Post on 14-Jun-2020
FICPI ABC CONFERENCEJune 16-20, 2010
Patent Prosecution from an Patent Prosecution from an In-House Perspective
Fairmont Chateau Laurier HotelOttawa, OntarioCanada
Ingrid Schmidt
Education:
B. Eng.(Met) from McGill University in Montreal, Quebec,
Canada
Studied for LLB at University of Witwatersrand in South Africa
Professional Qualifications:Professional Qualifications:
Registered Patent and Trade-mark Agent (CIPO, USPTO)
Professional Engineer (Ontario)
Professional Associations:
Fellow (IPIC), Past Chair Toronto Intellectual Property Group,
Examiner Patent Agent Examination Board (drafting),
Past President FICPI Canada, tutor FICPI Claim Drafting Clinic
IPSKI
Ingrid Schmidt
Career Development:
Research Scientist National Institute for Metallurgy (South
Africa) now MINTEK (1981-1984)
Trainee John & Kernick (1984-1986)
Partner Rogers & Scott (1986 -1999)Partner Rogers & Scott (1986 -1999)
Associate Gowling Lafleur Henderson LLP (1999-2007)
Patent Agent Rio Tinto, Montreal, Quebec, Canada (2007- )
Languages:
English, French, German (fair), Afrikaans (poor)
Personal Interests:
Snowboarding; sailing; camping; kayaking; cycling
Introduction
• A lawyer dies and goes to heaven. “This must be a
mistake,” she says to Saint Peter at the pearly gates.
• “I’m too young to die. I’m only 51”.
• “Fifty one?” says Saint Peter. “According to our
calculations, you’re 82.”calculations, you’re 82.”
• “How’d you get that?”
• “We added up your billable hours.”
• Source: Readers Digest December 2009
In-house practice
Billable hours
- Services are recovered from business units as a percentage
of fees incurred including fees paid to outside counsel
- No direct billing
Corporate CultureCorporate Culture
- Locations international over many time zones (Webex
conferences routine)
- Operating language is English but many discussions take
place in French
- Presentations in French with English language slides
- History of mergers & acquisitions; mixture of cultural
attitudes from France, Canada, Australia, Swiss, American
Europe
NorthAmerica Asia
Where we operate
Key
Mines and mining projects
Smelters, refineries, power facilities and processing plants remote from mine
Aluminium Copper DiamondsEnergyIron ore Minerals
Africa
SouthAmerica
Australasia
Asia
Understand your client
• Scientist/engineer: a technical consultant who may have
been promoted or changed responsibilities
• Director of R&D
• Technical Sales Manager – licensing out
• Director of Sales & Marketing• Director of Sales & Marketing
IP Staff Structure
IP Department(14)
Voreppe3 Professionals
2 Admin
Perth3 Professionals
1 Admin
Montreal4 Professionals
1 Admin
IP Portfolio Snapshot
• Patents
– 3700 cases (about 575 families)
– 1700 pending cases
– 50-60 new patent applications drafted & filed/year
• Trademarks
– 3500 cases (about 360 families)
– 50 new cases filed/year
• Domain Names
– Total portfolio unknown, but at least 280 domain names
• Licenses, contracts, NDAs
– More important as collaboration with third parties is increasing
In-house practice
Administrative support is minimal
– No dictation
– E-mails, presentations, spreadsheets
– File maintenance
– Database entry: internal support– Database entry: internal support
– Maintenance fees: centralized, out-sourced
– Electronic document management (poor)
– Practices vary between regions: France has tradition of
cradle to grave management direct filing all over the
world; Australia all outsourced; Canada hybrid
Management of each business division applies IP strategy
� Protect new developments which provide a competitive advantage;
� education
� Prosecute unauthorized 3rd party use of RT’s IP
IP Strategy - Implementation
� education of RT’s IP
� License out or sell RT’s IP rights, or license in or buy 3rd party IP rights
� Identify 3rd party IP rightswhich may apply
Inventor (s)
web
Innovation Management
Rating & RankingSubject Matter Experts
/Patent Committee
Invention Disclosure Form
In-housecounsel
Approve for Patent Filing
Defensive Publication
Source: Lecorpio, Inc
Critically evaluate portfolio
IR4903
IR4904
IR5297
IR5752
IR5794
IR5840
IR7210
IR7504
IR4098 US B1 1993
IR4509 US B1 1995
IR5477 US B1 2004
Annuity fees forecast - Euro
0 5000 10000 15000 20000 25000 30000 35000 40000 45000 50000
BR3539
IR3282
IR3514
IR3537
IR4414
IR4494
IR4736
IR4755
IR4840
IR4903
Support for mergers, acquisitions, divestitures
Rio Tinto has signed an agreement to sell its Alcan
Packaging Food Americas division to Bemis Company,
Inc for a total consideration of US$1.2 billion…
About Alcan Packaging Food Americas
Alcan Packaging Food Americas, headquartered in Chicago, is
a leading supplier of single and multi-layer, plain and printed a leading supplier of single and multi-layer, plain and printed
high-barrier plastic films, laminations, pouches…
The Food Americas division, which is headquartered in
Chicago, has approximately 4,600 employees at 23
locations in the US, Canada, Mexico, Brazil, Argentina and
New Zealand. Alcan Packaging Food Americas generated
revenues of US$1.5billion in 2008,accounting for 23 per
cent of Alcan Packaging's total revenues….
Dofasco Anecdote
WHY did my client abandon the CA application? (Did not pay
examination fee)
US prosecution:
• Difficult
• Close prior art• Close prior art
• Useful! Treatment of slag for road aggregate
• The corresponding US application was allowed
In-house practice
The beautiful art of Patent / Claim Drafting:
YOU
• I trust outside council to do professional job
ME
• expect to teach technology to outside counsel
• will interpret work of scientist to define invention
• define commercial importance in consultation with
relevant business unit
In-house practice
Procedural matters:
• give context to action required
• focus on the issues
• relate developments to file history: was prior art
considered in drafting application; have we seen the
art cited in other family member; in related invention?
• Outline possible next steps, deadlines, costs
• detailed analysis can follow later in consultation with
technical advisors
TIPS
Communications:
• Electronic
• Client file reference
• Meaningful e-mail headings• Meaningful e-mail headings
• Supporting documents – prior art; amended
claims; office action; translation; grateful for
access to PAIR and ESPACENET
Meaningful e-mail headings/text
From: XXX
Sent: 31 mai 2010 08:25
To: Schmidt, Ingrid (RTA - MAISON)
Cc: Ialenti, Laura (RTA); xxx
Subject: Your Ref.: IR 7539 US Our Ref.: 758/11974.83Subject: Your Ref.: IR 7539 US Our Ref.: 758/11974.83
Dear Ms. Schmidt:
Please see attached documents.
Best regards.
Meaningful e-mail headings
From: xxx
Sent: 4 juin 2010 13:08
To: xxx
Cc: xxx; Schmidt, Ingrid (RTA - MAISON)
Subject: Your Ref. 356563/D27856 VG; Our Ref. 217035.00045 -Preliminary Amendment due June 8, 2010Preliminary Amendment due June 8, 2010
Dear xxx,
We briefly reviewed this case, and we believe it is advisable to file a preliminary amendment with this case. We have drafted a preliminary amendment for your review and approval. If we do not hear from you by the June 8 deadline, we will file this application as requested without the preliminary amendment.
Best regards,
Meaningful e-mail headings/text
From: xxx
Sent: June 10, 2010 10:51 AM
To: Ialenti, Laura (RTA)
Cc: Schmidt, Ingrid (RTA - MAISON); xxx
Subject: Icelandic Patent No. 1785; Your Ref.: IR 4466; Our
Ref.: 36413-2
Dear Laura,
We are attaching a letter received from our foreign associate
concerning the above identified patent.
TIPS
Clear Communications:
• Cost estimates
• Deadlines
• Proposals: give a draft for approval by x or
pay fee if not instructed otherwise by y;
relate prosecution in country A to country B,
PCT etc
TIPS
Billing:
• electronic
• client file reference, title
• Some detail: professional services…identify • Some detail: professional services…identify
task, foreign associate
• Milestone billing
Discussion ???