Eli Lilly and Company v. Canada (ICSID Case No. UNCT/14/2), Expert Report of T. David Reed (January 26, 2015)
1. Background and Qualifications
I. I am a U.S. patent agent with particular expertise in the filing of applications under the Patent Cooperation Treaty ("PCT"). I was hired by The Procter and Gamble Company ("P&G") in Cincinnati, Ohio (where I currently reside) in 1966.1 I pursued a 40 year career within the company, until my retirement in 2006. In the last 18 years of my career with P&G, I was responsible for the launch of P&G's international patent filing practice under the PCT, including development and oversight of that practice. From the start of P&G's PCT practice in 1990 until I retired in 2006, I was the agent ofrecord on or managed the filing of approximately 9500 PCT applications.
2. I am a graduate of Northwestern Uni versity, having received a Bachelor of Science degree in Chemical Engineering in 1966. In my early years with P&G I also completed postgraduate studies in chemical engineering at the University of Cincinnati. During the first half of my career at P&G, I worked as a Product Deve lopment Engineer, focusing on a variety of projects related to P&G's products and manufacturing processes. Jn 1980, J took up responsibility as a Technical Advisor to P&G's Legal Division and to P&G's external legal counsel on a number of contentious matters, including two major patent litigations.
3. During my last 18 years with P&G, I was Manager of the company's International Patent Filing and Prosecution Group ('·IPFPG"), and was eventually promoted to Senior Patent Advisor (Section Head) in that position. The IPFPG was responsible for preparing the formalities required for the fil ing of patent applications in countries outside of the United States, 2 identifying and working with fo reign patent agents and forwarding applications to them, reviewing any notices of objections or rejections issued by national Patent Offices (usually called "official actions .. ) with regard to patent applications filed by P&G in foreign jurisdictions, and instructing foreign patent agents on how best to respond those official actions.3 In 1988, and in connection with my taking over responsibility for the IPFPG, I became registered to practice as a Patent Agent before the United States Patent and Trademark Office.
4. In my capacity as Manager of the IP FPO, I notably managed the transition to and development of P&G's international patent filing practice under the PCT. Specifically, I put in place the procedures and work flow of P&G's PCT practice, and trained P&G's Intellectual Property Division staff on the PCT process, with a view to max imizing P&G's benefits from practice under the Treaty. In December 1990, under my management, P&G fully converted its foreign patent filing practice in PCT Contracting States to a PCT practice.4 This meant that instead of simply fil ing in one jurisdiction and thereafter re-filing parallel applications in multiple national jurisdictions (i.e. the practice under the Paris Convention, which I will explain in more detail below), P&G needed only to fi le one international application under the PCT (typically on the basis of a national patent application filed in the previous 12 months), which could then be converted into equivalent national patent applications in all PCT Contracting States where we wished to seek patent protection. 5