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 ???