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Patent Information Users Group, Inc.

The International Society for Patent Information Professionals

PIUG 2007 Northeast Conference

Main | Program | Presentations (Members-only) | Workshops | Travel

Monday, October 8 to Wednesday, October 10, 2007

Hyatt Regency New Brunswick
2 Albany Street
New Brunswick, New Jersey, USA 08901
Tel: +1 (732) 873-1234, Fax: +1 (732) 873-1382

Final Program – Tuesday, October 9, 2007

7:15 - 8:15am
Breakfast/Registration
8:15 - 8:25am
Welcome and Introductory Remarks Adrienne Shanler (Wyeth), PIUG 2007 NE Conference Chair
8:25 - 10:25am

Morning Session 1: Panel Discussion
Martin Goffman (SequenceBase Corp.), Organizer and Moderator

Recent Changes to US Patent Law: The Endless Pursuit of the Obvious?
(What do the KSR decision and the recently changed patent laws have to do with me?)

Panelists

Ron Kaminecki (Thomson Scientific)
Rick Neifeld (Neifeld IP Law, PC)
Roy Zimmermann (Medtronic, Inc.)

10:25 - 10:30am
Product Review – Thomson Scientific Bob Stembridge, Manager, Customer Relationsyun
10:30 - 11:00am
Break
 
Morning Session 2: General Presentations A.J. D'Ambra (ExxonMobil Res. & Eng. Co.), 2007 NE Conference Program Chair, Moderator
11:00 - 11:30am
Patent Litigation 101 Richard Matula (Kenyon & Kenyon, LLP)

11:30 - noon
Text Mining and Visualization Tools – Impressions of Emerging Capabilities Cynthia Barcelon Yang*, Yun Yun Yang*, and Lucy Akers
(Bristol-Myers Squibb Pharmaceutical Research Institute)
(* Presenting coauthor)
Noon - 12:05pm
Product Review – TEMIS, Inc. Sean Ali, Strategic Account Manager, Life Sciences
12:05 - 1:30pm
Lunch
1:40 - 3:10pm
Afternoon Session 1: Panel Discussion Zhifu Shu (ExxonMobil Res. & Eng. Co.), Organizer and Moderator

The Art of Searching: Stories from Independent Patent Information Professionals

Panelists

Novelty of Omega-3 Fatty Acids in Beverages Alison Taylor (Threshold Information Inc.)

Validity / Invalidity Searching in the Pharmaceutical and Chemical Field Judy Johnson Philipsen (TPR International)

Freedom-to-Operate Search: HDPE Fuel Tanks Thomas E. Wolff (Wolff Information Consulting LLC)

 

3:10 - 3:15pm
Product Review – GenomeQuest, Inc. Kamalakar Gulukota, Senior Director, Content Development
3:15 - 3:45pm
Break
3:45 - 4:50pm
Afternoon Session 2: General Presentations A.J. D'Ambra, Moderator
3:45 - 4:15pm
The Impact of the New Patent Rules on Patent Practice Rick Neifeld (Neifeld IP Law, PC)

4:15 - 4:45pm
Searching Pharmaceutical Polymer Patents in DWPI Don Walter (Thomson Scientific)
4:45 - 4:50pm
Closing remarks Adrienne Shanler, 2007 NE Conference Chair
4:50 - 6:00pm
Networking, Exhibits, etc.

Meeting Abstracts and Biographies

Panel Discussion: Recent Changes to US Patent Law: The Endless Pursuit of the Obvious?
(What do the KSR decision and the recently changed patent laws have to do with me?)

Abstract

Ron Kaminecki will present a high-level survey of the statutory and case law pertaining to obviousness, starting with the Patent Act of 1952, then Graham v. John Deere (U.S. Supreme Court, 1966), and on to the landmark U.S. Supreme Court decision, KSR v. Teleflex. Ron will then connect this new patent case law to its effects on patent searching. Rick Neifeld will focus on the effect of the KSR decision on his law practice, with real-world anecdotes on KSR's influence on application drafting, prosecution, and advice and counseling. Rick will cover some of KSR's case law in detail. Finally, Roy Zimmermann will "pick apart" recent decisions handed down by the Court of Appeals for the Federal Circuit (CAFC) in which CAFC applied the revised standard for obviousness imposed earlier this year by the Supreme Court in the KSR decision. Roy will also discuss how KSR has dramatically changed our roles as searchers. After the panelists' presentations, they will take questions from the floor.

Panelist Biographies

Ron Kaminecki (Thomson Scientific) rejoined Dialog in 1999 after almost three years at a major pharmaceutical company. Prior to this, Ron held various jobs at Dialog for over nineteen years, including Regional Manager and Senior Staff Advisor. He got his start in searching technical information via manual, online and batch systems at the IIT Research Institute as an Associate Information Specialist.

His current responsibilities at Thomson Scientific include working with various intellectual property groups to help develop new solutions for searching, to collect information from these groups, and to disseminate this knowledge.

Ron has written over thirty articles, book chapters, presentations and papers on various aspects of online searching and information retrieval since 1974, including R&D Management, FreePint.com and the Journal of Chemical Information. He has worked with searchers in the Fortune 500 and in major law firms and patent offices around the world. He has also worked as an expert witness in patent cases.

He is a registered US patent attorney and is a member of the Illinois Bar and of the Bar of the Northern District Court of Illinois. He is a co-author of NISO Standard Z-39.58, "Common Command Language for Online Information Retrieval."

He is a member of the American Bar Association, American Intellectual Property Lawyer's Association, Illinois State Bar Association, Chicago Bar Association, Patent Information User's Group, Special Libraries Association, and is a thirty-two year member of the American Chemical Society.

Ron has a BS in Chemistry; an MS in Computer Science and Information Systems; and a JD with a Certificate in Patent Law.

Dr. Rick Neifeld (Neifeld IP Law, PC) graduated from the University of Rochester with degrees in Physics and Mathematics, and he received a Ph.D. in Physics from Rutgers University in 1986. After working in R & D for the U.S. Army, Rick was hired by the law firm of Oblon, Spivak McClelland, Maier and Neustadt, PC, and began law school at George Washington University in 1990. From 1990 until 2002, Rick worked his way up to partner and deputy head of the Oblon firm's interference section. In 2002, Rick left Oblon and founded Neifeld IP Law, PC, where he has been ever since.

Rick is also a former chair of the Interference Committee of the AIPLA. He is widely published on patent law issues many of which appear on his firm's web site, www.Neifeld.com. He also administers the "patentinterference" Yahoo group list and is a co-founder of the www.patentvaluepredictor.com patent valuation service.

Rick is admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, the United States District Court for the District of Columbia, and the Court of Appeals for the Federal Circuit.

Roy Zimmermann (Medtronic, Inc.) is the Principal Patent Searcher at Medtronic, a leading medical device manufacturer. He has worked for Medtronic's Chief Patent Counsel since 1996 after working in the Medtronic Library for three years. Prior to joining Medtronic, Roy was one of the initial literature searchers hired at Teltech Resource Network in MN. At Teltech, Roy did nearly non-stop literature searches for clients in most industries in the Fortune 500 for five years. Prior to Teltech, Roy ran the research records function at Henkel Corp., formerly General Mills Chemicals, for 8 years.

Patent Litigation 101

Abstract

There are three basic sources, based on two different methodologies, to identify patent litigations in United States District Courts for a given United States granted patent number. Focusing on these two approaches leads to an understanding of why different results might be found and also forms the basis of pointing out improvements that can be made. While these three sources are necessary to use, they are not sufficient to determine a more complete picture of disputes involving a patent.

By Richard Matula
Kenyon & Kenyon, LLP

Biography

Richard Matula is Senior Information Specialist at Kenyon & Kenyon, a New York intellectual property law firm with offices also in Washington, DC, and Silicon Valley. His main function is scientific and technical information retrieval in areas of interest to the firm's clients. Previously he was a Member of the Technical Staff, as an Information Scientist, at Bell Laboratories for about 20 years providing information support to the legal, technical, and scientific communities with a heavy emphasis on inorganic materials. Before Bell Labs, he was Associate Senior Researcher at CINDAS, Center for Information and Numerical Data Analysis and Synthesis, at Purdue University. He has served on information committees for the American Institute of Physics, ASM International, Chemical Abstracts Service, and Questel-Orbit. His undergraduate degree is in Electrical Engineering from New Jersey Institute of Technology. His Ph.D. is in Physics from Purdue University.

Text Mining and Visualization Tools - Impressions of Emerging Capabilities

Abstract

Innovation is the underlying foundation of today's competitive economy and technological advancement. There is a plethora of text mining and visualization tools available on the market to facilitate the innovative process in uncovering "hidden nuggets" of information about emerging technologies.

A high-level overview of some key text mining and visualization tools is presented in this paper to provide a comparison of text mining capabilities, strengths, applicable data sources, and output of results, as applied to chemical, biological and patent information. Examples of tools to be discussed include sophisticated text mining software packages, some simpler full-text searching tools, and a few data visualization tools that could be integrated with the more sophisticated software packages and full-text searching tools. Comments are included on impressions of applicability of these tools to different types of data sources and which user groups can benefit most from these tools.

Cynthia Barcelon Yang*, Yun Yun Yang*, and Lucy Akers
(Bristol-Myers Squibb Pharmaceutical Research Institute)

(* Presenting coauthor)

Biographies

Cynthia S. Barcelon Yang is currently Director of Patent Analysis Group at Bristol-Myers Squibb's Pharmaceutical Research Institute (PRI) Information & Knowledge Integration Informatics. She had worked as a medicinal chemist for 8 years at American Critical Care, purchased by DuPont in 1986. Two years later, she moved to DuPont Central Research & Development Dept. where she worked for more than 10 years at different functional areas supporting multiple business units in various roles, from technical report indexer to literature/patent searcher, to information scientist, engineering information group leader, polymer library supervisor and senior information scientist. She was project leader of several DuPont corporate-wide standardization initiatives (property nomenclature, analytical test methods and TSCA chemical inventory reporting). In 2000, she became the Team Leader of the Patent Information Services Group at the DuPont Pharmaceuticals Company With the acquisition of DuPont Pharmaceuticals Company by Bristol-Myers Squibb in 2001, Cynthia was promoted to Associate Director, Patent Analysis Group and subsequently to her current position in 2004.

Bristol-Myers Squibb in 2001, Cynthia was promoted to Associate Director, Patent Analysis Group and subsequently to her current position in 2004.

Cynthia has been actively involved in PIUG, including co-championing the 2003 PIUG Membership Directory, co-chairing the 2003-2005 Membership Labels Team, chairing the meeting brochures for the 2003 PIUG Northeast Workshop, and updating the PIUG Bibliography webpage since 2000. In May of 2006, Cynthia was presented with a PIUG Special Recognition Award for her dedicated service to the organization. She is currently Fundraising Committee Chair for the 2007 PIUG Annual Conference. Cynthia is also a member of the American Chemical Society and is Bristol-Myers Squibb's delegate to the Patent Documentation Group (PDG).

Cynthia obtained her M.S. degree in Chemistry from Marquette University and M.S. degree in Information and Library Science from Drexel University. She is co-author of 11 scientific publications and several DuPont corporate technical reports. She is also co-inventor of two US pharmaceutical patents and related foreign patents.

Yun Yun Yang is currently a senior patent analyst in the Patent Analysis group in BMS providing patent information support to BMS Legal/Patent Dept. and the cardiovascular drug discovery group. Yun Yun received her Ph.D. in Organic Chemistry from Beijing Normal University and performed her postdoctoral research work in the area of the Central Nervous System at the University of Pennsylvania, School of Medicine. She worked as a chemistry database editor for Current Chemical Reactions® and Index Chemicus® at the Institute for Scientific Information (ISI, now Thomson Scientific) before she joined DuPont Central Patent Information (CPI) group. As information scientist at DuPont, Yun Yun conducted significant patent searches in support of DuPont Legal Dept., polymer business units, and agricultural science research. In 2000, Yun Yun joined the Patent Information Services group in DuPont Pharmaceutical Company which became part of Bristol-Myers Squibb (BMS) in 2001. In addition to her searching function, Yun Yun also leads the initiative to evaluate text mining & visualization tools in the Information & Knowledge Integration (IKI) department. Yun Yun has been actively involved at PIUG, including chairing the meeting books committee at the 2004-2007 PIUG Northeast Workshop. She served as Exhibits Committee Chair for the 2007 PIUG Annual Conference. Yun Yun also leads the initiative to evaluate text mining & visualization tools in the Information & Knowledge Integration (IKI) department. Yun Yun has been actively involved at PIUG, including chairing the meeting books committee at the 2004-2007 PIUG Northeast Workshop. She served as Exhibits Committee Chair for the 2007 PIUG Annual Conference.

Lucy Akers is a U.S. patent agent with a degree in Chemistry. She worked for five years as an independent patent information consultant and has held corporate positions with Shell, ExxonMobil and Nerac, in management, advisory or individual contributor roles. She is currently a senior patent analyst with Bristol-Myers Squibb. Lucy is an instructor in the WON/GO Institute course (certified by the Dutch government) and a past member of the European group on the Certification of Patent Information Professionals (COPS). She served as a member of the Selection Board for the International Patent Information Award. Lucy was the Chair of PIUG Inc. from 2000-2004 and organized the 2001-2003 PIUG Annual Meetings. In May of 2005, Lucy was given a PIUG Special Recognition Award for her dedicated service to the organization. In 2007 Lucy continued her service to PIUG as Co-Chair of the Program Committee of the 2007 Annual Conference.

Panel Discussion: The Art of Searching: Stories from Independent Patent Information Professionals

Novelty of Omega-3 Fatty Acids in Beverages

Abstract

Omega-3 fatty acids, for example, DHA and EPA, have been shown to have beneficial effects on heart and vascular health. These oils are naturally present in oily marine fish such as sardines and mackerel, amongst other sources, and several commercial methods exist to extract and purify such ingredients. However these oils are very oxygen-sensitive and quickly turn rancid and fishy-smelling without careful processing. The client is developing a new method to protect polyunsaturated fatty acids from oxidation and deliver a given dose per serving. They would like to determine if their method has novelty.

Alison Taylor
Threshold Information Inc.

Biography

Alison Taylor, Ph.D., is currently a Scientific and Patent Information Analyst at Threshold Information, Inc., a private search firm service based in the Chicago area. Threshold provides information services for a wide range of clients from large Fortune 100 companies through small, independent businesses. Prior to Threshold, Alison was Manager of the Patent and Chemistry Searchers team for Pharmacia / Monsanto company in Skokie, IL, from 1999-2003. She started with another division of the Monsanto company in 1995 - The Nutrasweet Company - and was Manager of the library at the Mt. Prospect site. She started her scientific career as a bench scientist at Abbott Laboratories in the Molecular Biology group and has a BSc in Biochemistry from the University of Surrey in England and PhD in Microbiology and Molecular Biology from King's College London.

"Validity/Invalidity Searching in the Pharmaceutical and Chemical Field"

Abstract

The purpose of the validity/invalidity/opposition search is to determine if prior art exists, which could invalidate an existing patent or patent application. This type of search is useful to:

  • determine the strength of a patent when setting minimum royalty payments by the licensor
  • determine the value of a potential licensed patent by the licensee
  • invalidate a patent in order to avoid infringement.

Because of the monetary stakes involved, it must be a comprehensive and thorough search of the subject matter, which has been published, or otherwise known, prior to the priority date.

This presentation will deal with personal approaches in conducting a validity search and will provide examples of what efforts are gone through to ferret out information indicating invalidity.

Judy Johnson Philipsen
Technology & Patent Research International, Inc. (TPRI)

Biography

Judy Johnson Philipsen is currently a pharmaceutical and chemical patent searcher with Technology & Patent Research International, Inc. (TPRI) and is a team member of the MMS Helpdesk for Questel.Orbit. She has also instructed the structure searching component of the PERI course on Patent Information for Pharma/Biotechnology, which was last conducted Oct 11-13, 2006. Judy is a member of the American Chemical Society, Chemical Information Division, and the Patent Information Users Group.

Judy began her career as a synthetic chemist in the Medicinal Chemistry Department at Parke-Davis in Ann Arbor, where she was author or co-author of thirty-seven publications and a co-inventor on several patents. She became a chemistry/patent searcher in the Parke-Davis/Warner-Lambert Legal Department in 1989. In 1991, she transferred to the Parke-Davis Research Library and, following mergers with Pfizer and then Pharmacia, assumed the title of Information Manager in the Information Management Department at Pfizer. In addition to her role as a chemical patent searcher, she was Global Coordinator of the SciFinder Program at Pfizer and active in mentoring and training within the global Information Management Department. Judy retired from Pfizer in April, 2006.

"Freedom-to-Operate Search: HDPE Fuel Tanks"

Abstract

A freedom-to-operate (FTO) search seeks to identify patent barriers to the commercialization of products or processes. Because of the importance of the business decisions that may be made on the basis of our work, all the usual steps that searchers carry out in the course of high-quality work take on greater significance with FTO searches. This presentation will highlight best practices to maximize searchers' effectiveness and their clients' "comfort level" with the FTO search report. A case study on manufacture of high-density polyethylene fuel tanks will be used to demonstrate best search practices.

Thomas E. Wolff, Ph.D.
Wolff Information Consulting LLC

Biography

Tom Wolff formed Wolff Information Consulting LLC in 2006. He began is career at Amoco Chemical Company carrying out industrial organic chemistry and catalytic and polymerization development. Tom then moved to the Information Research and Analysis team in 1990 where he continued through the merger with BP and spin-off of the petrochemical and polymer company, Innovene, until its sale to Ineos. Tom works as a patent information specialist and technical advisor on a contract basis. He has a PhD from Stanford University in bioinorganic chemistry, B.S. from the Massachusetts Institute of Technology and is registered patent agent. Additional information is available on the Wolff Info website at www.wolffinfo.com.

The Impact of the New Patent Rules on Patent Practice

Abstract

On August 21, 2007, the Federal Register published final rules entitled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications." 72 FR 46716. On September 7, 2007, the House of Representatives passed "The Patent Reform Act of 2007", H.R. 1908. Similar legislation is pending in the Senate. The new rules impose unprecedented burdens and limitation on patent applicants. H.R. 1908 and the corresponding Senate version, if enacted, would impose further burdens. This presentation reviews important aspects of these changes.

Rick Neifeld
Neifeld IP Law, PC

Biography

Dr. Rick Neifeld graduated from the University of Rochester with degrees in Physics and Mathematics, and he received a Ph.D. in Physics from Rutgers University in 1986. After working in R & D for the U.S. Army, Rick was hired by the law firm of Oblon, Spivak McClelland, Maier and Neustadt, PC, and began law school at George Washington University in 1990. From 1990 untill 2002, Rick worked his way up to partner and deputy head of the Oblon firm's interference section. In 2002, Rick left Oblon and founded Neifeld IP Law, PC, where he has been ever since. Rick is also a former chair of the Interference Committee of the AIPLA.

He is widely published on patent law issues many of which appear on his firm's web site, www.Neifeld.com. He also administers the popular-amongst-interference -practitioners "patentinterference" yahoo group list. He is also a co-founder of the www.patentvaluepredictor.com patent valuation service.

Rick is admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, the United States District Court for the District of Columbia, and the Court of Appeals for the Federal Circuit.

Searching Pharmaceutical Polymer Patents in DWPI

Abstract

The penicillin you took for your last toothache, and most of the medicines you take, are small molecules. However, macromolecules are an important part of the pharmaceutical toolkit, from old standbys like pill coatings to cutting edge therapies like pegylated interferon. This talk will explore some techniques for finding the relevant patents on those and other related areas of interest.

Don Walter
Thomson Scientific

Biography

Don Walter, joined Thomson (then called Derwent) in 1992, where his primary job is to train users on the Derwent World Patents Index. He also conducts searches and analyses fir legal and industrial clients of the Thomson Scientific Search Service, specializing in pharmaceuticals and chemistry. He learned his craft at Exxon Research and Engineering, conducting patent and scientific literature searching for clients in the legal and technical departments. He earned his Ph.D. in chemistry at Yale University. He lives in various airports throughout the world and intersperses his visits to users with visits to his family outside Washington, DC.

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