[Asis-l] 2004 Northeast Patent Information Users Group Workshop -- Oct. 12 th at Woodbridge Hilton Hotel in Iselin NJ.

[Pfennig, Jessica A]

Hello,

The Patent Information Users Group (PIUG) is hosting a workshop for patent
information professional at the Woodbridge Hilton Hotel in Iselin NJ on Oct.
12th. 

The agenda for the event is provided below along with registration
information.

Please contact me directly if you need additional information regarding the
workshop.

Jessica Pfennig
302-886-4951

********************Meeting Program***************************
7:30-8:30am	
Registration		

8:30-9:15am	
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 am
Technical Disclosures: Searching for Defensive Publications	
Henry H. Murray, ExxonMobil Research and Engineering

10:00-10:30am	
break		

10:30-11:15am
Experiences using the New MMS System
Judith Johnson Philipsen,  Pfizer Global Research and Development

11:15-12:00pm	
Comprehensive biosequence searching in the patent literature	
Robert Austin,  FIZ Karlsruhe

12:00-1:30pm	
lunch		

1:30-2:15pm	
Beyond Chemistry: Is Markush Relevant?	
Ron Kaminecki, Dialog

2:15-3:00pm
Cherry-picking the prior art:  How patent attorneys use search reports
Roget (Ric) Henschel, Foley & Lardner LLP

3:00-3:30 pm	
break		

3:30-4:15pm
Patent Law Perspectives On Sequencing And Searching
George Gould of Gibbons, Del Deo, Dolan, Griffinger & Vecchione

4:15-5:15pm	
Ice Cream Social		

ABSTRACTS
1.  But Where Do They Mean It?  Determining the Extent of Patent
Coverage for a Set of Patents

Donald Walter (speaker), Thomson Derwent NA
Robert Austin, FIZ Fachinformationszentrum Karlsruhe

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.  


2.  Technical Disclosures: Searching for Defensive Publications
Henry H. Murray, ExxonMobil Research and Engineering

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.

3.  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 
Ron Kaminecki, Dialog

Abstract:  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. 

4.  Experiences Using The New MMS System
Judith Johnson Philipsen, Pfizer Global Research and Development

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.  

5.  Comprehensive biosequence searching in the patent literature
Robert Austin, FIZ Karlsruhe

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.  

6.  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 
Ron Kaminecki, Dialog

Abstract:  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. 

7.  Cherry-picking the prior art:  How patent attorneys use search
reports
Roget (Ric) Henschel, Foley & Lardner LLP 

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.

8.  Patent Law Perspectives On Sequencing And Searching
George Gould, Gibbons, Del Deo, Dolan, Griffinger & Vecchione
 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.

*********REGISTRATION******************
Please register at -- http://www.piug.org/NorthEast/2004/ne04meet.html

Hotel reservations -- please state that you are with the PIUG Workshop for
the reduced room rates:
Hilton Woodbridge 
120 Wood Avenue South
Iselin, NJ 08830
(732) 494-6200
<http://www.hiltonwoodbridge.com/> 

**************Sponsorship***********************************

Generous sponsorship from:
*****GOLD*****
BizInt Solutions
Chemical Abstracts
Technical & Patent Research Intl
Thomson Scientific
*****Silver******
Search Technology
*****Bronze*****
FIZ Karlsruhe
Gene-IT
Questel-Orbit

**************************Pre-and Post Workshops************

The vendors and database producers are setting them up and
people will need to register with them, not with PIUG.

Monday, October 11, 2004

12:30-3:30
INPADOC on STN Workshop
Registration:
http://www.stn-international.com/training_center/workshops/inpadoc_ws.html

Robert Austin
FIZ Karlsruhe
Tel: 609 333 1466
Fax: 609 333 8838
www.fiz-k.com 

1:00-5:00 pm
MMS Training
Peter F. Rusch
Electronic Information Consultant
Tel/Fax  +650-961-8120
email: PFRusch at aol.com  

Wednesday, October 13, 2004

STN Patent Forum, 9:00 am-4:00 pm (being planned)