#221 - Biotechnology and Pharmaceutical Patents

221st National Meeting, San Diego, CA April 1-5, 2001 -- BTEC/CINF Abstracts

G. Grethe, Secretary General; G. Grethe, Program Chair


Biotechnology and Pharmaceutical Patents
A. Berks, Organizer
E. Simmons, Organizer, Presiding
8:30 -- Introductory Remarks
8:35 19 Comparing the Derwent Chemical Resource database with the CAS Registry File.
Helen Weiqin Yun, Wyeth-Ayerst Research, 401 North Middletown Road, Pearl River, NY 10965, Fax: 914-732-3744, yunh@war.wyeth.com, and Andrew Berks, Patent Dept, Merck & Co, RY 60-35, 126 E. Lincoln Ave, Rahway, NJ 07065, Fax: 732-594-5832, andrew_berks@merck.com - SLIDES
Derwent introduced the Derwent Chemical Resource (DCR) in June 1999, as a new structure searchable database which indexes specific chemical compounds in patents. With almost one and a half years on the market and accumulation in the database, we performed a benchmark study to compare the DCR to the Chemical Abstracts Registry File indexing of patents. We studied a random set of patents selected from the Derwent Documentation Abstracts section B, which indicated that new drug-like chemical compounds were claimed, and compared DCR numbers from the Derwent World Patent Index records with the corresponding Chemical Abstracts records containing CAS Registry File data. A preliminary observation is that the CAS Registry file indexed more new chemical compounds per patent which means that more access points are provided for using chemical structures to find corresponding patents. We will also assess the overlap of compounds in the two databases for some of the individual patents in the study.
9:05 20 Increasing confidence in search results, Part I: Text searching on STN
William M. Mercier, Chemical Abstracts Service, Columbus, OH 43210, Fax: 703-435-0827, wmercier@cas.org
When we search in scientific online databases, sometimes it is difficult to measure the confidence in ourselves as searchers. Have we chosen the correct source(s)? Have we found everything there is to find when a comprehensive search is required? Do we have the "best" answers? Have we availed ourselves to the search tools specific to the database(s) we have chosen? In technical literature searching, prior-art searching, patent searching or searching done by patent agents, patent searchers, or patent examiners it is not uncommon to get a search result, say zero or a few answers, that makes us question our confidence. Is zero the "correct" answer? Is there really nothing out there? Is there some component of my search strategy that might be adjusted to increase my confidence? Is there some technique that I have left out entirely?

The techniques presented in this paper, then, are a checklist -- a litany of text search techniques that should be part of every searcher's repertoire. If imprecise search results are found, or when zero or too few answers are found, this checklist can be consulted. If all the techniques on the list are employed then the searcher's confidence is greatly increased.

9:35 21 Searching for chemical reaction art.
Mark A. Calcagno, Business Intelligence Services, Procter and Gamble, Health Care Research Center, 8700 Mason-Montgomery Road, Mason, OH 45040, calcagno.ma@pg.com
Patents on chemical reactions are used to protect the manufacture of drugs as well as processes for combinatorial chemical libraries. Deep indexing for chemical reactions is only available in chemical reaction databases. Chemical reaction databases, however, are directed primarily at helping bench chemists perform synthetic operations. As such, they are not intended to be exhaustive. Searching for prior art to determine patentability or patent validity usually requires more thorough methods. More exhaustive approaches to finding chemical reaction art, including searching patent databases, will be presented. File indexing which may be useful in reaction searching will also be discussed.
10:05 22 Statistical analysis of global trends in patenting biosequences.
Rachel V. Buckley, Biosciences Product Development, Derwent Information, 14 Great Queen Street, London WC2B 5DF, United Kingdom, Fax: 44 207 344 2911, rachel.buckley@derwent.co.uk
The rapid growth of genomics in therapeutic and diagnostics research means that keeping completely up to date with the corresponding explosion in biosequence patents is critical to both scientific and commercial success. The pharmaceutical industry will not develop new therapeutic treatments based on inventions without adequate intellectual property protection as companies cannot afford the extravagance of duplicating research efforts or costly patent infringement battles. Utilizing the unique sequence annotation, focused abstracts, and global patent bibliographic information in the Derwent GENESEQ and Derwent World Patents Index databases, a statistical analysis will be presented reporting on trends in patent and sequence volumes, specific growth areas in terms of technology focus and the major players within the biosequence patenting arena.
10:35 23 Information sources on post-grant actions to pharmaceutical patents
Stephen R. Adams, Magister Ltd, Crown House, 231 Kings Road, Reading RG1 4LS, United Kingdom, Fax: +44-118-9299516, stevea@magister.co.uk
One of the crucial issues in pharmaceutical patent retrieval is the question of world-wide patent term for marketed drugs. This paper will review the available sources of legal status information on this topic, with special reference to patent term extensions and the operation of the supplementary protection certificate (SPC) system in Europe.
11:05 24 Inventorship issues in collaboration and screening agreements.
Joel G. Ackerman, Limbach & Limbach L.L.P, 2001 Ferry Building, San Francisco, CA 94111, Fax: 415-433-8716, jackerman@limbach.com
The ownership of inventions and patents issuing on them can play a critical role in structuring, conducting, and profiting from collaborative research and/or development projects and screening arrangements. Ownership of inventions and patents obtained on them generally arises as a result of determining the inventorship. This presentation will briefly outline criteria of inventorship, discuss implications of shared patent ownership, and review some recent high- profile cases involving these issues.
11:35 25 Enterprise patent information: A portal approach to meet your company's diverse user needs.
Ralph Schroeder, PricewaterhouseCoopers LLP, 200 East Randolph, 76th Floor, Chicago, IL 60601, Fax: 312-856-1916, ralph.schroeder@us.pwcglobal.com
Today, the interest in patent information is no longer limited to patent attorneys and inventors. Instead, nearly all functional areas find themselves in need of patent information in order to support both their strategic and tactical objectives. At the same time, the breadth and complexity of patent and technical related information have created a dizzying array of options and preferences in meeting the needs of this diverse patent user community. Implementing an information strategy, process and organization designed to meet these diverse needs is critical. Likewise, technology plays an important role in enabling users to efficiently and effectively meet their needs. Companies are increasingly adopting enterprise patent information approaches to meet their patent needs. To deliver these capabilities "portals" offer an attrative system design that can provide both consistency and personilization to searching, reviewing and analyzing patent information.This paper will provide perspectives on how to develop a successful enterprise patent information strategy, and how portals can be designed to support the needs of patent users across the company.



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