michelle L. Lewis is a Senior Patent Attorney at ZymoGenetics, Inc., a
biotechnology company located in Seattle, Washington which recently became a
wholly owned subsidiary of Bristol-Myers Squibb. She has a Masters degree in
Genetics from Columbia University and a biology degree from Duke. She began her
patent career as an Examiner at the United States Patent Office in the Complex
Biotechnology Arts. After leaving the office and working as a patent agent for
several years, she attended Rutgers-Newark Law School, graduating with honors.
Following a stint in law firms as an associate, she joined ZymoGenetics where
she has worked for eight years. At ZymoGenetics she drafts, prosecutes, and
manages worldwide patent and agreement portfolios for a number of company
projects. Beyond prosecution and transactional responsibilities, she routinely
briefs management on recent developments in the biotech arena, such as
biosimilars and the current challenges to the patentability of genes and
diagnostics.
Untitled 1
Sequence Business Process and Frequently Asked Questions on Sequence
Compliance Issues
Dave Nguyen
USPTO
Abstract
The presentation provides a brief overview of USPTO current sequence business
process. The presentation then covers common sequence compliance issues and
frequently asked questions related thereto.
Biography
Mr. Nguyen is a graduate of the Virginia Polytechnic Institute and State
University and Johns Hopkins University. He works at the U.S. Patent & Trademark
Office, where he served as the supervisory patent examiner of Art Unit 1633 and
TC 1600 Quality Assurance Specialist from 2004-2009. He currently manages the
Patent Examination Art Unit 1634 directed to personalized medicine and
pharmacogenetics, and serves as a specialist and coordinator for the Sequence
Business Process.
Mr. Nguyen's current assignments in the agency include:
- Supervisory Patent Examiner, Art Unit 1634
- Workgroup 1630 Hiring Program Coordinator
- Co-Lead of SharePoint Business Process
- Co-Lead of Automation & Sequence Business Process
- Member of the Enhancing Technical Knowledge Between Examiners Working
Group - Patents Process Reengineering Team
Untitled 1
Search and Examination for Biotech Applications in the JPO
Takashi Saku
Japanese Patent Office
Abstract
It will be explained how patent applications in biotechnology field are
searched and examined in the Japan Patent Office. Especially, the methods for
searching about DNA and protein sequence and the examination standards in
biotech will be discussed.
Biography
After I received B.A. and M.A. degrees in Biotechnology from University of
Tokyo in Japan, I started my career at the Japan Patent Office (JPO) as a patent
examiner in 2000. I have worked at the JPO almost 11 years, and examined a lot
of patent applications related to biotechnology and medical science fields.
During the period, I had a chance to work at the Examination Standard Office,
and now I am in charge of deputy director of the Examination Policy Planning
Office.
Untitled 1
Beyond gene patenting turmoil: a reality check for patent protection of
biosequences in Europe
Luca Falciola
GENFIT
Abstract
Since mid 1990's, genomic-based discovery was instrumental in expanding, and
testing, the limits of institutional policies and industry practices on gene
patenting. Relevant data on the actual impact of the extensive integration of
genetic information within patent documents can be extracted by integrating
IPC-, keyword-, and sequence-based search strategies that are developed and
performed in accordance to the content and the search features of sequence-based
and full-text patent databases.
A case study on major trends on the content and the outcome of examination at
EPO for biosequence-containing PCT applications that have been filed in the late
1990s-early 2000s is presented in parallel to major recent decisions of EPO
Board of Appeals in this field. This analysis is intended to provide
quantitative and qualitative elements, as well as some methodological tips, that
may be helpful for evaluating patent situation and strategies associated to an
R&D project, a technology, or a company, in presently changing economic and
legal environments.
Biography
Luca Falciola is Director for Intellectual Property at Genfit (Loos, France).
He previously held positions at RiboVax Biotechnologies (Petit-Lancy, Geneva,
Switzerland) as Director for Intellectual Property & Collaborative Research, and
at Serono as Patent Information Specialist and Patent Attorney.
Luca holds a PhD in applied genetics and has done post-doc research in
molecular biology. He is Member of AIDB (Italian Association of Patent
Searchers), wherein he acts as editor of "AIDB Newsletter" and as AIDB
representative in the working group of CEPIUG (Confederacy of European Patent
Information User Groups) on professional certification. He provided courses and
presentations on methods for searching patent & scientific information.
Untitled 1
Advice to Beginner and Intermediate Searchers for a Biotechnology Patent
Search
Ken Hoppe,
Science IP® (Chemical Abstracts Service)
Abstract
As biotechnology patent information consultants, we bring together the three
spheres of our experience, as scientists, information professionals, and patent
specialists. We leverage that combined knowledge to answer questions such as:
When to do a sequence search, key word search, or both? What type of sequence
search? How to conduct information analysis? How much value-add is too much? My
talk will present and explain answers to these questions, as encountered during
the pre-interview, interview, pre-search, search, report, and "information
analysis" stages.
Biography
Ken is a Senior Searcher at Science IP®, the professional search service of
Chemical Abstracts Service (CAS), a division of the American Chemical Society.
Prior to joining CAS in 2007, Ken worked for 12 years in the pharmaceutical
industry at Pfizer, where he conducted molecular biology research in drug
discovery for six years and then provided patent and scientific information
research for in-house patent attorneys for six years. Prior to his
pharmaceutical industry experience, Ken worked in academic molecular biology
research laboratories at Harvard Medical School, Beth Israel Hospital Boston,
and the University of Connecticut Health Center's Department of Biochemistry.
Ken focuses on comprehensive biological and biosequence patent retrieval and
analysis in support of patentability, freedom to operate, validity,
infringement, and due diligence activities within the legal and corporate
environment. Ken has a MS in biology.
Untitled 1
Comparison of USGENE vs. GQ-PAT and Geneseq
Fanny Coignard
Pfizer
Abstract
The Patent Documentation Group's Biotechnology Information Working Group has
conducted a series of studies to compare and evaluate patent sequence databases.
Several sequences were searched on three different occasions (March 2008, March
2010 and December 2010) to find similar sequences from three well known sources:
USGENE, GQ-PAT and GENESEQ. The results presented show interesting differences
in content, coverage and database update.
Biography
Fanny Coignard has a biotechnology engineer degree (~MSc) from the E.S.B.S.
(Strasbourg University) and has recently obtained the Certificat d'Animateur en
Propriete Industrielle (I.N.P.I.). Fanny has been working as a Patent
Information Scientist in the GLobal Legal Information Science Team (GLIST) at
Pfizer for 6 years. Fanny specializes in biotechnology related patent questions,
including sequence analysis. Before joining Pfizer, Fanny worked as a research
scientist for 6 years at Bristish Biotech (Oxford, U.K.) , Epigene (Paris,
France) and Exonhit Therapeutics (Paris, France) where she gained experience in
molecular biology, cell biology, bioinformatics, and proteomics.
This presentation is given on behalf of the Patent Documentation Group's
Biotechnology Information Working Group, which Fanny has been a member of since
2006.
Untitled 1
Comprehensive Search Strategy for Genomics-Based Intellectual Property
Protection
Steve Chappell Mitchell
TPR International
Abstract
A comprehensive genetic search strategy in Biotechnology includes
sequence-based discovery and analysis at protein level, DNA level, and
conceptual keyword/classification coding combinations. This talk in
genomics-based intellectual property protection will cover considerations within
this comprehensive method:
- Caution when using percent identity in algorithms
- Developing a process for dealing with confounding DNA genomic
interspersed repeat comprised sequences
- When using percent identity, defining uses of the differential
mathematical models from KERR (GenePAST) and BLAST algorithms
Sequence-based discovery is vital, and necessary to combine with conceptual,
keyword, coding-based search approaches within a most comprehensive method.
Biography
Steve Chappell Mitchell is the Director of Biotechnology and Genomic Services
at Technology & Patent Research (TPR) International. Before joining TPR, Steve
was Senior Information Scientist at Abbott Laboratories where his work with
attorneys was recognized with the 'President's Award'. Steve's successful
experience as a cancer discovery scientist at Harvard University and Cedars
Sinai/UCLA, and his participation on the Human Genome Project at CalTech, have
provided him with firsthand knowledge of gene cloning and sequencing. Also,
Steve's numerous patented inventorships confirm him as being on the cutting edge
of technology and the patent process. In intellectual property protection at
TPR, Steve's clients include most major pharmaceutical companies, and a large
group of biotechnology companies and law firms worldwide
Untitled 1
Improving FTO Patent Analysis- Focusing Results Using Scientific Analysis
Barbara H. Miller
Novartis Institutes for BioMedical Research, Inc.
Abstract
For pharmaceutical patent attorneys who are making decisions in areas such as
Freedom to Operate (FTO), it can be time-consuming to find all relevant legal
information related to a particular target or therapy. Search savvy and
proactive patent analysts can assist in the decision making process by providing
attorneys with reports that contain more decision-enabling information than
merely the results of blast and keyword searches. Providing information in
areas such as legal status, current patent claims, relevant prior art, IP
portfolio, and competitive intelligence when necessary will provide the attorney
with a better context in which to frame an issue. By doing basic scientific
analysis on documents resulting from Blast and keyword searches to determine
relevance to the FTO issue, patent analysts can provide attorneys with the
necessary information to facilitate FTO decision making.
Biography
Barbara Miller is currently a Patent and Scientific Analyst at the Novartis
Institutes for Biomedical Research (NIBR) in Cambridge, MA. Prior to joining
Novartis in August 2009, she was an Information Scientist at Pfizer in both
Groton, CT and Ann Arbor, MI. She has a PhD in Biological Sciences from Emory
University in Atlanta, GA, a MS in Regulatory Affairs and Quality Assurance from
Temple University, and a BS in Chemistry from Rhodes College in Memphis, TN.
Untitled 1
Biologics - Searching Patent Classes at the USPTO, WIPO, EPO, and JPO
James L. Grant
Abstract
Corporate search protocols have been developed to comprehensively capture
biotech and biosequence data within world patent and journal collections for all
aspects of due diligence. The large growth of biotech patent specifications led
the patent offices to develop classifications of their own. The primary purpose
of classification systems is to facilitate the searching and retrieving of
patent documents by patent offices and users. Classification systems are
hierarchical in nature with main headings covering a general area of technology
and sub-headings covering a given type of invention. The systems allow searchers
to identify the classification areas in which the technology is assigned to Art
Units within the respective Offices. After identifying potential classification
areas from the index, the class schedules must be consulted to determine the
best and most exact classification groups in which to search. USPTO, WIPO, EPO,
and JPO classification systems exist and must be searched separately so that
technical aspects of an invention, to which a patent document relates, can be
classified completely. The classification systems may provide an excellent
'front end' to searching for macromolecules that contain peptides, sugars,
chemical linkers, etc.; methods & platform technologies; and anitbodies.
Further, the class systems may reveal dominating claims to genus or classes not
revealed by word or by sequence. The United States Patent Classification To
International Patent Classification Concordance will be discussed in light of
the EPO and JPO classification schema.
Biography
James L Grant has a PhD in Chemistry and is registered to practice as a
Patent Agent before the USPTO. He works as a Consultant in chemical and
biotechnology research sectors most recently in patent portfolio review and
patent research for SciMed Partners Inc. James has also participated in IP
Forums for WIPO. He recently presented lectures in Tunis highlighting USPTO
content along with others presenting patent content from WIPO and the EPO. James
has worked in patent research at Pfizer, Inc. and Bristol-Myers Squibb.
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