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 | www.kenyon.com
______________________
This message, including any attachments, may contain confidential,
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confidential information, and is only for the use of the intended
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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 Conference this 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 | www.kenyon.com
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This message, including any attachments, may contain confidential,
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all copies.
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Received on Thu Sep 11 2008 - 21:00:34
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