VINCENT (VINCE) K. SHIER, Ph.D., a partner in the firm's Chemical Patent Prosecution and Post Grant Patent practice groups, leads the team responsible for reexaminations and reissues in the fields of chemistry, biochemistry, biotechnology, biomedicine, genetics, molecular biology, and pharmaceuticals. As the United States Patent and Trademark Office's (USPTO) Central Reexamination Unit has become a viable alternative to traditional litigation-based validity challenges, a significant portion of Dr. Shier's work has become focused on post-grant proceedings. This includes reexamination and reissue practice on behalf of patent holders and third-party challengers. Additionally, he counsels patent holders on the strategic benefits of self-initiated and third-party requests for reexamination. Consistent with his role as a team leader in the Post Grant Patent practice group, Dr. Shier actively contributes to the firm's Patents Post Grant Law Blog, sharing insights and commentary on a complex array of existing and proposed post-grant options, observed trends, practice tips and news relating to patent reexamination, reissue and the new post grant procedures introduced by the Leahy Smith America Invents Act. He also speaks throughout the world to clients, attorneys and the chemical industry on reexaminations conducted concurrently with litigation, obviousness, and general patent prosecution in the United States. Dr. Shier has also worked in other high-stakes areas before the USPTO where he has experience in interference proceedings. Additionally, he has worked extensively in the patent prosecution highway and accelerated examination programs before the USPTO. As a prosecuting attorney, Dr. Shier's work also involves preparing and prosecuting patent applications in diversified technologies within the chemical and biotechnology disciplines involving genetics, molecular biology, therapeutic methods, pharmaceuticals, DNA microarray technology, plants, food products, and a diverse array of chemical products and processes. Another aspect of Dr. Shier's practice entails client counseling and the development of patent portfolio management strategies. While earning his Ph.D. in biological chemistry, Dr. Shier conducted his thesis research under the direction of Professor Stephen J. Benkovic (a member of the National Academy of Sciences), which focused on the characterization and inhibition of an essential, non-restriction/modification adenine DNA methyltransferase from Caulobacter crescentus. This enzyme served as a paradigm for cell-cycle regulation in alpha-proteobacteria and served as the model for the targeted development of novel antibacterial agents to selectively target pathogenic members of this class of bacteria, including the plant pathogen Agrobacterium tumefaciens, and the animal pathogen Brucella abortus. He also conducted extensive research involving kinetic analysis, surface plasmon resonance, and analytical ultracentrifugation. Professional Affiliations American Bar Association, Section of Intellectual Property Law, Patent Inter Partes Proceedings Committee (Committee 104); Special Committee on Biotechnology, Chemistry, Medicine, and Pharmacology (Committee 160) Intellectual Property Owners Association (IPO), Patent Office Practice (U.S.) Committee; Patent Office Inter Partes Proceedings Committee American Intellectual Property Law Association (AIPLA) Experience Representative Matters Successfully obtained a USPTO reexamination certificate for client DyStar of its US 5,586,992 patent relating to a method of indigo dyeing previously held invalid by the Federal Circuit. In the corresponding reexamination, the USPTO considered the Federal Circuit's claim interpretation and analyzed the same prior art before the Federal Circuit. Nevertheless, the USPTO arrived at a different conclusion, disagreeing with key factual issues analyzed by the Federal Circuit in relation to obviousness. In its decision, the USPTO confirmed the patentability of three DyStar claims, allowing three amended claims, and 15 new claims. The USPTO decision ensured that DyStar retained its patent monopoly over its innovative dyeing process. News PTO Announces Proposed Multi-Track Examination Initiative - Oblon, Spivak Highlights the Main Aspects of Multi-Track Examination Initiative
Friday, July 23, 2010 Patents Post Grant (PPG) Law Blog
Monday, November 9, 2009 Oblon, Spivak Launches Patents Post Grant Law Blog
Monday, November 9, 2009 Oblon, Spivak Forms Two New Practice Groups
Thursday, March 12, 2009 USPTO Trumps Federal Circuit on DyStar and Determines Patent Claims Valid
Tuesday, January 13, 2009 Oblon, Spivak Elects Four New Partners and Names Six New Senior Associates
Wednesday, January 2, 2008 Oblon, Spivak Elects Four New Members and Elevates Six Attorneys to Senior Associate
Friday, January 5, 2007 Publications Plant Biotechnology and Agriculture
Wednesday, January 11, 2012 Is Dilatory Behavior In Provoking An Interference A "Failure To Engage In Reasonable Efforts To Conclude Prosecution Of The Application"?
Wednesday, November 2, 2011 Blog USPTO to Open Satellite Office in Detroit
Thursday, December 16, 2010 In a teleconference with reporters on Thursday, December 16, 2010, Commerce Secretary Gary Locke - whose department includes the Patent Office - announced that the U.S. Three Strikes, You're Out!? Apotex's Latest Attempt to Invalidate the PLAVIX® Patent Denied by USPTO
Friday, July 09, 2010 In the world of pharmaceuticals, every day counts. Indeed, when the subject matter is a block-buster drug like Bristol-Myers/Sanofi's anti-blood clot drug Plavix® every day of U.S. sales averages nearly $15.5 million dollars (reported U.S. Petitions Requesting Continued Reexamination (RCR)
Wednesday, July 07, 2010 In patent application prosecution, patent owners may file an RCE or continuation to continue prosecution as a matter of right under 37 CFR 1.53(b) or 1.53(d) or 37... |