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Practical Implications of Mayo v. Prometheus



Thursday, April 19, 2012
Product Code - lgn22
Speaker(s): Drew Hirshfeld, USPTO; Hans Sauer, Ph.D., Biotechnology Industry Organization; Lisa M. Hemmendinger , Ph.D., Banner & Witcoff, Ltd.; Paul M. Rivard, Banner & Witcoff, Ltd.
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This presentation will provide analysis and insight on the U.S. Supreme Court’s recent ruling in Mayo v. Prometheus involving patent eligibility of methods in the area of personalized medicine. Mayo provoked more than 40 amicus briefs from organizations and companies including BIO, AIPLA, IPO, ACLU, Hewlett Packard, Verizon, Roche and Nine Law Professors.

From this program, you will learn about the decision and its implications through reasoned analysis and thoughtful insights from a panel of experts from the biotech industry, private practice, and the U.S. Patent and Trademark Office. The faculty will provide key insight on evaluating your patent portfolio in light of this ruling, as well as a discussion of effective strategies for protecting intellectual property going forward.

Educational Objectives:

• Gain an understanding of how Mayo v. Prometheus may affect existing patents.
• Learn the best strategies and practices to protect innovations in light of this decision.
• Learn how the USPTO is implementing the decision and training examiners.
• Gain expert insight as to what may lie ahead for patents in the life science area.

Who would benefit from attending the program?

This presentation will be beneficial for in-house counsel, IP practitioners, business executives and academics, as it will provide analysis of the decision as well as practical tips and strategies.

Program Level: Advanced

Drew Hirshfeld, USPTO; Hans Sauer, Ph.D., Biotechnology Industry Organization; Lisa M. Hemmendinger , Ph.D., Banner & Witcoff, Ltd.; Paul M. Rivard, Banner & Witcoff, Ltd.

Drew Hirshfeld, United States Patent and Trademark Office
Mr. Hirshfeld is the Deputy Commissioner for Patent Examination Policy at the USPTO. In this capacity Mr. Hirshfeld provides staff assistance in establishing patent examination and documentation policy standards for the Commissioner for Patents and is the authority on patent laws, rules, and examining practice and procedure. Mr. Hirshfeld also reviews and revises the Manual of Patent Examining Procedure. The Deputy Commissioner for Patent Examination Policy is the deciding official for petitions on patent matters delegated by the Under Secretary and Director, for ordering Under Secretary and Director ordered re-examinations, for Patent Quality Review appeals to the Commissioner for Patents, and for requests for reconsideration of the Board of Patent Appeals and Interferences decisions.

Mr. Hirshfeld began his career at the USPTO in 1994 as a Patent Examiner. He received a B.S. from the University of Vermont, and a J.D. from Western New England College School of Law.

Hans Sauer, Ph.D., Biotechnology Industry Organization
Dr. Hans Sauer is Deputy General Counsel for Intellectual Property for the Biotechnology Industry Organization (BIO), a major trade association representing over 1,100 biotechnology companies from the medical, agricultural, environmental, and industrial sectors in the United States and internationally. At BIO, Dr. Sauer advises the organization's board of directors and various staff committees on patent and other intellectual property-related matters. Prior to his current position, he served as Chief Patent Counsel for MGI Pharma, Inc., in Bloomington, Minnesota, and Senior Patent Counsel for Guilford Pharmaceuticals Inc. in Baltimore, Maryland.

Dr. Sauer has 15 years of professional in-house experience in the biotechnology industry, where he worked on several research and drug development programs, being responsible for patent prosecution and portfolio oversight, clinical trial health information privacy, and sales and marketing legal compliance. He has an M.S. degree in Biology from the University of Ulm in his native Germany, a Ph.D. in Neuroscience from the University of Lund, Sweden, and a J.D. from Georgetown University Law Center in Washington, D.C., where he serves as adjunct professor.

Lisa M. Hemmendinger , Ph.D., Banner & Witcoff, Ltd.
Dr. Lisa M. Hemmendinger focuses her prosecution and counseling practice in the fields of biotechnology, including diagnostic and therapeutic methods, and pharmaceutical sciences. Dr. Hemmendinger earned her Ph.D. in Biology from the University of Chicago and her Juris Doctor cum laude from the University of Maryland and had over twelve years of scientific experience in academics before entering the practice of patent law. Dr. Hemmendinger is licensed to practice in Maryland and Washington, D.C. Dr. She practices in the Washington, D.C. office of Banner & Witcoff.

Paul M. Rivard, Banner & Witcoff, Ltd.
Mr. Rivard has extensive experience in counseling in intellectual property matters and in preparing and prosecuting patent applications in the chemical and pharmaceutical arts. Prior to entering private practice, Mr. Rivard served as a Patent Examiner in the U.S. Patent and Trademark Office. He earned a Juris Doctor cum laude from Catholic University in Washington, D.C. and a Bachelor of Science in chemical engineering from Clarkson University in Potsdam, N.Y. Mr. Rivard is licensed to practice in Virginia and Washington, D.C. Mr. Rivard practices in the Washington, D.C. office of Banner & Witcoff.

This program is CLE-credit eligible.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the Legal and Business CLE Accreditation Coordinator.

Hardship Policy
Bloomberg BNA offers a hardship policy for any attorney earning less than $30,000 per year. If an attorney wishes to take advantage of this option, he or she must do so in writing and also provide proof of hardship. If approval is granted, a discount of 50% off the full registration price of the program will be awarded.


Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.

• Bloomberg BNA Subscriber - OnDemand format $199
• Non-Subscriber - OnDemand format $249
• CD recording of program $199 (Subscriber and Non-Subscriber)

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