2024 Advanced Chemical Patent Practice Institute

Online registration for the Advanced Chem Practice Pre-Meeting Event will close Monday, May 6, 2024 at 11:59pm ET. Walk-ins available. If you plan on attending the Spring Meeting, there is special pricing for this event. Must register for the Spring Meeting at the same time. (Pricing with 2024 Spring Meeting is $225 for members and $445 for Non-Members).

If you only want to attend the 2024 Advanced Chemical Patent Practice Institute, select this event and click "Individual Registration". (Pricing for attending only the Institute is $445 for members and $845 for non-members). There is a discounted rate for AIPLA member in-house counsel ($225) who are not able to also attend the Spring Meeting.  Please use this paper registration form to register as in-house counsel (Institute only). Registration Form 24 ACPPI In-House Counsel (Please bring ACPPI reg form with you or email this reg form to aipla@aipla.org.)

Please NOTE: Online registration will close Monday, May 6, 2024 at midnight ET. Walk-ins will be accepted, but will not be included on the attendee list.

HOTEL INFORMATION:  The Hilton Austin is sold out on Monday and Tuesday evening, so we have arranged for a block of rooms at the ALOFT Hotel by Westin, which is very nearby.  The room rate is $199 per night plus applicable taxes.  For assistance to reserve a room, please contact us at member.services@aipla.org.

DAY 1 - Tuesday, May 14, 2024

1:30 - REGISTRATION

2:00 PM - Welcome Remarks - Ann Mueting, Mueting Raasch Group, Minneapolis, MN, AIPLA President; and Thomas Irving, Program Emcee, The Marbury Group, Reston, VA

2:15 PM - Drafting Strategies for Conquering the World - Patent attorneys practicing in US, Europe, China, and Japan will speak to requirements of enablement and sufficiency of disclosure across jurisdictions including specific practice tips as to when and how to handle objections and rejections related to indefiniteness, including how to present data in vitro vs in vivo/clinical trial data and computer-generated data and when post-filing data can be relied on. The panelist will also provide insight on how to avoid clarity objections including the inclusions of definitions in the specification as well as the interpretation of terms such as “about,” “approximately,” and “substantially” in various patent offices. The panel will offer best practice solutions for presenting genus claims for prosecution across jurisdictions as well as the inclusion of parameters, measurement methods functional features in claim language.  Further, this panel will speak to the need for fallback positions to ensure allowance of claims and appropriate claim scope.

• Moderator: Chloe Halloway, Hoffman Eitle, Munich, German
• Speakers - David Albagli, White & Case, Tokyo, Japan; Toby Mak, Tee & Howe, Beijing, China; Joanna Brougher, Indivior, PLC, Chesterfield, VA; Toby Simpson, Hoffman Eitle, Munich, Germany

3:45 PM - COFFEE BREAK

4:00 PM - The Future of Energy: Navigating the Transition in the World of Patents - The energy transition from fossil fuels to renewable energy sources has both economic and practical implications and raises concerns of sustainability. Management of energy resources is evolving and transforming everyday as innovative solutions are needed to address climate change and the world’s complex energy challenges. The chemical practitioner can adapt and be a positive influence on this new business environment through an understanding of the implications of the energy transition generally, and how the energy transition may impact intellectual property strategies. Our panel of experts will address how practitioners can meet clients’ evolving needs in this new wave of innovation.

• Moderator: Carol Nielsen, Nielsen IP Law, Houston, TX
• Speakers: Melody van Denzen, ConocoPhilips, Houston, TX; and Tori Reinhart, CGG, Houston, TX

5:00 - END OF DAY 1

6:30 PM (subject to change) - NETWORKING EVENT - Location to be provided.

Day 2 - Wednesday, May 15, 2024

8:00 AM - REGISTRATION and BREAKFAST

8:30 AM - Welcome Remarks - Wan Chieh (Jenny) Lee, Chair, Chemical Practice Committee, Haug Partners, LLP, New York, NY and Ali Anoff, Vice Chair, Chemical Practice Committee, The Procter & Gamble Company, Cincinnati, OH

8:45 AM - Drafting and Prosecuting Patent Applications to Survive a Markman Hearing: Claim Construction Case Studies - Patents prepared and prosecuted with a focus on future challenges can increase the likelihood of providing desired protection. For instance, the statements made in a patent application or during prosecution can influence the outcome of a Markman hearing. The panel will delve into recent cases where claim construction played a pivotal role in litigation outcomes. Drawing from these cases, the panel will provide practical insights and tips on how to optimize patent application and claim drafting to strengthen the chances of success in future litigation.

• Moderator: Tony Prosser, Knowles Intellectual Property Strategies, Atlanta, GA
• Speakers: Ali Anoff, The Procter & Gamble Company, Cincinnati, OH; Laura Smalley, Harris Beach, PLLC, Rochester, NY; Michelle O'Brien, The Marbury Law Group, Reston, VA

10:15 AM - COFFEE BREAK

10:30 AM - Chemical Patent Conundrums: Industry Experts Share Solutions for Patent Prosecution Challenges - This interactive panel brings together experts from diverse sectors to share their experiences and strategies in addressing common hurdles faced in chemical patent practice. Gain valuable insights as our esteemed speakers delve into their unique approaches, providing practical solutions and invaluable guidance to overcome the intricacies of patent prosecution in the chemical domain.

• Moderator: Andrew Chipouras, Honigman, LLP, Kalamazoo, MI
• Speakers: Joshua Goldberg, Nath Goldberg & Meyer, Alexandria, VA; R. Andrew Patty, Phelps Dunbar, LLP, Baton Rouge, LA; and Rachel Kahler, General Mills, Minneapolis, MN

12:00 PM - LUNCH

12:45 PM - Navigating the Changing Patent Landscape for Obviousness-Type Double Patenting and Unconventional Sources of Prior Art - The panel will discuss recent updates that have significant impact to patent strategies for obviousness type double patenting in the US and around the world, and unconventional sources of prior art, in particular, information obtained from clinicaltrials.gov postings, EMEA protocols, conference presentations, or press releases. The panelists will discuss the potential impact of recent changes and practice tips for managing developing worldwide patent portfolios.

• Speakers: Sean Brock, GSK, Philadelphia, PA; Melanie Szweras, Bereskin & Parr, Toronto, Ontario, Canada; Wan Chieh (Jenny) Lee, Haug Partners, LLP, New York, NY; Holger Tostmann, Wallinger, Ricker, Schlotter, Tostmann, Munich, Germany

2:15 PM - Charting Uncertain Waters: Claim Drafting in Light of Evolving Written Description and Enablement Requirements - Solid claim drafting has become critical considering evolving requirements under 35 U.S.C. § 112. Learn the latest best practices after Amgen v. Sanofi in drafting chemical, pharmaceutical, and biotech claims, including means-plus-function claims. This session will offer practical guidance in view of USPTO-allowed claims, PTAB precedent and Federal Circuit decisions.

• Moderator: Jocelyn Ram, The Broad Institute of MIT and Harvard, Cambridge, MA
• Speakers: Sharon Crane, Haynes and Boone, LLP, Washington, DC and Sherry Knowles, Knowles Intellectual Property Strategies, Atlanta, GA

3:45 PM - COFFEE BREAK

4:00 PM - What in the World is Going On with Patents? An Update - This panel will address ongoing administrative efforts and legislative proposals in Europe and the United States that impact the patent procurement process and potentially transform patent rights of chemical inventions. EP counsel will highlight updates to the EPO Guidelines for Examination and the impact of a recent EPO decision when evidence may be relied upon for inventive step. US counsel will discuss current US legislation proposals and administrative policy initiatives that could change the state of march-in rights, clarify patent eligible subject matter for 21st century technologies, and impact one of the most misunderstood anticompetitive business behaviors across industries: product hopping. The panel will also touch on patent reform legislation purported to reduce the price of drug products.

• Speakers: Matthew Barton, Forresters, Munich, Germany; Carol Nielsen, Nielsen IP, Houston, TX; Jeremy McKown, Johnson & Johnson, New Brunswick, NJ; Toby Simpson, Hoffman Eitle, Munich, Germany

5:30 PM - Adjournment

 

Thank you to our sponsors for this event!

  

Speakers

• Holloway, Chloe

  Hoffmann Eitle | British and European Patent Attorney, UPC Representative

  Chloe joined the Munich office of Hoffmann Eitle in 2016. Prior to joining Hoffmann Eitle, Chloe worked for a large Italian IP firm in Milan and for a boutique firm in Mexico City. Chloe works on drafting and prosecuting patent applications in a variety of different technical fields within chemistry, including organic chemistry, medicinal chemistry, pharmaceuticals and materials chemistry. She specialises in opposition and appeal proceedings before the EPO and has represented both patent proprietors and opponents in these proceedings.
• van Denzen, Melody

  ConocoPhillips | Senior Legal Counsel

  Melody van Denzen, is Senior Legal Counsel at ConocoPhillips, in Houston. She is a recovering engineer with international experience and a passion for sustainability, particularly as it relates to decarbonization and the energy transition. Melody grew up relocating every few years to “follow the oil” and has continued the trend throughout her own career working with and for multinational oil and gas corporations. She enjoys working with innovators and dreamers to drive changes that improve our world. And one of her favorite things is discovering and implementing feasible solutions to difficult challenges using creative collaboration and advocacy skills.
• Patty II, R. Andrew (Drew)

  Phelps Dunbar LLP | Partner

  Mr. Patty is a Partner with the law firm Phelps Dunbar LLP. He leads the firm’s Artificial Intelligence Working Group and is a member of the firm’s Intellectual Property (IP) and Cybersecurity Practice Groups. A graduate of Tulane University and the University of North Carolina School of Law, he has extensive experience in preparing and prosecuting patents in the chemical, medical device and mechanical fields, as well as the software and financial services fields. His chemical experience includes preparation and prosecution in the fields of lithium battery chemistry, organo-metallic chemistry, biocides, catalyst reactions, pharmaceuticals and their intermediates, and bromine chemistry, amongst others.
• Brougher, Joanna

  Indivior, PLC | Patent Attorney

  Joanna is a patent attorney who focuses her practice on all aspects of services related to patents in the areas of biotechnology, pharmaceuticals and medical devices, including patentability opinions, patent drafting, domestic and foreign patent prosecution, development and management of patent portfolios, and general client counseling during all phases of a product’s lifecycle, from concept to commercialization. Joanna’s patent experience covers a variety of complex and innovative inventions involving small molecule drugs, biologics, cell-based technologies, compositions, drug formulations and drug delivery systems, immunotherapeutics, medical devices, diagnostic tests, nanotechnology, and immunology, particularly vaccines and antibodies. Joanna also has experience counseling clients on the Hatch-Waxman Act and is monitoring developments involving biosimilars under the Biologics Price Competition and Innovation Act.
• Reinhart, Torie

  CGG | Global IP Legal Counsel

  Torie Reinhart is a US Patent Attorney and a Texas lawyer with over 20 years of experience in all aspects of IP law and engineering. She started her career as a process engineer at a leading industrial gas and engineering company before shifting to her legal practice in patent preparation and prosecution in oil and gas. Torie also has extensive experience in IP litigation, including pre-litigation analysis, due diligence investigations, opinion preparation, and patent portfolio management. As Global IP Counsel for CGG, a leading data and technology corporation, she enjoys guiding IP strategy and using her expertise in IP to build creative ways to help her organization reach business goals through strategic licensing and partnerships.
• Prosser, Tony

  Knowles Intellectual Property Strategies | Partner

  Anthony R. Prosser, Ph.D., is a Partner with Knowles Intellectual Property Strategies (KIPS) in Atlanta, Georgia. Dr. Prosser focuses on complex organic chemistry patent matters including drafting and prosecuting U.S. and international patent applications directed to new chemical compounds and synthetic methodology, due diligence, freedom to operate analysis, and patentability investigations. Dr. Prosser’s technical areas of expertise include organic synthesis, process chemistry, medicinal chemistry, nucleoside chemistry and drug discovery and development. Dr. Prosser has spoken and written on a wide range of topics including recent panels on the use of artificial intelligence in drug design and the conflicting application of double patenting to patent term adjustment. Dr. Prosser has published over a dozen scientific and legal articles.
• Szweras, Melanie

  Bereskin & Parr LLP | Partner

  Melanie Szweras is a partner with Bereskin & Parr LLP and a member of the Life Sciences practice group. She is also co-leader of the Privacy/Regulatory, Advertising, Marketing practice group. Melanie’s practice focuses on drafting and prosecution of applications relating to biologics, diagnostics, biotechnology, food and pharmaceuticals. Melanie offers strategic advice and expertise to her clients, provides validity and freedom to operate opinions and is involved in related patent litigation and licensing.
• Simpson, Toby

  Hoffmann Eitle | British and European Patent Attorney, UPC Representative

  Toby Simpson's patent practice lies principally in the fields of pharmaceuticals and chemistry. He specialises in drafting and prosecuting patent applications directed to pharmaceutical products (including new chemical entities, peptide and antibody therapeutics, pharmaceutical formulations, polymorphs, salts, new medical uses and dosage regimes), cosmetic products, personal care products, medical devices, polymers, energy storage devices and fuels. He also advises clients in relation to SPCs, orphan drug designations, clinical trial exemptions and regulatory data protection. A keen problem solver, Toby is frequently entrusted by clients with technically and legally challenging cases.
• Nielsen, Carol

  Nielsen IP | Attorney at Law

  Carol’s practice is focused on intellectual property investigations, portfolio management and international procurement of patent and trademark rights. She has special expertise working with the pharmaceutical, chemical and oil and gas industry. Carol also serves clients in the procurement of intellectual property rights for new products, systems, processes, and designs and management of global patent and trademark portfolios. Carol brings significant litigation experience to her legal services having handled disputes over intellectual property rights in Federal Court. She has held key roles on various trial teams, taken and defended depositions, and prepared key pleadings and legal briefs both in trial and appellate courts. Carol has appeared before the Federal Circuit Court of Appeals. She has successfully resolved contractual disputes for clients in both Texas and Illinois state courts. Carol has also handled trademark opposition and cancelation proceedings before the US Trademark Trial & Appeal Board.
• O'Brien Michelle E.

  The Marbury Law Group | Partner

  Ms. O’Brien has over 20 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement and litigation, with an emphasis on chemical and pharmaceutical technologies. Exemplary areas of technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; pharmaceuticals, including new chemical entities and formulations; and novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds.
• Smalley, Laura W.

  Harris Beach PLLC | Partner

  Laura W. Smalley is a partner in the Intellectual Property Practice Group of Harris Beach PLLC, one of the leading law firms in New York State as ranked by the National Law Journal. She was selected as one of the Best Lawyers in America and represents clients in patent licensing, litigation and prosecution. Laura focuses on protection and enforcement of intellectual property rights and clients’ development of their technology. She has litigated numerous patent infringement suits involving medical devices, electronic components and imaging technology, including acting as trial counsel in a patent infringement action over key components for pacemakers and implantable defibrillators that resulted in a $27 million judgment.
• McKown, Jeremy K.

  Johnson & Johnson | Global Patent Head

  Jeremy is the Global Patent Head of Johnson & Johnson’s pharmaceutical business, where he manages a global team of attorneys and professionals focused on creating robust patent portfolios and providing strategic counsel to its’ Innovative Medicine companies. In addition, he advises on material R&D transactions and IP litigations, and actively works with external trade associations to ensure we have meaningful IP policies. Previously, he led the R&D Legal team responsible for drafting and negotiating complex agreements for J&J’s Innovative Medicine companies.
• Anoff, Ali

  Procter & Gamble | Director & Assistant General Counsel - Patents

  Ali Anoff is Director and Assistant General Counsel at Procter & Gamble. She is the primary patent attorney for renowned brands such as Olay® skin care, as well as Old Spice®, Secret®, and Native® antiperspirant and deodorants. Ali provides strategic legal counsel to the business to create and protect global intellectual property assets. Her practice focuses on IP strategy development, preparation and prosecution of global patent applications, conducting freedom-to-practice assessments and enforcement.
• Crane, Sharon

  Rothwell Figg | Partner

  Sharon Crane is a counsel in the Intellectual Property Practice Group in Haynes Boone’s Washington, D.C. office. Her practice focuses on patent prosecution, opinion work, patent interferences, and post-grant practice at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB). Sharon also provides discerning representation to clients in the biotechnology and pharmaceutical sectors.
• Albagli, David

  White & Case | Partner

  David Albagli, PhD is a Local Partner in White & Case's Global Intellectual Property Practice, based in Tokyo since 2010. His practice focuses on intellectual property spanning patent litigation, prosecution, opinion work, patent portfolio development, pre-litigation counseling, and due diligence investigations, as well as technology transactions, license agreements, and trademark matters. Dr. Albagli advises on a wide range of intellectual property and transaction-related matters in the pharmaceutical, chemical, and biotechnology sectors.
• Chipouras, Andrew

  Honigman | Patent Attorney

  Andrew Chipouras is a patent attorney practicing in all areas of patent law with a focus on preparing and prosecuting patent applications. In particular, he has experience working with clients to protect inventions inventions and strategically manage patent portfolios in technologies from chemistry and the life sciences to materials science and mechanical/electromechanical technologies. Andrew conducts due diligence on patent portfolios for licensing, acquisition, and investment transactions, prepares freedom-to-operate and invalidity opinions, and supports patent litigation and inter partes review proceedings.
• Mak, Toby

  Tee & Howe | Senior Counsel / Patent Attorney

  Dr. Toby Mak is a registered Chinese Patent Attorney and has a Ph.D. in Chemistry. Dr. Toby Mak was born in Hong Kong and graduated from Hong Kong University of Science and Technology. He worked at one of the largest law firms in Hong Kong for 8 years before joining Tee & Howe.
• Lee, Wan Chieh (Jenny)

  Haug Partners | Partner

  Wan Chieh (Jenny) Lee is a partner in the New York office of Haug Partners. Her practice focuses on strategic counseling, procurement of worldwide patent rights, due diligence, freedom to operate, and intellectual property transactions. She routinely advises clients in the pharmaceutical, biotechnology and medical device industries regarding patentability, validity, freedom-to-operate, and regulatory exclusivity. Jenny develops and executes patent procurement strategies that are aligned with clients’ immediate and long-term business goals. She leverages her strong ability to digest complex technical information with her experience in both patent procurement and litigation to provide clients with valuable transactional insights.
• Mueting, Ann

  Mueting, Raasch Group | Founding Shareholder

  Ann M. Mueting, Ph.D., J.D., is a founding shareholder of the firm Mueting Raasch Group in Minneapolis, Minnesota, which began in 1995 and represents Fortune 500 companies, biomedical firms, universities, various mid-size and startup companies, as well as individual entrepreneurs. Ann is a patent attorney practicing in the areas of patent prosecution, due diligence, and related opinion work with emphasis in chemical and biotechnology patent law.
• Tostmann, Holger

  Wallinger, Ricker, Schlotter Tostmann | Partner

  Holger is German and European Patent Attorney and UPC representative at Wallinger, Ricker, Schlotter, Tostmann since 2008. Holger holds a doctorate in chemistry, respectively and specializes in patent prosecution with an international focus as well as in opposition (appeal) proceedings Holger’s technical expertise is based on a long research career, 5 years of which were spent at top notch US research facilities and includes chemical engineering, polymer chemistry, materials science, biophysical chemistry and pharmaceuticals.
• Irving, Thomas L.

  The Marbury Law Group, PLLC | Partner

  Tom Irving has more than 46 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.
• Barton, Matt

  Forresters | Partner

  Dr Matt Barton is a European and UK patent attorney and UPC Representative, and is Partner at Forresters where he heads the Munich office. Having qualified as a patent attorney in 2005, Matt is highly experienced in patent prosecution and drafting especially at the EPO and UKIPO. He has extensive experience of EPO opposition and appeal proceedings, handling multiple oral hearings each year, as well as freedom to operate and opinion work. His technical background is chemistry, with a focus on industrial chemistry, coating compositions, aerogels, battery materials, small molecules and drug conjugates. Matt’s particular specialism is in metallurgy, especially aluminium alloys and their methods of processing and production.
• Knowles, Sherry

  Knowles Intellectual Property Strategies | Principal

  Sherry M. Knowles is an intellectual property attorney with 30 years of experience in global corporate and private practice. From 2006-2010, Ms. Knowles was the Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters, and managed a global department of over 200 people in 12 offices, including in the US (3 offices), Europe (7 offices), China (1 office) and Australia (1 office). At GSK, Ms. Knowles was a member of the Scientific Advisory Board, the Technology Investment Board, the Product Management Board, the Legal Management Team and she led the Global Patents Executive Team.
• Goldberg, Joshua

  Nath, Goldberg & Meyer | Co-Managing Partner

  Joshua Goldberg is Co-Managing Partner and the Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer. Mr. Goldberg’s practice involves preparing and acquiring U.S. and foreign patents for his clients across a wide range of technology areas. His current practice places a particular emphasis on pharmaceutical, agriculture, and alternative energy technologies. He also advises corporate, university, and independent clients not only in how to obtain patents, but also how to bring new products to market without infringing someone else’s patents.
• Brock, Sean

  GSK | U.S. Vice President

  Sean Brock is an intellectual property strategist focused on protecting and facilitating innovation in the life science sector. He currently serves as the U.S. vice president for pharmaceutical patents at GSK. Over his career, Sean has provided IP guidance to sole inventors, academic institutions, start-ups, midsized biotechs, and some of the world’s largest healthcare companies. He has experience securing and asserting IP rights, defending against infringement allegations, structuring IP transactions, shaping legislation, and almost everything in between.
• Kahler, Rachel

  General Mills | Patent Agent

  Dr. Rachel Kahler is a registered U.S. patent agent with General Mills, Inc. in the greater Minneapolis-St. Paul Area. Dr. Kahler joined General Mills in 2013, after working for more than 7 years in law firms preparing and prosecuting patent applications and having support roles in portfolio management, litigation, and freedom to operate investigations. Over more than 15 years, Dr. Kahler has worked with a variety of technologies, but currently focuses on food, biotechnology, and chemistry-related patent prosecution and portfolio management.

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