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Boston Patent Law Association Newsletter Serving the BOSTON PATENT LAW New England Intellectual ASSOCIATION NEWSLETTER Property bar Since 1924 May 2005 EDUCATION, SERVICE, COMMUNITY Volume 36, Issue 2 PRESIDENT’S MESSAGE We are already a March. BPLA Seminars included This year the BPLA Board has also quarter of the "Unlocking the Mysteries of Interference undertaken an initiative to review our way through Law and Practice: Part II---Declaration of website, and entertain suggestions for 2005 and plans Interference to Decision" and "IP Due updating and improvement in its design are in full swing Diligence". The Licensing Committee and function. This will be a long term for the Annual also hosted a seminar by Ms. Patricia A. project, which will take many months to Judges Dinner. Martone. Articles covering these events accomplish. At this time we have begun The Dinner will in more detail are in this Newsletter. to review the websites of other similar be held on organizations and consider which Doreen M. Hogle Friday, May 13 at The Boston Patent Law Foundation has features that we would like to the World Trade now completed its registration process incorporate into our new design. Center, Seaport Boulevard, in Boston. and has been officially recognized as a Cocktails begin at 6:00 p.m., with the public charity in the Commonwealth of I am excited that we still attract program and dinner starting at 7:15 p.m. Massachusetts. Registration as a members who are willing to participate at We are very excited to have as our guest charitable foundation allows us to a high level in our organization. The speaker Mr. Peter Gammons, noted continue our mission of education and BPLA officers and Board members are baseball journalist. More information public service to the community by prime examples of those committed to about Mr. Gammons can be found in a hosting programs with speakers from the keep our organization great. But I am separate article in this Newsletter. As Federal Courts, the Patent and also looking for ways to allow more always, we also look forward to honoring Trademark Office and the Copyright members to get involved. Members have the members of the judiciary and having Office. been contacting me to find out how they the opportunity to interact with them in a can be more active in the organization. more relaxed, social environment. We One example of our commitment to these Ideas that have been discussed include will also be hosting our second annual goals is the sponsorship of a grant adding additional seats on the Board of Silent Auction to benefit local charities. awarded to a student at the Governors, new committees, limiting the Items to be auctioned off include concert Massachusetts State Science Fair. This term of committee chairs, and staggering tickets, Red Sox tickets and ski lift year the Fair is being held at MIT on May the terms of committee co-chairs. The tickets. So bring your checkbook and be 6-7. Hundreds of high school students Board has been considering all of these prepared to be generous. from around Massachusetts participate in options, but I'm sure that there are many this Fair, and the projects are truly other ideas out there and we welcome We have held some exciting events in outstanding. BPLA members are invited your suggestions. March and April. The BPLA was active in to visit this year's exhibition and support the Giles S. Rich Memorial Moot Court our future scientists. More information Competition sponsored by the AIPLA in can be found at www.scifair.com. IN THIS ISSUE Annual Dinner for Federal Judiciary.........................................2 Neither Here nor There: Liability for Exterritorial Offers to Sell.......................................................5 IP Due Diligence....................................................................2 Licensing Seminar..................................................................6 Reasonable Royalty Damages After Publication and Before the Patent Issues: Interpretation of Members Who Have Not Yet Paid 2005 Dues...........................7 Provisional Rights Provisions...................................................3 Positions Available.................................................................9 Achieving Global Leadership in the Biotechnology Committees..........................................................................11 Industry................................................................................4 Upcoming Events..................................................................12 Interference Law and Practice Explained Board of Governors...............................................................12 at Seminar............................................................................5 Boston Patent Law Association Newsletter ANNUAL DINNER FOR FEDERAL JUDICIARY - FRIDAY, MAY 13, 2005 By Joseph M. Maraia, Esq. Hamilton, Brook, Smith & Reynolds, P.C. The Boston Patent Law Association Mr. Gammons has been a Major League In 1986, upon his return to Sports (BPLA) is proud to announce its Annual Baseball correspondent on ESPN since Illustrated as a senior writer following a Dinner for the Federal Judiciary. This 1988. Besides working for ESPN, Mr. second stay at the Boston Globe, Mr. year’s dinner will take place at the World Gammons contributes to the Boston Gammons wrote numerous stories Trade Center, Boston, MA on Friday, May Globe and to Baseball America. covering some of baseball's most 13, 2003 from 6:00 PM to 10:00 PM. important news events and authored Mr. Gammons was voted the National “Inside Baseball,” Sports Illustrated's Peter Gammons will Sportswriter of the Year for 1989, 1990 weekly baseball notebook. be the Keynote and 1993 by the National Sportscasters Speaker for the and Sportswriters Association and was Mr. Gammons is also the author of Annual Dinner. Mr. awarded an honorary Pointer Fellow from "Beyond the Sixth Game," a look at free Gammons is a highly Yale University. agency. respected Major League Baseball Mr. Gammons began his career as a The BPLA will also hold its second annual journalist and serves reporter for the Boston Globe in 1969. silent auction to benefit local charities. as a studio analyst He has also worked for Sports Illustrated Last years auction was a tremendous on ESPN’s Baseball covering the National Hockey League, success raising over $6,000 for local area Tonight. college basketball and Major League charities. Baseball (1976-78, 1986-90). We hope to see you all in attendance. IP DUE DILIGENCE by Susan C. Kelly, Ph.D. Hamilton, Brook, Smith & Reynolds, P.C. On Wednesday April 6, 2005 the Boston claims issuing, agreements already in the staff of the Deaconess Hospital in Patent Bar Association held one of its place, or any competitive intellectual Boston. highest attended seminars ever. The property (IP) along with freedom-to- seminar was entitled “IP Due Diligence”, operate should be considered when Dr. Mascioli spoke on “valuation of IP and the guest speakers were Mr. John L. looking at a potential investment. during the due diligence process from a Brooks III of Prism Ventures, Mr. Michael venture capitalist perspective”. Feinstein of Venrock Ventures, Mr. The intellectual property analysis Michael Lytton Esq. of Oxford Bioscience generally is the final part of OBP’s Dr. Mascioli believes that patent Partners, Dr. Ed Mascioli of MPM Capital, investigation into any potential client, applications and issued patents are a and Dr. Christopher Mirabelli of and OBP generally hires outside counsel priority in terms of IP. Trademarks and Healthcare Ventures. The event to carry out any FTO study or copyright are not as important as most moderator was Mr. David E. Brook Esq. patentability study. Mr. Lytton expressed of the drugs they invest in are not yet of Hamilton, Brook, Smith and Reynolds. a preference for a written FTO opinion named. MPM does not in general invest rather than a verbal FTO opinion. Mr. in big pharmaceutical companies and, The first speaker was Mr. Michael Lytton Lytton values outside counsel who therefore, does not always expect, or Esq. Mr. Lytton is a General Partner at evaluate the relative risk, i.e., who will look for, broad blocking patents. Oxford Bioscience Partners (OBP) focus on the key issues or problems. Mr. Instead, they have found that in most (http://www.oxbio.com/) and serves on Lytton, stated that venture capitalists cases they will find “picket fence” the Board of Directors for various (VCs) need to understand the written patents and patent applications covering companies and non-profit organizations. opinion from a business point of view, for the core technology. Dr. Mascioli said example, they will want to fully that due to the time it takes to get a Mr. Lytton spoke on the topic of understand the “power to exclude” as drug on the market, patent term is also “evaluating the risk of infringement of well as the “freedom-to-operate”. of high importance to MPM when they patents (freedom to operate (FTO))”. are looking to invest. The second speaker was Ed Mascioli, According to Mr. Lytton one of the key M.D. Dr. Mascioli is a Principal of MPM The third speaker was Mr. John L. factors in an FTO study is matching the Group (http://www.mpmcapital.com/). Brooks, III. Mr. Brooks is a Co-Founder Intellectual Property (IP) to the business Prior to joining MPM, Dr. Mascioli was a and General Partner of Prism Ventures strategy of a company, in particular, Senior Medical Director at Parexel, an (http://www.prismventure.com/) who whether FTO in a specific area will international clinical research
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