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2004 PIUG Northeast Meeting
October 12, 2004
8:30 am - 5:00 pm
Hilton Woodbridge, Iselin, NJ
Main / Sponsorships /
Program /
Travel Info /
Workshops
Meeting Program and Abstracts
AGENDA
TIME
|
EVENT
|
MORNING TALKS
|
| 7:30-8:30 |
Registration |
| 8:30-9:15 |
But Where Do They Mean It? Determining the
Extent of Patent Coverage for a Set of Patents
Donald Walter, Thomson Derwent NA
|
| 9:15-10:00 |
Technical Disclosures: Searching for
Defensive Publications
Henry H. Murray, ExxonMobil Research and Engineering
|
|
10:00-10:30 |
BREAK
|
| 10:30-11.15 |
Experiences using the New MMS System
Judith Johnson Philipsen, Pfizer Global Research and Development
|
| 11:15-12:00 |
Comprehensive biosequence searching in the patent literature
Robert Austin, FIZ Karlsruhe
|
|
12:00-1:30 |
LUNCH
|
AFTERNOON TALKS
|
| 1:30-2:15 |
Beyond Chemistry: Is Markush Relevant?
Ron Kaminecki, Dialog
|
| 2:15-3:00 |
Cherry-picking the prior art: How patent attorneys use search reports.
Roget (Ric) Henschel, Foley & Lardner LLP
|
|
3:00-3:30 |
BREAK
|
| 3:30-4:15 |
Patent Law Perspectives On Sequencing And Searching
George Gould of Gibbons, Del Deo, Dolan, Griffinger & Vecchione
|
| 4:15-5:15 |
Ice Cream Social
|
ABSTRACTS
Donald Walter (speaker)
Thomson Derwent NA
Robert Austin
FIZ Karlsruhe
|
But Where Do They Mean It? Determining the
Extent of Patent Coverage for a Set of Patents
Given a set of patents, how do you determine
in which jurisdictions real patent protection has been obtained? There are
several simple techniques for determining this, but the simple techniques
are often not the correct techniques. We will discuss the difference
between a patent publication and a real patent, how to tell if a patent
was really issued, and how to correctly analyze a set of patents to
determine where coverage has really been sought. |
Henry H. Murray
ExxonMobil Research and Engineering |
Technical Disclosures: Searching for
Defensive Publications
Much has been written about defensive publications from the legal and
strategic perspective, far less from the perspective of the searcher
charged with finding these publications
Recent changes in practices by database producers and providers
(including the USPTO) have altered the landscape of technical disclosures,
particularly how and where to search for this unique type of publication.
This presentation will give an overview of defensive publications from
the searcher's perspective. The body of the presentation will address
principal sources, unique aspects of the databases, and how to access such
information. Specific examples will be used to illustrate the potential
significance of the technical disclosure. |
Judith Johnson Philipsen
Pfizer Global Research and Development |
Experiences Using The New MMS System
Pfizer Chemical/Patent searchers have routinely used the MMS system via STN Express, but gladly volunteered to participate in the beta-testing of the enhanced MMS system, which is currently accessed only via the Imagination software. In this presentation, we will relate our experiences with installing and using the software and well as compare a search query conducted in both the old and new versions.
|
Robert Austin
FIZ Karlsruhe
|
Comprehensive Biosequence Searching in the Patent
Literature
For patent information professionals who run
biosequencesearches, it is important to understand how comprehensively
various services coversequence data from patent publications. The author
will present a summary of thepatent sequence content of various web-based
public domain resources, contrast themwith the sequence database resources
available via STN, and give advice on search techniques on completing a
thorough sequence based patent search.
|
Ron Kaminecki
Thomson-Dialog
|
Beyond Chemistry-- is Markush Relevant? Or
The Legacy of Eugene Markush: How Claims for Chemical Patents Have Evolved
and Are Now Taken from a Group Consisting of Physics, Electronics and
Business
When Eugene Markush's 1924 patent used a generic method to
claim a family of compounds to produce a pyrazolone dye, no one could
imagine the effect that this would have on worldwide patents outside the
area of chemistry. What was generally considered a way of claiming
structural groups in chemicals has evolved into ways of claiming generic
items in other areas. All of this makes the searching of patents difficult
since the idea of claiming a structural group is accepted in chemistry,
but is not even suspected in other areas. This talk will cover some of the
problems that Markush groups have introduced and strategies on how to use
these groups in non-chemical areas to better refine a search.
|
Roget (Ric) Henschel
Foley & Lardner LLP |
Cherry-picking the prior art: How Patent
Attorneys Use Search Reports
Search reports mainly serve to retrieve prior art disclosures corresponding to limitations of a claim. An attorney can then decide breadth of claims for a patent application and validity of issued claims. If a single reference discloses all limitations of a claim, the reference anticipates the claim. But a reference that appears deficient at first because a claim limitation is missing may anticipate if the missing feature is inherently present. If the prior art suggests a
limitation that is missing from a reference, the claim may be obvious. Obviousness requires a suggestion or motivation to modify what is directly disclosed. Generally, this involves a combination of references. An attorney can piece together individual references that disclose separate features of a claimed invention.
Search reports also serve other functions. For example, a reference may help define the meaning of claim terms, enable (explain how to carry out) disclosures in another reference, or suggestion combining references. A search report can also uncover double patenting, which is purely based on the claims, not the disclosures. Markush structures should be scrutinized for provisos (may be new matter), blaze marks in the specification (for patentability of a species), and overlap due to broad scope.
|
George Gould
Gibbons Del Deo, Dolan, Griffinger & Vecchione |
Patent Law Perspectives On Sequencing And Searching
A historical perspective on the role sequences have played in patents over the last thirty years will be presented. representative examples of peptide protein and polynucleotide sequences in patented invention will be discussed. Recent decisional law in the patent field will be reviewed with its impact on the need for appropriate structural information in patents will be reviewed. Finally the issues relating to search activities on the filing, prosecution, enforcement and opinion work relating to patents will be discussed with emphasis on the need of close coordination between patent professional and search professional during each of these activities. |
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