BOSTON PATENT LAW ASSOCIATION NEWSLETTER
Winter 2011 EDUCATION, SERVICE, COMMUNITY Volume 42, Issue 1
In This Issue President’s Message
President’s Message…...……….1
Membership Renewal.…..…...….2
USPTO Appoints New Deputy By Grant Houston, Esq., Director …………………...….….2 Houston Eliseeva, LLP Another Shot at Patent Reform: The Patent Reform Act of 2011…………..………..…….…..4 The New Year has brought many Invented Here! – Update on the Collaboration between the challenges. Simply getting to Museum of Science and the BPLA………………...………..….7 work these days is an epic battle with the unprecedented snows 2010 Annual Meeting………...... 10 President Grant Houston that we have seen. That said, the Job Opportunities……….……....12 nation's economic outlook appears to be brightening. Seattle Mariners. We hope this will be another fun night for Upcoming Events The New Year for the Boston members and their families to Patent Law Association looks kick back and enjoy one of Wednesday, March 23 equally optimistic. Our annual Boston’s favorite past times. China's Medical Device Judges Dinner is planned for Additionally, sixteen volunteers Market June 10, 2011. As usual, it will from the membership were be held at the John Joseph submitted to the Massachusetts Friday, April 29 Moakley Courthouse. If the Life Sciences Center to function The TTAB Comes to weather cooperates, we will have as peer reviewers in the Boston an outdoor reception followed by Massachusetts Life Sciences Friday, July 22 a dinner in the atrium. Center Small Business Matching Save the Date! -- BPLA Additionally, we have several Grant (SBMG) Program. This Teams Up (again) with seminars planned for March. provides funding to match federal the Boston Red Sox at small business grants for early- the Summer Outing The summer outing will take stage life sciences companies in
place on July 22, 2011, when the Massachusetts. $3 million will be Save The Date! Boston Red Sox take on the (Continued on page 3) Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1
Membership Renewal
This is a reminder that renewal fees for the 2011 If you have forgotten your password, enter your BPLA membership is underway. This is a username (i.e., FirstnameLastname) and a reminder that renewal fees for the 2011 BPLA password reset email will be sent to you. Please membership can now be paid. remember to check your spam, as many emails
from the new website are Attorney Member $115 being blocked. Non-Attorney Member $105
It is also possible to pay by mail, as in the past. A Members wishing to renew their membership for renewal form can be printed from the website. 2010 can do so on-line at www.bpla.org. The on- Please complete the form and mail it to the line payment option is made available using credit following address, along with a check made card payment. Pay Pal is no longer required. payable to the Boston Patent Law Association: Once your payment is received, your membership status will be automatically updated for the BPLA Treasurer membership year. You will also receive One Batterymarch Park, a statement itemizing your transaction. Suite 101
Quincy, MA 02169 Please visit the BPLA website and click on the Member Login tab. Enter you username as FirstnameLastname .
USPTO Appoints New Deputy Director
By Donna Meuth, Esq., Eisai Inc.
Teresa Stanek Rea has been appointed the new Doane Swecker & Mathis LLP, both in Deputy Director of the USPTO. Ms. Rea will fill Alexandria, VA. Ms. Rea also is a Past President the position recently vacated by Sharon Barner, of the American Intellectual Property Law who returned to private practice after her time in Association (AIPLA), having served as President the position. Ms. Rea is a patent attorney, whose in 2008-2009. practice focuses on biotechnology, chemistry and pharmaceutical arts. Ms. Rea was most recently With this appointment, the team leading the a partner Crowell & Moring LLP in Washington, USPTO continues to include people with years of DC. Prior to that, Ms. Rea had been a partner at experience in intellectual property. Best of luck to Buchanan Ingersoll & Rooney PC and Burns Director Kappos and Deputy Director Rea as they lead the USPTO through challenging times. ◊ 2 2 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Save the Date!
The Trademark trial and Appeals Board comes to Boston
Sponsored by the Trademark Committee of The Boston Patent Law Association
The Trademark Trial and Appeal Board returns to the Hub to conduct a final hearing in a TTAB proceeding, preceded by a presentation on trademark ownership issues by Pamela Chestek and a review of TTAB rules and ACR practice by TTAB Judge Mermelstein, and followed by commentary and discussion from a panel of distinguished lawyers.
Schedule of Events: 12:30 -1:00 -- Registration 1:00 – 1:15 -- Introduction and Welcome: Susan Montgomery and John Welch 1:15 – 1:45 -- Pamela Chestek on Trademark Ownership Issue 1:45 – 2:15 -- Judge David Mermelstein on TTAB Rules and Accelerated Case Resolution 2:15 – 2:30 -- Intermission 2:30 – 3:30 -- TTAB Final Hearing 3:30 – 4:30 -- Panel Discussion on TTAB Practice and Procedure: Moderator: Mark Robins Panelists: Julia Huston, Larry Robins, John L. Welch 4:30 – 5:30 -- Reception with the Judges, Panelists and Speakers
Registration Fee: $100 BPLA Members, $125 Non-Members, Free for students currently enrolled in law school
For inquires about the event or to add yourself to our email list, please contact [email protected] .
President’s Message the planning stages for this year. I encourage (Continued from page 1) everyone to remain actively involved with the BPLA, and to reach out to the Board of made available for the program in this round. Governors and the Committee Chairs with any comments or suggestions. I look forward to Finally, our committees, which are the backbone another exciting year and I thank you for giving of this organization, have many other events in me the opportunity to serve the BPLA. ◊
Members on the Move Do you have a new job? Made a lateral move lately? Been promoted? David A. Rardin was recently elected a member of the Vern Maine & Associates. We want to hear about your news. Please send your job-related news to: Duane H. Dreger and James A. Blanchette were recently made partner at Cesari and McKenna, LLP [email protected] 3 3 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1
Another Shot at Patent Reform: The Patent Reform Act of 2011
By Joseph M. Maraia and Christopher E. Everett
Senator Senator Patrick Leahy unanimous consent. The Patent world. Inventors would have a from Vermont and eight other Reform Act of 2011 includes one year grace period from a Senators are trying for Patent several key provisions that, if public disclosure by the inventor Reform again in 2011. The enacted, could affect patent or by another, who obtained the Patent Reform Act of 2011 prosecution and patent disclosure from the inventor, to (S.23) was introduced on litigation. These provisions file a patent application. The January 25, 2011 and approved include: First to File; Derivation one year grace period for filing by the Senate Judiciary Proceedings; False Marking; a patent application also applies Committee on February 3, Damages; Limitations on to any disclosures appearing in 2011. On February 28, 2011, Misconduct; Inventor’s Oath or patent applications and patents the President’s Administration Declaration; Damages; Inter that were obtained from an issued a statement Partes Review; Post inventor, were publicly supporting the “The United Grant Review; disclosed by an inventor, or Patent Reform Act States would Citation of Prior Art were commonly owned. and Written of 2011. In transition from a Derivation Proceedings particular, the Statements; Venue; Administration first to invent to a Fees; Tax Liability Interference proceedings would discussed the first to file Patents; and Best be replaced with derivation benefits of moving country.” Mode. Each of these proceedings. Relief under the the United States provisions is derivation proceedings would to a first to file system and discussed in turn. be limited to inventions derived from the inventor. In particular, providing authority for the U.S. First to File Patent and Trademark Office to a petition for relief would have set its fees. Also on February The United States would to “set forth with particularity the 28, 2011, the Senate approved transition from a first to invent to basis for finding that an inventor the amendments by the Senate a first to file country. This would named in an earlier application Judiciary Committee by change U.S. law to conform to (Continued on page 5) most other countries around the 4 4 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Another Shot At Patent Reform employee of the Office.” infringer’s lack of failure to (Continued from page 4) present advice of counsel with Inventor’s Oath or derived the claimed invention respect to any alleged infringed Declaration from an inventor named in the patent could not be used to petitioner’s application and, An applicant for a patent would prove that the accused infringer without authorization, the earlier be able to file a substitute oath willfully infringed the patent. application claiming such or declaration if the inventor is Inter Partes Review invention was filed.” Any actions unable to file the oath or would have to be filed within declaration or is under an An inter partes review would be one year of the issuance of the obligation to assign the available after the 9 month post first patent claiming the invention but has refused. The grant review period. The inter invention at issue. The new provisions would also allow partes review would be limited derivation proceedings would an assignment to include the to “a ground that could be be filed with the U.S. Patent required statements for the raised under section 102 or 103 and Trademark Office (USPTO) declaration or oath, thereby and only on the basis of prior and overseen by the Patent reducing the signatures needed art consisting of patents or Trial and Appeal Board of the from inventors. Basically, this printed publications.” The inter USPTO. provision would decrease the partes review would not be burden on assignees for available (a) if the petitioner or False Marking inventors that refuse to execute real party in interest has filed a False marking lawsuits would the oath or declaration. civil action challenging the be limited to actions by the validity of a claim of Damages United States and “[a]ny person “Courts would be a patent; or (b) if the who has suffered a competitive Courts would be petition requesting injury as a result of a violation” required to “identify required to the proceeding is of the false marking section “for the methodologies ‘identify the filed more than 6 recovery of damages adequate and factors that are methodologies months after the to compensate for the injury.” relevant to the and factors that date on which the determination of petitioner, real party Limitations on Misconduct damages, and the are relevant in interest, or his Patent practitioner misconduct court or jury shall to the privy is served with a proceedings under 35 U.S.C. § consider only those determination of complaint alleging 32 would be limited to conduct methodologies and infringement of the damages…’” that occurred no “later than the factors relevant to patent. earlier of either 10 years after making such Post Grant Review the date on which the determination.” A party could misconduct forming the basis also request that a patent- A post grant review would be for the proceeding occurred, or infringement trial be sequenced available for a 9 month post 1 year after the date on which so that infringement and validity grant review period after grant the misconduct forming the are decided before trying of the patent. After the 9 month basis for the proceeding is damages and willful post grant review period, the made known to an officer or infringement. Further, an (Continued on page 6) 5 5 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Another Shot At Patent Reform required to “transfer any civil cannot be held unenforceable (Continued from page 5) action arising under any Act of on the basis of information that inter partes review, described Congress relating to patents was set forth as part of the above, is available. The post upon a showing that the supplemental examination grant review could be based transferee venue is clearly unless (1) the unenforceability “on any ground that could be more convenient than the allegation was pled with raised under paragraph (2) or venue in which the civil action is particularity in a district court (3) of section 282(b) (relating to pending.” action under 35 “The USPTO invalidity of the patent or any U.S.C. § 282 or set Fees claim).” The grounds for post would have forth with grant review seem to be The USPTO would authority to set particularity in a broader than the ground for have authority to set or adjust fees... Paragraph IV inter partes review. The post or adjust fees. Also, notice to the patent fees for micro grant review would not be fees for micro holder before the available (a) if the petitioner or entities would be entities would be request for a real party in interest has filed a reduce by 75%. A reduce by 75%.” supplemental civil action challenging the micro entity is examination was validity of a claim of a patent; or defined as and includes filed, or (2) with respect to a (b) if the petition requesting the individuals or companies that Section 337 enforcement action proceeding is filed more than 6 have not been named on 5 or or an infringement suit under 35 months after the date on which more previously filed patent U.S.C. § 281, the action is the petitioner, real party in applications and has a gross brought before conclusion of interest, or his privy is served income level below a specified the supplemental examination with a complaint alleging amount (along with other and any ordered reexamination. infringement of the patent. restrictions). Tax Liability Patents Citation of Prior Art and Supplemental Examination . Tax patents related to “any Written Statements A patent owner would be strategy for reducing, avoiding, Any person could cite prior art allowed to request or deferring tax liability, whether and written statements of the supplemental examination of a known or unknown at the time patent owner filed in a patent “to consider, reconsider, of the invention or application proceeding before a federal or correct relevant information for patent” under section 102 or court or the USPTO in a believed to be relevant to the 103 would not be allowed. pending patent application (with patent.” If the request is Best Mode certain timing limitations). The granted, the patent will be person citing the prior art could reexamined according to the The failure to disclose the best submit a written explanation of standard reexamination mode as a basis for invalidity or the relevance of the cited prior procedures with certain minor unenforceability of any patent art and written statements. exceptions. The benefit of this would be removed. The procedure would be that a requirement to disclose the best Venue patent that undergoes mode in a patent would not be A district court would be supplemental examination removed. ◊ 6 6 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1
Top Honorees of the Invented Here! Program Announced
By Mark Solomon, Esq., Hamilton, Brook, Smith & Reynolds, P.C.
On February 15, 2011, a reception for more than 250 attendees was held at the Museum of Science honoring all twelve finalists of the Invented Here! Program, a collaboration between the Museum of Science (MoS) and the BPLA, honoring inventors from New England. The attendees included leaders in intellectual property, technology, industry, and academia from New England. Robin Young, the host of WBUR’s “Here and Now” was the emcee for the evening. The speakers during the welcome Ted McLean- Microsoft; Liz Callanan- MoS; reception portion of the evening included Dr. Mark Solomon- BPLA
Ioannis (Yannis) Miaoulis, President and Director Photo © 2011 Pat Piasecki of the MoS; Mark Solomon, Past President of the BPLA; and Ted McLean, General Manager of Microsoft in New England. All twelve finalists, listed below, were recognized on stage and posed for photos with Dr. Miaoulis.
For the presentation portion of the evening, the attendees were asked to move to the lower level of the Blue Wing of the Museum to theatre-style seating. Rick Burnes, Co-Founder of Charles River Ventures and Past Chairman of the Board of Trustees of the Museum of Science, spoke about the selection process by the BPLA from 70 Mark Solomon - BPLA Photo © 2011 Pat Piasecki Photo participants to 12 finalists, recognizing that it was a difficult task because of the large number of (Continued on page 8) 7 7 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Top Honorees of Invented Here! Patent Holder: Tenebraex (Continued from page 7) strong entries. Mr. Burnes stated that everyone •Eric A. Dauler; Nominated by: David on the Museum of Science Selection Committee Granchelli; Patent Holder: MIT felt that all 12 finalists could have been chosen as honorees and expressed his gratitude to the 70 •Mark Bear; Nominated by: Mary Murray; individuals and organizations who nominated Patent Holder: Brown University and Emory these distinguished inventors and their University inventions. Mr. Burnes also pointed out that it is important to note that those finalists who are not •John McBean; Nominated by: Matt Burke; among the three honorees will automatically be Patent Holder: MIT considered for the next iteration of Invented Here! •Yet-Ming Chiang; Nominated by: Christopher R. Noble; Patent Holder: MIT, licensed to A1233
•Prof. Eric Mazur; Nominated by: Reza Mollaaghababa and Thomas Engellenner; Patent Holder: Harvard University, licensed to SiOnyx Inc. Finalists and Representatives posing with Dr. Miaoulis (3 rd person top left) Photo © 2011 Pat Piasecki •Craig Siegel; Nominated by: Isabell A. S. Blundell; Patent Holder: Genzyme Although only three honorees were selected, the BPLA congratulates all twelve chosen by •Francesco Pompei; Nominated by: Jim the BPLA Selection Committee, which included: Smith; Patent Holder: Exergen Corporation
•Oliver Peoples; Nominated by: Kristi Mr. Burnes then asked the members of the BPLA Guillemette; Patent Holder: Metabolix Selection Committee to stand up, in recognition
of their efforts and hard work. He asked for a •Edward Damiano; Nominated by: Michael special round of applause for Aaron Connor and Pratt; Patent Holders: Boston University and Rory Pheiffer, who served as chairs of the BPLA University of Illinois Selection Committee.
• Edward Morgan; Nominated by: Maggie Then came the long-waited moment . . .
•Peter Jones; Nominated by: Larry Bouchie; (Continued on page 9) 8 8 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Top Honorees of Invented Here! three honorees will be showcased in (Continued from page 8) presentations on the Museum’s Gordon Current •Yet-Ming Chiang (lead inventor) for Science & Technology stage starting this spring Improved Lithium Ion Batteries - MIT and and continuing into 2012, which is accessible to A123 – Dr. Chiang’s batteries deliver high the 1.7 million museum visitors each year. The power, longer life, and greater safety Museum’s plan is that the honorees’ work will performance. They are now being used in also be part of the “What is Technology?” Exhibit automotive applications, as well as for power in the future. tools, medical devices, and other high- powered electronics. The audience was then treated to a live “Current Science & Technology” stage demonstration, •John McBean & Kailas Narendran for a featuring previews of the five minute Powered Orthotic Device for Stroke Victims - presentations by Museum staff of the inventions MIT, licensed to Myomo – the Myomo Neuro- of the three honorees. Robin Young and Dr. robotic System combines advances in Miaoulis interviewed the inventors on stage, robotics and neuroscience. The first which included a question and answer period. wearable robotic device to help restore arm Both activities really brought the inventions and movement to stroke survivors, it is clinically innovation processes to life, and the proven to be effective from 2 days to 21 presentations at the MoS throughout the year will years post stroke. continue to celebrate the science and technology developed in New England. •Oliver Peoples (lead inventor) for Bioplastics - Metabolix – Dr. People’s The program came to a conclusion with coffee bioplastic, called Mirel™, is biology-based and desert being served. Many of the attendees and biodegradable. Currently, his invention is commented that the evening was special and used in consumer goods, packaging, and well produced, and the content was unlike other agricultural and marine applications. events in the area. One of the goals of the Invented Here! Program was to be unique, and Dr. Miaoulis announced that the work of the based on attendees’ comments, this goal
Robin Young – WBUR; John McBean; Yet-Ming Chiang; Kailas Narendran; Dr. Miaoulis Photo © 2011 Pat Piasecki
9 9 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1
2010 Annual Meeting
By Greg Sieczkiewicz., Esq., Flagship Ventures
New President Grant Houston and Immediate Past-President Lisa Adams The 2010 Annual Meeting, held at the thanking the assembled throngs of Committee Intercontinental Hotel Boston on Friday, Chairs, past President Mark Solomon, never December 10, 2010, provided our members the content to rest on his laurels, described the work opportunity to look back on an exciting year for done by the BPLA with the Boston Museum of the BPLA. With the help of our keynote speaker, Science on the forthcoming exhibit entitled Sharon Barner, Deputy Under-Secretary of the “Invented Here!”. United States Patent and Trademark Office, and Incoming Vice President Joe Maraia delivered our new President, Grant Houston, the BPLA the Treasurer’s Report with aplomb and a began to look ahead to 2011 and beyond. description of our black ink, and Greg Sieczkiewicz as incoming Secretary provided the Even before the first member set foot in the Secretary’s Report as a Call-and-Response with Intercontinental lobby promptly at 11AM, stalwart member Ernie Linek. Following this, outgoing President Lisa Adams and her Activities Lisa Adams wrapped up her duties as BPLA Chair, Giordana Belenchia, had spent countless hours preparing for the event, and this effort showed throughout the day. By 11:30AM the reception area was in full swing with members swapping witty banter, clearly more upbeat about the legal market and the economy than in the prior two years.
Outgoing President Adams called the meeting to order with a swift introduction of the head table and recognition of our past Presidents, many of whom were in attendance. Board Member Erik Belt announced the winners of the writing competition: first place to Marcie Clark of Suffolk Immediate Past-President Lisa Adams presents Keynote Speaker Sharon Barner with BPLA University Law School and second place to Presidents Plate Daniel Rose, also of Suffolk University Law (Continued on page 11) School. Following Incoming President Houston 10 10 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 We would like to thank our accountants for providing the BPLA with outstanding service over the years
Suzanne M. Monahan, CPA Kelly A. McLaughlin, CPA David M. Walsh, CPA
1 Batterymarch Park, Suite 101 Quincy, MA 02169-7454 617-769-9600 www.daviesmonahan.com With approximately 16 years in providing accounting, auditing, tax, and consulting services, we attribute our long-term success to understanding our clients’ needs and providing high-quality, timely service.
2010 BPLA Annual Meeting Appreciating that she had a captive audience of (Continued from page 10) patent attorneys and agents, Under-Secretary Barner presented an overview of some of the many accomplishments of the Patent Office, including the development of the 2010-2015 USPTO Strategic Plan, which she drove forward to reduce patent processing times and improve patent quality. In the international arena, Under- Secretary Barner also discussed the efforts of the Patent Office which she led to develop better relationships with countries including Brazil, China, India, Mexico and Russia, raising awareness of the importance of intellectual property and its critical role in economic, social New President Grant Houston and cultural development. Under-Secretary Barner answered numerous questions from the President with a spirited delivery of the audience with great candor. 2010 began with President’s Report and installed the new Board the BPLA welcoming Director of the USPTO and Officers with a unanimous voice vote from David Kappos and closed with Under-Secretary the membership. Taking the reins, new Barner, demonstrating the strategic role played President Houston thanked Lisa for her in the field of intellectual property law by the tremendous efforts over the year for the BPLA and its members of the bar. Ironically, organization and all its members, and presented one week later Under-Secretary Barner her with flowers and a well-deserved BPLA announced her intent to leave the USPTO early Patriot Plate. in 2011.
With that, President Houston introduced the President Houston called for the adjournment of keynote speaker, Under-Secretary Barner, who the meeting, and the assembled throngs of was appointed to her position by Commerce members departed and dispersed like Secretary Gary Locke in October 2009. snowflakes. ◊
11 11 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Job Opportunities Patent Agent Patent Professional MBBP Cabot Corporation
MBBP is seeking registered Patent Agents for part-time contract Patent Professional manages Cabot’s positions in the biotech and high tech arts. Quasi-remote work international patent filings and patent situations possible, though at least periodic (e.g., weekly) preparation and prosecution for assigned presence in the office in Waltham required. Positions may Cabot business segments engaged in the evolve into full-time opportunity, depending on fit with the manufacture and sale of performance organization and volume of work. materials, including fine particulate materials such as carbon black and fumed Contract Patent Agents will be responsible for all aspects of the metal oxides. preparation and prosecution of patent applications before the USPTO, and equivalent support for foreign patent Patent Professional works closely with the prosecution. Contract Patent Agents will work closely and assigned business segments as a primarily with partners of the Firm, as well as associate member of the IP Law group and guides attorneys. Contract Patent Agents are expected to and supports various patent activities, communicate effectively and efficiently with attorneys, office including: staff, inventors, clients, patent examiners, and foreign attorneys on a daily basis, while appropriately and * managing Cabot’s foreign patent professionally representing the firm. portfolio; * reviewing PCT/International Patent Please submit resume to Laurie Macdonald via email Applications and other formal papers [email protected] required for foreign filings and instruct or fax 781-622-5933 foreign associates on handling applications; * reviewing documents, fees and Legal Secretary information required to complete Finnegan international patent filings; * preparing and filing patent applications on a worldwide basis for The Cambridge, Massachusetts office of Finnegan, one of the assigned business segments; world’s leading and largest intellectual property law firms, is * conducting patent searches; seeking a Legal Secretary to join our dynamic secretarial services * working with the technical and department. This position will support attorneys and/or legal business managers to identify and assistants with their demanding workloads. protect Cabot’s IP positions; * assessing competitive activities and Responsibilities include: utilizing knowledge of firm docket system assisting in setting IP strategy for to review docket communications and provide updates daily, assigned business segments; effectively manage, organize and prioritize tasks, utilize * addressing client counseling patent knowledge of firm financial services procedures to prepare matters and related issues; and appropriate documentation, interact effectively with other * managing outside counsel who are departments as required in support of attorney and/or legal handling patent matters for assigned assistant workload requirements, review incoming and outgoing business segments. correspondence for instructions and routing, utilize practice area knowledge to draft correspondence and other documents to For more information, clients and other parties, maintain files in accordance with firm/ contact Daniele Arnold 978-670-7043. practice group area requirements and perform general administrative duties.
For more information, please contact Robin McKinney 202-408-4000
12 12 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Job Opportunities Electrical Engineer High Tech Technology Specialist Hamilton, Brook, Smith & Reynolds, P.C. Mintz Levin
Electrical Engineering: Minimum of 2-4 years Mintz Levin is looking for technology specialist in the experience as an IP Attorney. Bachelors degree in high technology area for its Boston office. Ideal electrical engineering or related degree required. candidates will have B.S. or higher degree in Electrical Masters degree or equivalent industry experience Engineering or Computer Science from a top science preferred. and engineering school. Candidate must be detail oriented, possess excellent written and oral Litigation: Minimum of 3-5 years experience as an IP communication skills. Admission to the USPTO Litigator. Technical degree from a quality college or preferred. university. Track record of effective advocacy for clients. Experience as a leader on litigation team for We are seeking individuals with immediately complex patent cases. transferable skills who have strong academic backgrounds who have industry experience and/or If you would like to step out of the pack and into a experience working in a law firm. The selected highly visible role on our IP team, please send your candidate will be responsible for drafting patent resume to: applications, patent prosecution, invention harvesting, and assistance with patent landscapes and freedom to Recruiting Committee operate analysis in various high technology areas with Job Code: BPLASpring2011 emphasis on wireless, telecommunications, and Hamilton, Brook, Smith & Reynolds, P.C. computer science technologies. 530 Virginia Road, PO Box 9133, Please note: At this time, we are not accepting Concord, MA 01742-9133 applications from search firms.
Email: [email protected] Please send your resume and cover letter to Megan Fax: 978-341-0136 Clouden, Associate Recruiting Manager, at [email protected].
Patent Attorney Daly, Crowley, Mofford & Durkee LLP JOB POSTINGS IP firm located off Rt. 128 in Canton, MA seeks a patent attorney having an Electrical Engineering To add a job posting to our on-line list of Career background with RF/microwave experience required. Opportunities for 3 full months, Patent prosecution experience preferred with engineering experience a plus. Firm attorneys work in and to be listed in a quarterly BPLA Newsletter, a wide range of technology areas for large and small corporate, institutional and individual clients. Reasonable billing requirements. Salary and benefits please e-mail your job posting and competitive with Boston area. contact information to: Send, fax (781-401-9966), or E-Mail [email protected] ([email protected] ) resume to :
(Fee is $300 per listing) Hiring Attorney Daly, Crowley & Mofford, LLP, 354A Turnpike Street - Suite 301 Canton, MA 02021 13 13 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 Job Opportunities Patent Agent Infinity Pharmaceuticals Infinity is seeking a Patent Agent with 1-4 years experi- RESPONSIBILITIES ence to join its dynamic legal team. This person will be a critical member of the organization and will work with * Draft patent applications and responses to PTO a variety of cross-functional teams in a fast-paced envi- correspondence ronment to build and maintain a strong intellectual * Identify patentable inventions through interactions property portfolio in support of the company’s drug dis- with project teams covery and development efforts. The role will also in- * Conduct patent and scientific literature searches in volve exposure to a broad range of non-patent legal all technology areas of the company issues and require the development of independent * Perform and analyze patentability and freedom to partnerships with senior scientific and business man- operate searches agement. * Assist with due diligence reviews * Supervise outside counsel REQUIREMENTS * Identify potential freedom to operate issues and advise project teams * Advanced degree in chemistry (organic chemistry * Negotiate CDA’s, MTA’s, and sponsored research preferred) with 2-5 years experience in the agreements pharmaceutical field. * Educate other Citizen-Owners about intellectual * Admitted to practice before the U.S. Patent and property issues Trademark Office (PTO) preferred For any questions contact Hannah Goulding at 616-453-1364 .
Paralegal Cabot Corporation Under the supervision of the responsible attorney, • Organization -- Displays a sense of urgency. Focus paralegal assists intellectual property attorneys and on specific, ambitious goals. Able to manage business/R&D managers in preparing and filing legal multiple projects; able to determine project urgency forms; in maintaining relevant databases/files and in a practical way, uses goals to guide actions; facilitating legal work and office procedures. creates detailed action plans; organizes and Responsible for communicating information about schedules people and task effectively. patents, trademarks, agreements and other matters • Reliability -- Personally responsible; completes affecting intellectual property rights and legal work in a timely, consistent manner; works hours requirements internally and to outside counsel and third necessary to complete assigned work; is regularly parties. present and punctual; arrives prepared for work; is committed to doing the best job possible; keeps Critical Competencies: commitments. • Communication -- Ability to communicate • Teamwork -- Able to work well with staff, co- effectively and adapt approach to intended workers, peers and managers; shares critical audiences. Communicates project needs, information with everyone involved in a project; challenges, decisions and proposed solutions. Is works effectively on projects that cross functional able to deliver good and bad messages with lines; helps set a tone of cooperation within and sensitivity and clarity. across groups; coordinates own work with others; • Attention to Detail -- Follows detailed procedures seeks opinions; values working relationships; when and ensures accuracy in documentation and data; appropriate facilitates discussion before decision- carefully monitors tasks and concentrates on making process is complete. routine work details; organizes and maintains a system of records. For any questions contact Daniele Arnold at 978-670-7043. 14 14 Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1
The Boston Patent Law Association Committees (BPLA) is an association of intellectual ACTIVITIES & P UBLIC RELATIONS IN-HOUSE PRACTICE property professionals, providing edu- [email protected] [email protected] cational programs and a forum for the interchange of ideas and information Bo Han, Wilmer Cutler Pickering Hale and Dorr William DeVaul, Cubist Pharmaceuticals Inc. LLP concerning patent, trademark, and David Miranda, Jr., Raytheon copyright laws. Through a volunteer Board AIPLA M OOT COURT INTERNATIONAL & F OREIGN PRACTICE of Governors and committees, it organizes [email protected] [email protected] and hosts educational seminars, social Jonathan Mutch, Robins, Kaplan, Miller & Deirdre E. Sanders, Hamilton, Brook, Smith & events, and conventions, and comments Ciresi, L.L.P. Reynolds, P.C. on rules, legislation, and judicial decisions Elizabeth Burkhard , Holland & Knight John N. Anastasi, Lando & Anastasi, LLP impacting the profession. Visit the BPLA Joshua Dalton, Bingham McCutchen, LLP LICENSING at www.bpla.org . AMICUS [email protected] [email protected] Jamison J. Barr, Jenzabar, Inc. The BPLA Newsletter is published four Erik Paul Belt, McCarter & English times a year by the Boston Patent Law LITIGATION Association. Articles appearing in the Robert M. Abrahamsen, Wolf, Greenfield & [email protected] newsletter represent the views of the Sacks, P.C. Martin O’Donnell, Cesari and McKenna LLP authors and do not necessarily carry the ANTITRUST LAW Douglas C. Doskocil, Goodwin Procter LLP endorsement of the BPLA. [email protected] MEDICAL DEVICES PRACTICE Benjamin M. Stern, Proskauer Rose LLP [email protected] Stephen Y. Chow, Burns & Levinson LLP Jim Flaherty, Foley Hoag Editor-In-Chief: Joseph M. Maraia , Esq. BIOTECHNOLOGY Jeremy Bond, Finnegan, Henderson, Farabow, [email protected] Garrett, and Dunner Contributors: Konstantin M Linnik, PhD, Pfizer Inc. NEW LAWYERS & L AW STUDENTS Leslie Meyer-Leon, IP Legal Strategies, LLC [email protected] Grant Houston, Esq. Michael Carbonello, Houston Eliseeva CHEMICAL PATENT PRACTICE Donna Meuth, Esq. [email protected] Dan Young, Wolf Greenfield & Sacks, P.C. Joseph M. Maraia, Esq. Lin J. Hymel, Ph.D., Weingarten, Schurgin, PATENT LAW Christopher E. Everett, Esq. Gagnebin & Lebovici LLP [email protected] Mark Solomon, Esq. John W. Freeman, Fish and Richardson Justin J. Daniels, Skadden, Arps, Slate, Greg Sieczkiewicz, Esq.
COMPUTER LAW Meagher & Flom LLP [email protected] Michael Bergman, Bergman & Song LLP
John J. Stickevers, Sunstein Kann Murphy & PATENT OFFICE PRACTICE
Timbers [email protected]
Christopher Everett, Pierce Atwood Emily Whelan, Wilmer Cutler Pickering Hale and
Dorr LLP CONTESTED MATTERS [email protected] Debra Milasincic, Nelson Mullins
Susan G.L. Glovsky, Hamilton, Brook, Smith & PRO BONO Reynolds, P.C. [email protected] Michael R. McGurk, Finnegan, Henderson, Mary Rose Scozzafava, Ph.D., Wilmer Cutler Publisher: Andrea Dwyer, Farabow, Garrett & Dunner Pickering Hale and Dorr LLP Staff Advantage COPYRIGHT LAW Robert J. Sayre, Modern Times Legal [email protected] TRADE SECRETS Amy L. Brosius, Fish & Richardson P.C. [email protected] Lawrence T. Stanley, Jr., Bingham McCutchen Claire Laporte, Foley Hoag LLP LLP Heidi Harvey, Fish and Richardson ETHICS AND GRIEVANCES TRADEMARKS & U NFAIR COMPETITION [email protected] [email protected] Letters to the editor, articles and job Timothy A. French, Fish & Richardson P.C. John L. Welch, Lando & Anastasi, LLP postings are encouraged. Steven J. Henry, Wolf, Greenfield & Sacks, P.C. Mark D. Robins, Nixon Peabody LLP E-Mail all correspondence to: [email protected] ©2010 BPLA—All rights reserved. Interested in playing a more active role in a committee? Please contact the committee chair if you are interested in joining, switching, or taking a more active participatory role in a committee.
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BOSTON PATENT LAW ASSOCIATION NEWSLETTER
Winter 2011 BPLA NEWSLETTER Volume 42, Issue 1 BOARD OF GOVERNORS
PRESIDENT PRESIDENT-ELECT J. Grant Houston , Houston Eliseeva Neil P. Ferraro , Wolf, Greenfield & Sacks [email protected] [email protected]
VICE PRESIDENT TREASURER Joseph M. Maraia , Pierce Atwood Donna M. Meuth , Eisai Inc. [email protected] [email protected]
SECRETARY IMMEDIATE PAST-PRESIDENT AND BOARD MEMBER Gregory J. Sieczkiewicz , Flagship Ventures Lisa Adams , Nutter McClennen & Fish [email protected] [email protected]
BOARD MEMBER BOARD MEMBER Erik Paul Belt , McCarter & English Patrick Quinlan , Nutter McClennen & Fish [email protected] [email protected]
BOARD MEMBER Monica Grewal , Wilmer Cutler Pickering, Hale & Dorr [email protected]