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Boston Patent Law Association Newsletter BOSTON PATENT LAW ASSOCIATION NEWSLETTER Spring 2012 EDUCATION, SERVICE, COMMUNITY Volume 43, Issue 2 In This Issue President’s Message President’s Message…...…….….1 Moot Court Competition...…....….3 Supreme Court Decision on Prometheus.…..…..4 By Neil Ferraro, Esq., Wolf, Greenfield & Sacks Invented Here………………….…7 Annual Dinner…………………….8 The Boston Patent Law Association Pro Bono Corner…………………9 has had a very busy winter, and I would like to recognize the efforts of Canadian and European Patent those members who have Experiences ………...…….…..11 contributed their time and talent to organize and conduct events and Top Ten TTAB Decisions……....13 thank those members who have President Neil Ferraro Job Opportunities……………….17 attended them. As you know, the BPLA has Office reach its goal of attracting and Upcoming Events submitted comments to the Patent retaining quality examiners. Friday, June 8, 2012 Office in support of the greater Annual Dinner in Honor of the Boston area as the Patent Office ’ s But our competition is stiff. Many Federal Judiciary choice for a satellite office. The other cities have thrown their hats in Boston Harbor Hotel BPLA Task Force, under the the ring, including Denver, Las direction of Mark Solomon, continues Vegas, Atlanta, Silicon Valley, Boise, Tuesday, June 19, to work with the PTO, the New Orleans, Research Triangle, Bio Tech Pharma IP Forum : Massachusetts congressional Austin, Portland, and Seattle. We Current Issues delegation, the governor ’s and remain confident that the choice is mayor ’ s offices, other state and clear: the Patent Office should select RED SOX SUMMER OUTING local officials, and industry the greater Boston area for its Friday, June 22, 2012 , organizations to raise awareness as cultural benefits, lifestyle 7:10 pm to the advantages a Boston area advantages, proximity to high quality Boston Red Sox vs. Atlanta satellite office affords. Mark and I educational institutions, and its Braves | Watch for Details also recently met with Congressman emergence as the premier innovation Lamar Smith, Chair of the House hub on the East Coast. Friday, July 13, Judiciary Committee, and co-sponsor Monthly Meeting, Bio Tech of the AIA, to highlight the qualities We are very pleased to host the Case Law Club our region offers to help the Patent annual Judges Dinner this year at the (Continued on page 2) Spring 2012 BPLA NEWSLETTER Volume 43, Issue 2 President ’ s Message (Continued from page 1) month from among committee mem- The Patent Office Practice Com- bers on a voluntary basis. June 8. Please mark your calen- mittee, co-chaired by Nicole Palmer and Emily Whelan, hosted dars as we gather again to honor The Antitrust Committee co-chairs, a reception for the U.S. Patent Of- the Federal Judiciary and, in par- John Pint and Benjamin Stern, or- fice ’ s AIA Road Show held at the ticular, the Honorable Magistrate ganized a roundtable discussion on Boston Public Library on March 5. Judge Marianne Bowler, who will March 16 entitled “ Pay-for-Delay The Patent Office explained its receive this year ’ s Public Service Settlements for Pharmaceuticals. ” proposed rules for various new Award. We also have a not-to-be- The featured guest speaker, Aaron provisions required under the AIA, missed keynote speaker, MIT Pro- Kesselheim, co-authored the article including supplemental examina- fessor Hugh Herr, renowned as an of the same title in the October 13, tion, inter partes review and post athlete, scientist, innovator, and 2011 issue of the New England Jour- grant review. The event was at- futurist. I look forward to seeing nal of Medicine. you there. tended by David Kappos, James Donald Smith, Chief Administrative The New Lawyers and Law Students On June 22, the BPLA will have its Patent Judge of the BPAI, and Committee, co-chaired by Michael annual Night at Fenway when our Janet Gongola, Patent Reform Co- Carbonello and Reza Sadr, held a beloved Sox host the Atlanta ordinator for the Office of the Un- luncheon seminar titled, “ H ow to Braves. Keep an eye out for addi- der Secretary. Succeed as an IP Attorney: What tional information from our Activities Law School Does Not Teach You. ” Chair, Daniel Young. It ’ s also not The Patent Office Practice Com- The panelists, which included BPLA too early to mark your calendars mittee also hosted a roundtable members Michael Bergman, Maria for our Annual Meeting on lunch to solicit feedback regarding Eliseeva, Rachel Emsley, Julia Wednesday, December 12. We the proposed rules for the Post- Mathis, and Oliver Strimpel, provided are thrilled to have David Kappos, Grant Review Proceedings under insight for new lawyers and law stu- Under Secretary of Commerce for the AIA. Based on the feedback, dents based on their years of experi- Intellectual Property and Director the committee has prepared com- ence. of the U.S. Patent Office, as the ments and submitted them to the keynote speaker. Patent Office. Co-chairs Susan Glovsky and Ian Liu of the Contested Matters Committee hosted a seminar in March to dis- The 39th Annual Giles Rich Moot The Biotech Committee, co- cuss the Patent Office ’ s proposed Court competition took place last chaired by Leslie Meyer-Leon, rules regarding inter partes review, month. Finals were held on Sun- Konstantin Linnik, Bo Han, and Post Grant Review, and Derivation day, March 18 at Suffolk Law Jennifer Zarutskie Sieczkiewicz, is Proceedings. School and two finalist teams will hosting monthly meetings of the Biotech Case Law Club, which will go on to the nationals. Co-chairs The BPLA is again co-sponsoring the include discussions of current IP Josh Dalton and Betsy Burkhard Invented Here! Program, a joint cases in the life sciences sector. organized the event and partici- collaboration between the BPLA Discussion leaders will rotate each pated in the judging. (Continued on page 3) Members on the Move Do you have a new job? Made a lateral move lately? Been promoted? Omni Law Group, LLP Our new address is: Three Burlington Woods, Suite 203 We want to hear about your news. Burlington, Massachusetts 01803-4532 Please send your job-related news to: phone: 617-994-4900; fax: 617-742-7774 e-mail: [email protected] [email protected] We look forward to serving you at our new location! 2 2 Spring 2012 BPLA NEWSLETTER Volume 43, Issue 2 President ’ s Message organizing an event deserve our Minnesota Law School ’ s Wes (Continued from page 2) appreciation. I encourage others Schwie and Rob Pittelkow, with the and the Museum of Science that get involved as well. It is a reward- Brooklyn team coming out on top. honors New England ’s newest ing opportunity, and you will benefit The BPLA would like to thank all and most innovative technologies. from working with a great group of those who volunteered their time Thanks go to members Mark Solo- people. ◊ and energy to judging briefs and to mon, Rory Pfeiffer, Aaron Connor, judging oral arguments. ◊ Michael Carbonello, and Reza Northeast Regional of the Sadr for their support of this pro- 39th Annual Giles Suther- gram. land Rich Memorial Moot Court Competition Last but not least, I am pleased to announce the formation of a new Joshua Dalton, Patent Agents and Technical Spe- Bingham McCutchen cialists Committee aimed at ad- dressing the unique needs of an important subset of our member- Pictured, Left to Right: Robert Levine The Northeast Regional of the 39th (Brooklyn Law), Stephen Popernick ship. Committee members range (Brooklyn Law), Josh Dalton (Co-Chair, Annual Giles Sutherland Rich Me- BPLA Moot Court Committee), Wes Schwie from technical specialists entering (U of MN Law), Rob Pittelkow (U of MN morial Moot Court Competition took Law). the field of patent law to career place last month at Suffolk Univer- patent agents. Chaired by Cristin sity Law School. The event is spon- Berkey, the Committee will create sored by the BPLA and adminis- seminars and roundtable discus- ANNOUNCEMENT tered by the BPLA ’s Moot Court sions on topics such as issues in Social Media Update Committee ( Co-Chairs Elizabeth patent law, patent office practice, The BPLA’s web presence is Burkhard of Holland and Knight and expanding! professional development, and Josh Dalton of Bingham areas pertinent to non-attorney On April 16, 2012, the BPLA McCutchen ). Seventeen teams officially rolled out its new practitioners. The Committee will competed on Friday, March 16. The LinkedIn group. Subgroups are also collaborate with other BPLA provided for each of the top four advanced to semi-finals on current standing committees committees, including the New Saturday, with the top two winning and provide a new format for Lawyers and Law Students Com- our membership to communi- the right to compete at the national cate events and share ideas. mittee. competition as well as in the finals In addition, a BPLA Wikipedia on Sunday. I have no doubt there will be many page has been created. Mem- more enlightening seminars and bers are encouraged to visit This year ’s finals pitted Brooklyn Law the site and expand its programs to come this year. content. School ’s Robert Levine and Stephen Those members who have Popernick against the University of http://en.wikipedia.org/wiki/ Boston_Patent_Law_Association contributed as a panelist or in 3 3 Spring 2012 BPLA NEWSLETTER Volume 43, Issue 2 Supreme Court Issues Decision on Patent Eligible Subject Matter on Prometheus Case Leslie A. McDonnell Finnegan, Henderson, Farabow, Garrett & Dunner, LLP In a surprising reversal of the Federal Circuit, which of 6-thioguanine for a patient by administering a 6- twice upheld the patentability of claims to a method of thioguanine pro-drug and measuring the amount of 6- optimizing the therapeutic efficacy of a drug treatment thioguanine in the patient, wherein an amount above a regimen, the U.S.
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