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Biotech Buzz > Posts > BIOTECH BUZZ, November, 2012
November 27
BIOTECH BUZZ, November, 2012

BIOTECH BUZZ
November, 2012
 

Biotechnology Committee, 2012-13............................................................................................................. 2
Committee Structure.................................................................................................................................. 2
Get Active – Volunteer for a Subcommittee or a Liaison Position..................................................... 3
Programs Subcommittee................................................................................................................................ 3
Two Joint Committee Educational Sessions at the 2012 Annual Meeting......................................... 3
IP Issues in Novel Venture Financing of Biopharmaceutical Development.................................. 3
Antibody Patenting Issues – US and EP............................................................................................... 3
Mid-Winter Institute, Tampa, FL, Thursday, January 31, 2013............................................................ 4
Obtaining Value from IP in Personalized Medicine.......................................................................... 4
Aligning IP Strategies with Business Objectives Up and Down the Supply Chain........................ 4
“Table Topic” Moderators Needed for MWI Lunch Discussions, Thursday, January 31, 2013...... 5
Webinars Subcommittee................................................................................................................................ 5
Patentability of Diagnostic Methods and Biomarkers: A European Perspective, December 18, 12:00 EST/17:00 GMT (free)  5
Reprise of IP Issues in Novel Venture Financing of Biopharmaceutical Development................... 5
Case Law Reports Subcommittee.................................................................................................................. 6
Teva Canada Ltd. v. Pfizer Canada Inc., reported by Patricia Folkins, Andrea Berenbaum and Michael E. Charles, Bereskin & Parr LLP, Toronto, Ontario......................................................................................................................................... 6
Bayer CropScience AG v. Dow AgroSciences LLC, reported by Daniel A. Lev, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Boston, Massachusetts............................................................................................................................... 6
USPTO Relations Subcommittee.................................................................................................................... 6
USPTO Biotechnology & Chemical Partnership Meeting – January 29, 2013.................................. 6
Happy Hour, January 29, 2013................................................................................................................. 6
 
 
Editor: Dan Lev, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Boston Massachusetts US
Associate Editor: Noel Courage, Bereskin & Parr LLP, Toronto, Ontario CA

 

Biotechnology Committee, 2012-13

 

Committee Structure

The Biotechnology Committee carries out its activities through volunteer efforts of members who actively participate, including a Chair (Jim Kelley), a Vice-chair (Carol Nielsen), a Board Liaison (Barbara Fiacco), subcommittee leaders, active subcommittee members, and liaisons between the Biotechnology Committee and other AIPLA committees.

 

Subcommittees are divided into “Strategic” and “Substantive” varieties.  Strategic subcommittees align their objectives with the strategic objectives of AIPLA, namely, Member Services, Global Outreach, Public Education, and Advocacy.  Substantive subcommittees focus on particular subject matter or issues.  See below.
 
 
Subcommittee
Brief Summary
STRATEGIC SUBCOMMITTEES
Member Services
Programs
Plan and conduct Committee programs at each stated AIPLA meeting (MidWnter, Spring, Annual)
Webinars
Plan and conduct webinars (target = 5 or more per year)
Biotech Buzz
Write, edit, and distribute the monthly committee newsletter (Biotech Buzz)
Case Law
Write and edit reviews of relevant cases
USPTO Relations
Attend and report on quarterly BCP meetings at USPTO; comments on USPTO rule-making and other proposals
Microsite
Manage the committee’s AIPLA microsite
New Lawyers (Proposed)
TBD
Regional (Proposed)
TBD
Corporate (Proposed)
TBD
Global Outreach
International Issues
Manage an international biotech IP wiki; gather biotech “intelligence” from around the world; report regularly on developments; participate in advocacy globally
Public Education
Public Education
Develop materials and programs to educate the public about the value and importance of strong IP for the advance of biotechnology; assist AIPLA in responding to misreporting of biotech IP issues
Advocacy
Global Advocacy
Assist AIPLA in determining its position on biotech-related IP issues around the world
SUBSTANTIVE SUBCOMMITTEES
Diagnostic & Gene Patenting
Issues related to patenting genetic materials, diagnostics, personalized medicine; product regulation
Biosimilars
Issues related to the introduction of competing biological products via abbreviated regulatory routes
Tech Transfer & Licensing
Issues related to transferring biotech technology; universities; start-ups; licensing
Plant Biotech
Issues related to patenting plant biotechnology
Biotech Patent Litigation (Proposed)
TBD

 

Get Active – Volunteer for a Subcommittee or a Liaison Position

There are four newly-proposed subcommittees: New Lawyers, Regional, Corporate, and Biotech Patent Litigation subcommittees.  To get these new subcommittees off the ground, we need founding members and leaders.  If you would like to lead or participate in the founding of any of these subcommittees, please send an email to Jim Kelley or Carol Nielsen.
We need new active members for existing subcommittees, particularly so for Case Law, International Issues, and Public Education.  We also need liaisons with the following AIPLA Committees: Professional Programs, IP Practice in Europe, IP Practice in the Far East, Public Education, Food and Drug, Licensing and IP Management, Patent Litigation, New Lawyer, and Corporate Practice.  Liaisons must be members of both the Biotechnology Committee and the other committee.  Liaisons actively participate on both committees and keep both committees informed about issues, plans, programs, opportunities, and developments.  Please let Jim Kelley or Carol Nielsen know how you want to plug in. 
 

Programs Subcommittee

 
Chair
Becton Dickinson
Research Triangle Park, North Carolina US
Nielsen IP Law
Houston, Texas US
Eli Lilly and Company
Indianapolis, Indiana US

Two Joint Committee Educational Sessions at the 2012 Annual Meeting

The Biotech Committee partnered with the Chemical Practice Committee on a 2-hour joint educational session about issues that arise in novel venture capital arrangements that are being used to fund clinical development of biopharmaceuticals.  The panel featured presentations and discussions framed by a hypothetical invention and start-up, which the moderator Tim Meigs introduced.  Cindy Fuchs and Lili Portilla of the National Institute of Health and Translational Research Resources, Joel Nied of LeClairRyan, Mike Warner of Pfizer, and Greg Sieczkiewicz of Flagship Ventures.  Our microsite has the background slides, presentations by NIH, Joel, Mike, Greg and a summary by Kristin Connarn of McDermott Will & Emery LLP.

Antibody Patenting Issues – US and EP

The Biotech Committee held a two-hour, CLE-credited, joint committee session with the IP Practice in Europe Committee relating to patenting therapeutic and diagnostic antibodies.  The program had two panels: (1) a Europe-focused panel featuring Andrew G. Smith of Eli Lilly & Company, Dr. Andreas Huebel of Michalski Hüttermann & Partner, and Louise Holliday of D. Young & Co., LLP; and (2) a US-focused panel featuring Kristi Sawert of the US Patent & Trademark Office, Chris Holman of University of Missouri–Kansas City School of Law, Amy E. Hamilton of Eli Lilly & Company, and Hans Sauer of Biotechnology Industry Organization.  These panelists presented a “Tale of Two Continents.”  However, unlike Charles Dickens’ tale, the present situation for patenting antibodies on these two continents is certainly not “the best of times.”  An audience of 150-175 practitioners remained engaged well beyond the scheduled stopping time of 5:30.  Our microsite has the moderator’s slides, presentations by Andreas, Louise, and Andy, and a report by Jim Kelley.

Mid-Winter Institute, Tampa, FL, Thursday, January 31, 2013

Join us in Tampa Florida on the afternoon of January 31, 2013 for three hours of CLE that the Biotechnology and Chemical Practice Committees have jointly planned.

Obtaining Value from IP in Personalized Medicine

 
Description: Health agencies, payers, patients, and biopharma companies are on the bandwagon for personalized medicine, in which drug therapy is tailored for each patient based on analysis of biomarkers, i.e., genes, proteins, or metabolites. Correlation of therapeutic decisions with biomarkers forms the basis for personalized medicine. Recent patent decisions in the US may call into question the extent to which such correlations may be validly claimed. Business people and in-house lawyers from a very diverse spectrum of entities involved in personalized medicine and diagnostics will provide views about the value of IP for the development of new products and services. 

 

<><> <><> <><> <><> <><> <><>
Moderator
Judy A. Roesler
Roesler Law Offices, PLLC
Cary, NC 27513
Manny Vacchiano
Lead Patent Counsel
Life Technologies
Carlsbad, CA
Yuko Soneoka
Senior Corporate Counsel IP
Genome Health, Inc.
Redwood City, CA
TBD
Patent Counsel
Eli Lilly and Company
Indianapolis, IN
Natalie Wright Curley
Managing Director
Office of Technology Commercialization
MD Anderson Cancer Center
Houston, TX
Jarett Rieger
Director and Associate General Counsel
Office of Technology Mgmt & Commercialization
Moffitt Cancer Center and Research Institute
Tampa, FL

 

 

Aligning IP Strategies with Business Objectives Up and Down the Supply Chain

Description: How does a company’s position in a supply chain affect IP strategies?  How do companies that are suppliers and customers adjust their approaches to IP acquisition and licensing in light of business relationships?  How do companies use IP to obtain value in the marketplace even when their businesses might not be thought of as innovative?  Business people and in-house lawyers along a supply chain will provide views about the value of IP for their businesses. 
<><> <><> <><> <><> <><>
Richard Phillips
Chief Attorney Technology
ExxonMobil Chemical
Baytown, TX
Patrick Bengtsson
VP, Assoc. GC, IP
The Clorox Company
Oakland, CA 94612
Valerie L. Calloway
Chief IP Counsel
Polymer Group, Inc.
Charlotte, NC 28269
Nancy M. Klembus
Assistant General Counsel
Kimberly-Clark, Corp.
Roswell GA 30076
Steven W. Miller [INVITED]
Vice President, General Counsel, IP
Proctor & Gamble
Cincinnati, OH 45202
                

 

“Table Topic” Moderators Needed for MWI Lunch Discussions, Thursday, January 31, 2013

Bill Coughlin of Ford Global Technologies will give the keynote address at lunch on Thursday, January 31, 2013 during the MidWinter Institute in Tampa Florida.  He will address how Ford uses various forms of IP – patents, trademarks, copyrights, trade secrets, licensing, social media, etc. – to build market advantage.  He will discuss prioritization strategies, budget considerations, licensing approaches, litigation, regional variations in IP strategies around the world, enforcement, and managing freedom to operate issues.  
“Table Topic” discussions among attendees will follow his address.  These discussions are meant to prepare attendees for the afternoon “Tracks” that will focus on Media & Entertainment (Track A), on High Tech, Computer & Telecom (Track B), and on Personalized Medicine & Chemical/Consumer Products Supply Chains (Track C).  Volunteers will lead the Table Topic discussions by asking questions and moderating discussion.  We will have more information on the specific topics as the date approaches.  The idea is for each table to have its own moderator. 
The Biotechnology Committee has so far provided three moderators, Robin Chadwick of Schwegman, Lundberg & Woessner, P.A., Kristin Connarn of McDermott Will & Emery LLP, and Debora Plehn-Dujowich of Drinker Biddle.  Yet we need more volunteers.  Please let Jim Kelley or Debora Plehn-Dujowich know if you plan to attend MWI.  This is a wonderful opportunity to help make the MWI a success. 
 

Webinars Subcommittee

 
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Drinker Biddle & Reath LLP
Philadelphia, Pennsylvania US
Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Boston, Massachusetts US

Patentability of Diagnostic Methods and Biomarkers: A European Perspective, December 18, 12:00 EST/17:00 GMT (free)

Please join us for a free Biotech Committee webinar entitled “Patentability of Diagnostic Methods and Biomarkers: A European Perspective” on Tuesday, December 18th at Noon EST, 17:00 UK time.
 
The webinar’s panelists are Oliver Kingsbury from Elkington and Fife, Russell Thom from Murgitroyd & Company, and Ana Suarez-Miles from Eli Lilly and Company.  They will discuss how the European approach to the issue of the patentability of diagnostic methods differs from the US approach and how US attorneys can make sure that an application that is drafted to meet US requirements will also provide the basis for patentable claims in Europe. 
 
We thank Elkington and Fife and Murgitroyd & Company for sponsoring the webinar.
 

Reprise of IP Issues in Novel Venture Financing of Biopharmaceutical Development

The speakers from our 2 hour CLE session on novel venture financing, discussed above, will reprise their presentations in a webinar on a date yet to be determined in 2013.  Debora Plehn-Dujowich is working with AIPLA to obtain CLE credit for the webinar. 

 

Case Law Reports Subcommittee

 
Chair
Bereskin Parr, LLP
Toronto, Ontario CA
Vice Chair
Bradley Arant Boult Cummings LLP
Birmingham, Alabama US

Teva Canada Ltd. v. Pfizer Canada Inc., reported by Patricia Folkins, Andrea Berenbaum and Michael E. Charles, Bereskin & Parr LLP, Toronto, Ontario.

2012 SCC 60 (Nov. 8, 2012) (invalidating Pfizer’s Canadian patent covering Viagra™ for lacking a sufficient disclosure). 

Bayer CropScience AG v. Dow AgroSciences LLC, reported by Daniel A. Lev, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Boston, Massachusetts.

Case No. 10-1045 (D.N.J. Sep. 27, 2012) (granting summary judgment of non-infringement to Dow in view of claim construction of functional term and analyzing written description).  
 

USPTO Relations Subcommittee

 
Co-Chair
Smith, Gambrell & Russell, LLP
Washington DC
Co-Chair
Womble Carlyle Sandridge & Rice PLLC
Tyson’s Corner, Virginia US
Research Triangle Park, North Carolina US
Drinker Biddle & Reath LLP
Washington DC
 

USPTO Biotechnology & Chemical Partnership Meeting – January 29, 2013

The next BCP meeting has been rescheduled for January 29, 2013.  The meeting is expected to be a joint session with the Medical Device group.  For those who cannot attend, there will be a full report of the January BCP meeting in the February 2013 issue of the Biotech Buzz.

Happy Hour, January 29, 2013

There will be a Happy Hour at the Trademark Bar in the Westin Alexandria, 2080 Jamieson Ave., 400 Courthouse Square, Alexandria, VA 22314 (just a couple blocks west of the USPTO) after the BCP Partnership meeting.

 

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