RE: [PIUG List] FW: Your input for my Oct CAS/STN presentation on "why IP law research is different from IP patent research" is welcome

From: Curcigonzalez, Lucy <LCurcigonzalez_at_kenyon.com>
Date: Thu, 11 Sep 2008 14:44:32 -0400

Thank you you just gave me more to support my argument

________________________________

From: Paulette Toth [mailto:ptoth_at_kirkland.com]
Sent: Thursday, September 11, 2008 2:15 PM
To: PIUG Discussion List @ Listbox
Cc: PIUG Discussion List @ Listbox
Subject: Re: [PIUG List] FW: Your input for my Oct CAS/STN presentation
on "why IP law research is different from IP patent research" is welcome



Lucy:

I assume that one of the conclusions to your argument is the law firm
librarians' need for ad hoc pricing as opposed to flat-fee yearly
contracts for services which may be needed only occasionally.

Also, there is the fact that in the large general practice law firm
research environment, patent research is one area among many.
Enterprise-wide licenses for patent search and scientific information
which carry a large price tag will not be entertained by the powers of
the purse no matter how great the need.

Reasons why most law firm librarian searchers are generalists, rather
than specialists, see below.

There are different usages of patent information which are part of the
IP Practice Groups, but are really corporate, litigation, marketing,
professional education in thrust. For example:

a. due dilligence for corporate deals (Who owns what IP assets?)
b. expert witnesses: patent inventors, scholars (Who knew what when?
Find every word they ever uttered in publications, speeches or in
court.)
    (1)use of patents to identify expert witnesses: Who are the experts
in a particular techincal or scholarly field, preferably academics at
top universities in the locality of x district court?
c. service of process: contact information for above, using patents as
source of last known address (Where are they now?)
d. word parsing: (Definitions from multiple dictionaries, plain
English language and technical, published in various years).
e. tactical/statistical: best district courts in which to bring a case
(What is the time to trial, win rate, in x,y,z district courts?).
e. marketing the firm/competitive intelligence: patent portfolios (Who
represents the patent owners? Should we pitch our services to those
patent holders?)
f. speeches by partners to junior attorneys or potential clients in
new hot topic areas (Bring us up to speed on a technology we would like
to excel in.)
 

Paulette Toth | Information Services Manager | Kirkland & Ellis LLP
153 East 53rd Street 40th Floor | New York, NY 10022 |(212) 446-4990
DIRECT | (212) 446-4900 FAX
 
 









"Curcigonzalez, Lucy" <LCurcigonzalez_at_kenyon.com>

09/11/2008 01:09 PM
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[PIUG List] FW: Your input for my Oct CAS/STN presentation on "why IP
law research is different from IP patent research" is welcome

                




Friends and Colleagues:
 
    As I mentioned at the AALL PLL SIS IP Group in Portland this past
July, STN has rescheduled their "Americas Conference" for this October
5-7 now in Columbus. I also to bring the concerns of IP law firm
librarians to CAS/STN. Your comments and observations are not only
welcome - I need your help! Here's my unedited abstract:
Several significant factors distinguish the use of patent information in
IP law firms from that of R&D in industry. The initial difference is
that the law firm researcher involvement in the patenting process
starts after the invention. This research concentrates on the legal
rather than the purely scientific or technical aspects of the invention
whether that be during the patent prosecution, administrative
proceedings in the Patent Office, the FDA, FTC or the ITC, litigation
and licensing. Law firm use of patent information is client driven not
only by only by the wide range of technologies represented from shoe
designs to nanotechnology but by client billing policies. As result,
most law firm patent researchers need a wider variety of both electronic
and print resources from information aggregators and document delivery
providers.

Lucy
Lucy Curci-Gonzalez | Director of Library Services

Kenyon & Kenyon LLP
One Broadway | New York, NY 10004-1007
212.908.6122 Phone | 212.425.5288 Fax
lcurcigonzalez_at_kenyon.com <mailto:LCurcigonzalez_at_kenyon.com> |
www.kenyon.com <http://www.kenyon.com/>
 
______________________
This message, including any attachments, may contain confidential,
attorney-client privileged, attorney work product, or business
confidential information, and is only for the use of the intended
recipient(s). Any review, use or distribution by others is prohibited.
If you are not the intended recipient, please contact the sender and
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________________________________


From: Curcigonzalez, Lucy
Sent: Thursday, August 09, 2007 5:48 PM
To: Private Law Libraries Intellectual Property
Subject: Your input for my Oct CAS/STN presentation on "why IP law
research is different from IP patent research" is welcome

    I finally have a topic for the 10-15 minute presentation I am making
as part of a panel on chemical patent research grandly named "
"Managing Scientific Patent Information in the 21st Century" at upcoming
2007 CAS Americas Conferencethis October in Arizona.
 
    Colleagues, I solicit your comments, opinions and war stories on how
and why IP legal research in corporate legal departments and law firms
is different from research done by patent and chemical researchers. I
will gladly credit you with your help and shield your names and firms
from the public.
 
    I am in some heady and heavy hitter company on this panel. The other
panelists are Cynthia Barcelon Yang, Director of the Patent Analysis
Group at Bristol-Myers Squibb's Pharmaceutical Research Institute (PRI)
Information & Knowledge Integration Informatics and Anne Marie Clark,
PhD, a Principal Scientist, Intellectual Property at Bausch & Lomb in
Rochester, NY.
 
    Hope to hear from you soon as my abstract is due on the 17th!
 
Thanks in advance as always for your time and assistance,
 
Lucy
 
 
Lucy Curci-Gonzalez | Director of Library Services
Kenyon & Kenyon LLP
One Broadway | New York, NY 10004-1007
212.908.6122 Phone | 212.425.5288 Fax
lcurcigonzalez_at_kenyon.com <mailto:LCurcigonzalez_at_kenyon.com> |
www.kenyon.com <http://www.kenyon.com/>
______________________
This message, including any attachments, may contain confidential,
attorney-client privileged, attorney work product, or business
confidential information, and is only for the use of the intended
recipient(s). Any review, use or distribution by others is prohibited.
If you are not the intended recipient, please contact the sender and
delete all copies.
 
 

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Received on Thu Sep 11 2008 - 21:06:40

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