Announcement Description

On behalf of the Newsletter Subcommittee, this is a call for submissions for the 2018 Spring Chemical Practice Committee Newsletter to be published in May 2018.

We are looking for news and information concerning upcoming events, summaries of legal decisions, articles, and any other information that may be relevant to our committee members. Please send your contributions to Dolly Kao (; +1 (416) 509-7447) by no later than ***April 14, 2018***.  If you have any questions, please contact Dolly Kao and/or Jenny Lee (; 212-619-6000, ext. 205).

For additional information, please see the Chemical Practice Commmittee's Newsletter Subcommittee Page:​


The USPTO is hosting its first Technology Center 1700 Customer Partnership meeting on March 20, 2018.  For more information, please see:​


Past Presidents of AIPLA, Sharon Israel and Meg Boulware, will speak on March 6, 2018 at the next general meeting of the Intellectual Property Student Organization at University of Houston. 

These AIPLA Past Presidents will speak to the benefits of membership in AIPLA for students, patent agents and lawyers, as well as the impact and value AIPLA as an organization has had on each of their legal careers in Intellectual Property law.

Presented by AIPLA Law Students and Chemical Practice Committees with the Intellectual Property Student Organization​ at University of Houston.

For more information, please see:​

2018 AIPLA Spring Meeting, Westin Seattle, Seattle Washington​

Wednesday, May 16, 2018 from 3:30 - 5:30 PM

Chemical Practice / Patent Agents Committees Joint CLE Educational Session

Welcome to The Machine: The Impact of The Application of Computational Techniques and Artificial Intelligence to The Chemical Arts

Part I: The Current State of the Technical Art of Computational Chemistry, Virtual Reactors and Simulated Biological Systems

Part II: Invention and Inventorship Using AI:  What is the “Invention,” When Does It Occur, and Who Owns It?

Part III: AI and Patentability - Understanding the Relationship Between Patent Eligibility, Predictability vs. Obviousness, Enablement and Written Description in the Chemical Arts

Part IV: The Challenges of AI Inventions:  A Moderated Panel Discussion

For additional details, please see the Chemical Practice Professional Programs Subcommittee Page.​
Attention “In-House Counsel” members of the AIPLA Chemical Practice Committee: 
Join us live or via webinar on May 15, 2018 at 7:00 AM PDT. 

At the Spring Meeting, on Tuesday May 15 from 7 to 9 am at the Corporate Committee Breakfast Meeting, our vice chair of the Chemical Practice Committee, Roy Issac, counsel for Allergan, will be presenting.  Roy will provide a committee update and his own perspective on the state of chemical patent practice.  For corporate in-house counsel, this breakfast is truly a great opportunity for you to network with other corporate intellectual property leaders.

For additional details and registration information, please see the Chemical Practice Committee Activities Page​.​

Our committee has been asked to provide its input regarding the USPTO’s recent Request for Comments on Determining Whether a Claim Element is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility.  A copy of the Federal Register notice may be found

Please contact Jenny Lee ( by MONDAY, JUNE 11 if you are interested in working on behalf of the Chemical Practice Committee to provide comments regarding this new USPTO memo regarding the Berkheimer decision and proposed rules relating to Step 2B of the Supreme Court’s subject matter eligibility test. 


Japanese Law Update -- provided by ​Kawaguti & Partners, Japan​

A bill of an amendment of the Japanese Patent Law was passed on May 23, 2018, and the Amended Patent Law was promulgated on May 30, 2018.​  Certain portions become effective as of June 9, 2018.

Please see our International Education Subcommittee Page for more information​


The AIPLA Chemical Practice Committee is pleased to present this free webinar on how to address the application of Restriction Requirements to Markush groups.

The link to the recording of the webinar is below. You will need to complete a brief registration form (including your AIPLA member number) to access the recording:

Restriction Requirements are expressly prohibited within a Markush claim.  Yet, the USPTO keeps issuing them.  During this webinar, Bob Titus (Eli Lilly) and Brian Lathrop (Drinker) will discuss the following:

• The Unique Problems Markush Groups Present During Examination

• The Tension Between Restriction and Election-of-Species Requirements

• The New Unity of Invention Rejection

• Examination and Prosecution—Practical Problems With Markush Claims

• Proposed Alternative Approaches

• Strategic Considerations

There will be no CLE credit for this free webinar.
Title: Restriction of Markush Claims: Theory and Reality
Date: Tuesday, April 3, 2012
Time: 12:00 PM - 1:00 PM EDT


​Applications of Isotope-Ratio Technology in Pharmaceutical & Biopharmaceutical IP Protection

The AIPLA Chemical Practice Committee is pleased to present this free webinar on how to detect patent infringement and non-infringement using isotope testing.

The link to the recording of the webinar is below. You will need to complete a brief registration form (including your AIPLA member number) to access the recording:

Click here to view the webinar.

We all know that the infringement of patent claims is difficult to detect and even more difficult to prove.  In this webinar, Dr. Albert Lee and Ms. Ila Sharma of Chemir- EAG and Dr. John Jasper of Molecular Isotope Technologies (MIT LLC) will discuss how isotopes of compounds can be analyzed to determine how a compound was made and in which country.  Also, Mr. Dean Eyler, Principal at Gray Plant Mooty and Mr. Martin Pavane, Vice Chair of the Intellectual Property Group at Cozen O’Connor will discuss how to get data admitted at trial and prove infringement.  Listen to this webinar, and get ready to enforce your patent claims!



​Thursday, January 30, 2014

3:30-4:30 “Committee Expo—A World’s Fair of IP” - join us at the Chemistry booth to welcome new and existing members and present the committee to the rest of the conference.  We will have a trivia game at the booth with questions provided by our members that relate to chemistry or chemical patent law.

4:30-5:30 Committee meeting to discuss committee business.


If you would like to present an AIPLA chemical practice webinar, please contact Kim Choate at for more information.​


Members of the AIPLA chemical practice group can now view the webinar "Predictability in Solid State Chemistry and Patents" by following the link below:



​STRANGLEHOLD!  Written Description and Functional Claiming in the Chemical and Biotech Arts 

January 7, 2016 - 12:30 - 2:00 pm Eastern (signup)

Functional claiming might provide broad claim coverage in the chemical and biotech arts and help overcome 101 ineligibility rejections, but functional claims are inherently vulnerable to invalidity challenges for lack of written description support. In this webinar we will evaluate recent case law on written description and whether functional claiming is worth the risk for various chemical and biotech patent claims.


​Dear Chemical Practice Committee Member:
On October 4, 2015, Ministers of the 12 Trans-Pacific Partnership (TPP) countries – Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam – announced conclusion of their negotiations which resulted in an agreement designed to promote economic growth; support the creation and retention of jobs; enhance innovation, productivity and competitiveness; raise living standards; reduce poverty in our countries; and promote transparency, good governance, and enhanced labor and environmental protections.  The Trans-Pacific Partnership endeavors to provide a new standard for global trade while taking up next-generation issues.  Features of the agreement include the elimination or reduction of tariff and non-tariff barriers across substantially all trade in goods and services.
The AIPLA Chemical Practice Committee has been asked to review provisions of the TPP treaty for impact on intellectual property rights and specifically provide comments to Section F, Subsection B of Chapter 18 of the Trans Pacific Partnership (TPP) Treaty entitled “Measures Relating to Agricultural Chemical Products.”  This section is directed to the protection of data submitted for marketing approval of agricultural products such as pesticides.  The Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA) provides a parallel data protection provision in section 3(c)(1)(F)(i).  A link to the treaty is provided below.
A link to the TPP text is here:
A link to FIFRA can be found here:
Should you have any comments that you would like to share regarding the measures relating to agricultural chemical products, please send them via email to Carol Nielsen and Roy Issac no later than January 8, 2016.
Thank you in advance for your time and considerations.
Happy New Year.
Carol Nielsen
Chair, AIPLA Chemical Practice Committee
Roy Issac
Vice Chair, AIPLA Chemical Practice Committee

This is a call for submissions for the 2018 Fall Chemical Practice Committee Newsletter to be published on or about October 1, 2018. 

We are looking for news and information concerning upcoming events, summaries of legal decisions, articles, and any other information that may be relevant to our committee members, as well as suggestions for topics for articles. Please send your suggestions and/or contributions to Dolly Kao (; +1 (416) 509-7447) by no later than ***September 5, 2018***. 

If you have any questions, please contact Dolly Kao and/or Jenny Lee (; 212-619-6000, ext. 205).​

The Spring 2018 issue of the AIPLA Chemical Practice Chronicles is now available online. 

For additional information about the AIPLA Chemical Practice Chronicles, please see the Chemical Practice Committee's Newsletter Subcommittee Page.

2018 AIPLA Annual Meeting, Washington D.C.
Friday, October 26, 2018 from 3:30 - 5:30 PM

Chemical Practice, Emerging Technologies and Electronics and Computer Law Committees Joint CLE Educational Session

Powering Our Future with the Future of Power: Emerging Trends in Charging Technologies

This session will address electrical energy storage technologies and related IP legal issues.

For additional details, please see the Chemical Practice Professional Programs Subcommittee Page.