Posts in MARCH-APRIL 2019
Trade secret strategies for pharmaceutical innovations

Author

Shana K. Cyr, Finnegan, Reston, VA
shana.cyr@finnegan.com
Megan Meyers, Finnegan, Atlanta, GA

Presentation

257th ACS National Meeting - Orlando
Tuesday, April 2, 2019, 10:30am-11:00am
Orange County Convention Center Room W308D
”Trade secret strategies for pharmaceutical innovations”

Abstract

Trade secrets can be a useful alternative to patents when seeking to protect certain pharmaceutical innovations. This presentation will provide a brief overview of trade secret law and give insights into identifying technology suitable for trade secret protection, safeguarding and enforcing trade secrets, and using trade secrets as part of a coordinated intellectual property strategy.


MARCH-APRIL 2019Katie
Post-grant review in Hatch-Waxman litigation

Author

David Weingarten, Finnegan Henderson, Atlanta, GA
M.David.Weingarten@finnegan.com
Katherine Leonard, Finnegan Henderson, Atlanta, GA

Presentation

257th ACS National Meeting - Orlando
Tuesday, April 2, 2019, 10:30am-11:00am
Orange County Convention Center Room W308D
”Post-grant review in Hatch-Waxman litigation”

Abstract

The America Invents Act (AIA) made sweeping changes to the U.S. patent system, including the creation of administrative trial procedures to request review of the patentability of issued patents outside of patent litigation in federal court. Competitors in the pharmaceutical industry have used post-grant review proceedings, such as inter partes review (IPR), before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board to challenge pharmaceutical companies’ patents as an alternative to litigation in federal court. This presentation will provide an overview of post-grant review proceedings, discuss the interplay between such challenges and patent infringement cases, and provide helpful strategies for pharmaceutical companies anticipating concurrent Hatch-Waxman litigation and post-grant review.


MARCH-APRIL 2019Katie
Patent litigation under the Hatch-Waxman Act

Author

Shana K. Cyr, Finnegan, Reston, VA
shana.cyr@finnegan.com

Presentation

257th ACS National Meeting - Orlando
Tuesday, April 2, 2019, 10:00am-10:30am
Orange County Convention Center Room W308D
”Patent litigation under the Hatch-Waxman Act”

Abstract

Whoever without authority makes, uses, offers to sell, sells, or imports into the United States any patented invention infringes the corresponding patent. Pharmaceutical companies generally enforce their patents by filing suit against competitors attempting to copy the innovator’s drug product in federal district court under the provisions of the Hatch-Waxman Act. This presentation will discuss the framework of pharmaceutical patent litigation under the Hatch-Waxman Act, including the patent listing requirements, FDA’s Orange Book, paragraph IV certifications, and the availability of a 30-month regulatory stay.

MARCH-APRIL 2019Katie
Patent prosecution and portfolio management in the pharmaceutical industry

Author

David Weingarten, Finnegan Henderson, Atlanta, GA
M.David.Weingarten@finnegan.com

Presentation

257th ACS National Meeting - Orlando
Tuesday, April 2, 2019, 9:30am-10:00am
Orange County Convention Center Room W308D
”Patent prosecution and portfolio management in the pharmaceutical industry”

Abstract

Pharmaceutical companies maintain a complex patent portfolio aimed at attracting investors and protecting their place in the marketplace. Companies often pursue patent claims for their active ingredients, formulations, and methods of treatment, and strategically align patent filings with their business goals and development of their drug products. This presentation will provide a brief overview of U.S. patent law and give insights into building a valuable patent portfolio. The presentation will also discuss how to best avoid inadvertently forfeiting patent rights, how to draft effective claims, and how to decide when and where to file for patent protection.

MARCH-APRIL 2019Katie
Beyond the bench: Non-traditional careers in chemistry

Author

James Carver, The Carver Law Firm, LLC, Baton Rouge, LA
ACS-Carver@thecarverlawfirm.com,
Sofia Santos, Finnegan LLP, Boston, MA
sofia.santos@finnegan.com
Krista E. Bianco, Finnegan LLP, Washington, DC
rista.bianco@finnegan.com
Katherine Lavoie, The Boston Consulting Group, Boston, MA
klavoie89@gmail.com
,
Judy Cohen, Particle Sciences Inc., Bethlehem, PA
JCohen@particlesciences.com

Presentation

257th ACS National Meeting - Orlando
Monday, April 1, 2019, 2:00pm-4:00pm
Orange County Convention Center Room W308D
”Beyond the bench: Non-traditional careers in chemistry”

Abstract

When you hear the word chemist, you may think bench chemistry and researcher. But being a chemist prepares you for much more than just a laboratory career. Chemistry is an art where analytical thinking, problem solving, research methodology and many other skills are learned and crafted. Those skills are highly valuable in many places outside of the laboratory. In fact, many chemists go on to have careers in a wide variety of industries and types of positions. This symposium is focused on just that. We will have a variety of chemists who have pursued non-traditional careers, i.e., careers outside of typical academic or industry research. We will discuss what their backgrounds are, what their current jobs are, how they came to choose their current careers, and how their background in chemistry provides skills useful for their current careers. The panelists have careers in the areas of business, law and legal support, press, and other areas. The speakers will each provide a brief synopsis of what they do and how they got where they are followed by open question and answers with the audience. If have considered a career outside of the laboratory or are simply interested in what other chemists have gone on to do in non-traditional careers, you won’t want to miss this symposium.

MARCH-APRIL 2019Katie
Post-grant proceedings of bio & pharma patents: A brief overview and analysis of noteworthy cases since implementation of the America Invents Act

Author

Katherine A. Rubino, Caldwell Intellectual Property Law, Boston, MA
katie@caldwellip.com

Presentation

257th ACS National Meeting - Orlando
Monday, April 1, 2019, 11:15am-11:55am
Orange County Convention Center Room W308D
Post-grant proceedings of bio & pharma patents: A brief overview and analysis of noteworthy cases since implementation of the America Invents Act

Abstract

Inter-partes review has become an increasingly popular way to challenge patents, accounting for 92% of all post-grant trials. Inter-partes review was implemented in 2011 as part of the America Invents Act as an alternative to challenge patents in court. Since implementation, bio & pharma patents have been increasingly subjected to these petitions. Discussed in this presentation will be an overview of different strategies behind challenging patents in this way. We will examine the legal implications and considerations when implementing these challenges utilizing recent case studies. In addition, we will discuss strategies for patent holders.

MARCH-APRIL 2019Katie
Strategies for monetization of patent portfolios in chemical fields

Author

Katherine A. Rubino, Caldwell Intellectual Property Law, Boston, MA
katie@caldwellip.com

Presentation

257th ACS National Meeting - Orlando
Monday, April 1, 2019, 10:45am-11:15am
Orange County Convention Center Room W308D
”Strategies for monetization of patent portfolios in chemical fields”

Abstract

More than 3 million patent applications were filed in 2016, an 8.3% increase from 2015. As the number of patents filed worldwide continues to increase, creating a value driven patent portfolio is of utmost importance to maintain a position in the marketplace. Discussed in this presentation will be tips and strategies for monetization of biotech, pharma and life science patents. We will also examine approaches to develop a robust patent portfolio that can be treated as an asset class in and of itself.


MARCH-APRIL 2019Katie
Monitoring Hg emissions from gold shops in Peru: Science vs policy

Author

Adam M. Kiefer, Chemistry Dept., Mercer University, Macon, GA
kiefer_am@mercer.edu

Monica Silva González, Ministerio del Ambiente, Lima, Peru
Caryn S. Seney, Mercer University
Keegan H. Moody, Mercer University
Kazi Hasan, Mercer University
Victoria Blakeman, Mercer University
Lillian Hicks, Mercer University
Danielle Loving, Mercer University
Sumeja Aljic, Mercer University
Craig McMahan, Mercer University
Matthew E. Moore, Mercer University

Presentation

257th ACS National Meeting - Orlando
Monday, April 1, 2019, 10:00am-10:45am
Orange County Convention Center Room W308D
"Monitoring Hg emissions from gold shops in Peru: Science vs policy”

Abstract

Artisanal and Small-scale Gold Mining (ASGM) activities in Madre de Dios, Peru have resulted in widespread deforestation and environmental contamination with mercury. Amalgamation of gold ore concentrated on sluice boxes and the subsequent heating of the amalgam to isolate sponge gold releases large quantities of Hg° into the atmosphere. This problem is compounded by the fact that gold buyers in the region are often located in populated residential areas, burn the amalgams and reheat the sponge gold, releasing mercury vapor directly into the air at street level. For compliance with the Minamata Convention, monitoring and estimation of Hg emissions is essential. Peru requested the assistance of Mercer University to perform a preliminary assessment to quantify Hg emissions in ASGM areas. As a result, a study was organized to preliminarily quantify Hg emissions from gold shops. During October of 2017 and May of 2018, the location of gold shops and point sources of Hg° contamination throughout the city of Laberinto were mapped using a Lumex RA-915M AAS coupled with a GPS unit. The Peruvian standard norm establishes that total gaseous mercury (TGM) concentrations do not exceed an average of 2,000 ng/m3 over 24 hours. However, concentrations of Hg° in and around these gold shops often exceeded 2,000,000 ng/m3. While these concentrations far exceed the national air quality standard for total gaseous mercury (TGM) in Peru, the spectrometer used to measure these concentrations only monitors Hg° - one component of TGM. Because the standard norm requires TGM measurements, the data collected cannot be used for assessment purposes. The findings of the present study demonstrate 1) the need for a more specific environmental assessment of ASGM communities based on Hg° vapor as opposed to TGM and 2) the need for development of a correction factor for Hg° measurements to estimate TGM. Currently, protocols are being developed to define guidelines for monitoring airborne Hg concentrations throughout Peru including ASGM areas.

MARCH-APRIL 2019Katie
Strengthening your future patent rights in light of recent Federal Circuit court and USPTO decisions

Author

Xavier Pillai
Leydig Voit Mayer Ltd, Chicago, IL
xpillai@leydig.com

Presentation

257th ACS National Meeting - Orlando
Sunday, March 31, 2019, 2:00PM-3:30PM
Orange County Convention Center Room W308D
"Strengthening your future patent rights in light of recent Federal Circuit court and USPTO decisions”

Abstract

Chemical and pharmaceutical companies invest enormous amounts of money and inventor hours to discover and develop new materials such as drugs and processes for making them, as well as other inventions. Such companies also attempt to protect their inventions by securing patents. Success of these inventions in the marketplace depends on a number of factors, the foremost of which being the strength of the patents obtained to protect them. These patents are expected to protect the vast investment of money and time in creating these inventions, and the product market share, for the next nearly twenty years. However, competitors will try to undermine the value of the inventions by challenging the strength of the patents, including their validity and coverage by the patent claims of their own products, in a court of law. Recently, many seemingly strong and valuable patents have been invalidated or narrowly viewed and found not infringed. Recent court and Patent Trial and Appeal Board decisions reinforce the axiom that every word that goes into describing the invention in a patent application must be chosen with extreme care.This session will provide insights into how to reduce the chances of losing in a battle against an infringer, including practical pointers on how to write winning patent applications.

MARCH-APRIL 2019Katie