Ford Khorsandian
Technology & Patent Research International
Ford Khorsandian is President of Technology & Patent Research (TPR) International, Inc., which
specializes in searching scientific and patent related information for patentability, infringement,
and validity/opposition research in the fields of chemistry, biotechnology and electrical/mechanical
art; and also provides patent analysis, and competitor intelligence studies. He holds a B.S. degree
from the U.K. and started his career in Europe with Derwent Information Ltd. He moved to the U.S. in
1986 and later became Vice President of Derwent North America, working with the patent and information
departments of Fortune 500 companies. He was later appointed as a Director at the Chemical Abstracts
Service (CAS) Division of the American Chemical Society, responsible for CAS international business in
Europe, Japan and other Pacific Rim countries . He has been working in the field of patent and
technical information for over 20 years, and has also served as the Vice Chairman of the Patent
Information Users Group (PIUG). He is currently the Chair of the PIUG Nominations Committee. He is
also the founder of the International Patent Information IPI-Award.
Biography
Abstract
A British politician once famously remarked, “A week is a long time in
politics.” Similarly, twenty years is a very long time in the business of patent
information. Since PIUG was formed in 1988, corporations, products and
technologies have been born, lived and some have died. Much of what we take for
granted today is almost unrecognizable compared with the practices of the 1980s.
This talk will be an essentially light-hearted review of how far we have come in
the practice of patent searching since those dim and distant days. Searchers of
a certain age will be encouraged in their nostalgia, whilst newer entrants to
the profession will wonder how we ever managed to get the job done.
Stephan Adams
Magister Ltd
Biography
Stephen Adams is managing director of Magister Ltd., a UK-based consultancy in
patent information formed in 1997. In addition to working on projects for a wide
range of clients, including patent offices, database producers and industrial
information teams, he speaks often at patent information events, and has
published a book in the KG Saur “Guides to Information Sources” series. He is a
past Director-at-Large of PIUG Inc. and currently sits on the Editorial Advisory
Board of the Elsevier journal “World Patent Information”. A chemist by
background, Stephen also holds a Masters degree in information science from City
University, London.
Abstract
Several patent information user groups in Europe are building up a network, to
share experiences, discuss topics relevant to all, and to support set-up of new
national user groups. To improve this cooperation a Confederacy was set up as an umbrella
organization.
This Confederacy has a focus on topics with a global impact, like training,
education and certification, and a leading role in stimulating other European
countries to start a Patent Information User group. This presentation gives an
overview of the participating user groups, the way they work, and the goals and
activities of the network.
Aalt van de Kuilen
Solvay Pharmaceuticals
European Confederation of Patent Information User Groups
Biography
Aalt van de Kuilen is the current President of the European Confederation of
Patent Information User Groups and a Board Member of WON (the Dutch patent
information user group). He worked with the WON and the GO Institute (in the
Hague) to establish the highly-regarded Dutch course for new patent information
professionals. Aalt is currently employed by Solvay Pharmaceuticals as a senior
patent information professional.
Yateen Pargaonkar
Procter & Gamble Co.
Biography
Yateen R. Pargaonkar works as a Senior
Information Scientist at Procter & Gamble Co., in Cincinnati, Ohio. Prior to
joining P&G, he worked as an Associate Law Librarian at Morrison & Forester in
San Diego, California and taught a course at the University of California at San
Diego (UCSD) on Patent Searching & Internet Research. Yateen has also served as
a Scientific Advisor at two Intellectual Property law firms in the New York
area. Yateen got trained as a biomedical scientist with a graduate degree from
University of Miami, Miami, FL and with three years of work experience at
Columbia University, New York City, NY. Yateen is a registered U.S. Patent Agent
and an active member of PIUG (Patent Information Users Group Inc.).
Some Statistical Properties of the USPTO Patent Citation Network 1963 – 2002
Abstract
The network of patent citations is distributed across dense clumps of citations
between closely related patents. The largest clumps are defined by the patent
technology categories and subcategories. The exchange of citations between these
groups evolves over time and reveals technological trends. By considering the
evolution of up- and down-, and in- and out- citations, conclusions about the
generality, originality, and productivity of patents and technology categories
can be drawn.
Bernard Gress
Fannie Mae
Biography
Bernard Gress is an economist at Fannie Mae. His research is in Genetic
Algorithms, Patent Citation Networks, and Nonparametric and Spatial
Econometrics.
A Review of Indian Patent Information
Abstract
Indian Patent Information is currently available by utilizing both the INPADOC
plugins to various search databases and a plurality of free, on-line resources.
Both these sources suffer from a couple of drawbacks including missing data,
bibliographic presentation of information, erroneous data and a limited period
being represented (for example, only valid patents are a part of some of these
resources). PatNMarks is the first Indian firm to provide Intellectual Property
information for the Indian landscape by using proprietary, in-house data-bases,
which have been manually entered and verified over several software cycles. Our
value-added services, Vaniham, Noutpam and Abha, cover the entire range of
Intellectual Property searches including Patents, Trademarks and Designs for the
Indian landscape. In this paper we present some perspectives on the organization
of Indian Patent literature, including the challenges we faced with the
classification, paper-copies, and transformation of arcane media to up-to date
and compatible databases, which provide the basis for our due-diligence
services.
Anu Vaidyanathan
PatNMarks
Biography
Anu Vaidyanathan is the CEO of PatNMarks, the first Indian company to provide
comprehensive IP information for the sub-continent, by means of its value-added
data-bases and services. Anu received her Bachelors of Science in Computer
Engineering from Purdue University and a Masters in Computer Engineering from
North Carolina, in 2001 and 2002. She is a qualified patent professional in
India and leads a team of Engineers and Scientists at PatNMarks, providing
services in all aspects of IP-Law for a niche clientele spanning the globe.
Semantic Search and Other Ways of Improving Chinese Patent Searches
Abstract
Based on sophisticated algorithms and precise computational models, Patentics,
a true concept-based full text search engine, builds intelligence into text to
represent a concept by mathematical vectors, allowing search to be language independent.
By doing this, for example, a search for Chinese patents may be undertaken by using
corresponding keywords in English.
Through the built-in conceptual model, patents are indexed mathematically and
grouped, depending on their meaning, into their own conceptual spaces by a specific
clustering algorithm, and each cluster of indexed words is related to a major subject.
Upon such a model words/phrases/documents are related to each other intrinsically, with
a ranking number representing their relevancy. What's more, the returned results can be
ranked according to any "concept word", and be further refined by use of some related
terms automatically generated by the system, thereby significantly easing the searchers'
burden of looking up synonyms.
Furthermore, the presentation covers others ways East Linden uses to improve the
search of patent information. Deep indexing and machine translation technologies used
in East Linden's products are also introduced.
Dong Zhao
Beijing East Linden Science & Technology Co., Ltd.
Biography
Mr. Dong Zhao is presently vice president of East Linden. He worked in ROSE-HULMAN
INST OF TECHNOLOGY, engaged in network development, information service, and
on-line retrieval etc. During the time, Mr. Zhao was active in many R & D works
related to information service and information management and joined SLA and
IALA, and addressed presentation in some very important state conferences many
times. From 2000-2004 Mr. Zhao Worked in EDS as software engineer and
accumulated very rich working experience working on many important projects. He
also Worked for a company in Miami, as senior software engineer, responsible for
frame design of communication software on leading ship, as well as the overall
management of the project progress. Mr. Zhao joined East Linden in 2005.
Panel Discussion
Current Strategy and Future Planning Initiatives
Panel Moderator:
Lucy Akers
Panel Members:
Sabine Brunger-Weilandt, FIZ Karlsruhe
Pierre Buffet, Questel
David Brown, Thomson Reuters
Robert Massie, Chemical Abstracts Service
Suzanne Robins, PIUG
Biographies
Lucy Akers, Bristol-Myers Squibb
Lucy Akers is a U.S. patent agent with a degree in chemistry. She worked for
five years as an independent patent information consultant and has held
corporate positions with Shell and ExxonMobil. Lucy is the Past Chair of the
Patent Information Users Group (PIUG), Inc. and is currently a senior patent
analyst with Bristol-Myers Squibb.
Sabine Brunger-Weilandt, FIZ Karlsruhe
Sabine Brünger-Weilandt is President & CEO of FIZ (Fachinformationszentrum)
Karlsruhe, Germany. She has many years of experience in senior positions in the
marketing and communications departments of renowned, international organizations
and enterprises. Her first contact with the information sector was in the early
eighties when she worked in the Documentation Center of the Deutsche Bank AG.
Then she took over as Head of Sales at the Handelsblatt publishing house, where
she was responsible for the area of business databases. After working as a Senior
Consultant for Steria Mummert Consulting, Hamburg, she spent several years as a
member of the Managing Board of Greenpeace, Germany. Later on, she became Head of
Strategic Consulting at the BBDO Group. She took over as President & CEO of
FIZ Karlsruhe in 2003. Mrs. Brünger-Weilandt holds a degree in History, German
Language and Literature, Education, and Philosophy from the Rheinische
Friedrich-Wilhelms-University of Bonn.
Pierre Buffet, Questel
David Brown, Thomson Reuters
Robert Massie, Chemical Abstracts Service
Robert J. Massie has been President of Columbus, Ohio-based Chemical
Abstracts Service (CAS), a division of the American Chemical Society,
since 1992. Prior to his appointment, Mr. Massie had extensive
information and publishing industry experience, including having served
most recently as President and CEO of Gale Research, Inc., the leading
general reference publisher serving libraries, schools and businesses. In
the early and mid-1980’s, Mr. Massie held senior executive positions with
the Torstar Corporation, the largest newspaper and book publishing company
in Canada. Prior to that, he was a management consultant with McKinsey &
Co. in New York, where his clients included the General Electric Company
and the New York Times Company. Before that, he practiced law with the
firm of Covington & Burling in Washington, D.C. Mr. Massie holds a joint
J.D./MBA degree from Columbia University, where he was a Harlan Fiske
Stone scholar; he is an honors graduate (B.A.) of Yale College. Mr.
Massie is a member of several Boards of Directors, including the Columbus
Chamber of Commerce and TechColumbus, has served on the Boards of COSI and
the Columbus Symphony, and is currently a member of the Columbus
Partnership. Mr. Massie has authored a number of papers, and speaks
frequently to industry groups on the subject of scientific research in the
digital age.
Among his awards and recognitions are the Miles Conrad Award, presented in
2008 by The National Federation of Advanced Information Services (NFAIS),
the Patterson-Crane Award for Outstanding Contribution to Providing
Chemical Information Services, 2003, and the Executive of the Year award
from the Industry & Technology Council of Central Ohio in 1998.
Suzanne Robins, PIUG
Suzanne Robins received a Bachelor's degree in Chemistry from the University
of Virginia in 1981 and a Master's degree in Chemistry from Rice University in
1983. After joining the team of patent searchers at the Monsanto Patent
Department in 1988 as an independent contractor she started her own company,
Patent Information Services, Inc. in 1991. She conducts patent and literature
searches for a wide variety of clients around the country. Suzanne is a member
of the American Chemical Society, the Division of Chemistry and the Law, the
Division of Chemical Information, and the Patent Information Users Group.
Suzanne is the current Chair of PIUG. She served as Planning Committee Co-Chair
for the 2005, 2006, 2007 and 2008 Annual Conferences and PIUG Vice-Chair from
June 2004-June 2006. Her previous roles in PIUG include Treasurer, Membership
Chair, and Annual Conferences Registration Chair.
Session on Patent Information – Searching, Analysis and Reporting
Session Opening Remarks
Bruce Mason
CIBA Vision Corporation
Biography
Bruce Mason serves as senior technical information specialist and competitive
technical intelligence analyst for CIBA Vision Corporation. He has 40 years
experience in the technical information industry and has specialized in patent
information for over 25 yrs. and competitive intelligence for over 12 yrs. He
has a BS degree in chemistry and professional certification in competitive
intelligence. He holds professional membership in the Chemical Information Div.
of the American Chemical Society, the Product Development and Management
Association, the Patent Information Users Group, and the Society of Competitive
Intelligence Professionals.
Patent Documentation Group: Past Successes and Future challenges
Abstract
The Patent Documentation Group (PDG) is a non-profit organisation consisting
of companies using technical, patent and other intellectual property related
information for their business. The PDG, which was founded in 1957 as a working
group by thirteen European chemical and petrochemical companies, seeks to
promote the effective and efficient use of patent information. It has a
reputation as an indispensable partner in all discussions relating to the
quality and enhancement of patent information. The PDG currently comprises forty
multinational companies from eight different countries engaged in the
automotive, chemical, electronics, engineering, household / personal care
products, petrochemicals and the life science industries.
Minoo Philipp
Henkel AG & Co
Biography
Minoo Philipp is the Patent Information Manager at Henkel AG & Co. KGaA in Germany. She is responsible for the corporate provision of patent information. Ms Philipp is a chemist with several years of R & D experience in the chemical industry and consulting, prior to starting a career in information. She is currently the President of the Patent Documentation Group.
Abstract
Since its first patent law enacted in 1984, we have seen significant growth of
patent applications to the Chinese patent office. With China's steady economic
growth rate and its market size, there is no doubt the trend will continue. This
presentation will use an FTO (Freedom to Operate) example to show different
methods to identify related patents, and compare coverage of Chinese patents
from various commercial vendors and free patent information sources. The pros
and cons of each source will be examined. From a westerner's perspective, the
evaluation of retrieved results and methods of obtaining the original patents
will also be discussed.
Zhifu Shu
Henry H. Murray
ExxonMobil
Biographies
Zhifu Shu joined ExxonMobil's Information Research & Analysis group in 2001.
Prior to that he was with SC Johnson Polymer (now part of BASF) in Racine,
Wisconsin, and with Pittsburgh Plate Glass in Pittsburgh, Pennsylvania. He holds
a BS degree in chemistry from Wuhan University, China, and a Ph.D. in organic
chemistry from the University of Michigan-Ann Arbor.
Henry (Hal) Murray was formally trained as an inorganic chemist at Yale
University, then broadened his background with postdoctoral studies at the
University of Bayreuth, Germany and Texas A&M University. After a year at
Engelhard, Hal joined Exxon Research and Engineering in 1989 as a researcher.
More than a decade ago, Hal joined the Information Research and Analysis Group.
Hal is a member of the EI EnCompass vocabulary task force and a member of the
American Chemical Society. In addition to patent searching, Hal’s other
professional interests include competitive intelligence and data visualization.
Implementing Effective U.S. Patent Invalidity Searches,
in View of KSR International, Co. v. Teleflex, Inc.
Abstract
An issued U.S. patent is presumed valid under 35 U.S.C. § 282. The burden of
establishing the invalidity of a patent or any claim thereof rests on the party
asserting such invalidity. In KSR International, Co. v. Teleflex, Inc., 127 S.
Ct. 1727 (2007), the Supreme Court relaxed the rigid application of the Federal
Circuit's long established standard of "teaching, suggestion, motivation" (TSM)
test for determining obviousness. This shift towards relaxed application of TSM
and to determine “whether there was an apparent reason to combine the known
elements” presents more opportunities for finding prior art during patent
invalidity searching.
This presentation relates to the implications of the U.S. Supreme Court ruling,
coupled with a discussion of selected U.S. laws, affecting U.S. patent
invalidity searching. The talk will discuss strategies and focus on
considerations for implementing effective patent invalidity searches in a post-KSR
world. Three examples of prior art cited and interpreted during recent patent
litigations citing KSR will also be provided.
Yateen Pargaonkar
Procter & Gamble Co.
Biography
Yateen R. Pargaonkar works as a Senior Information Scientist at Procter & Gamble
Co., in Cincinnati, Ohio. Prior to joining P&G, he worked as an Associate Law
Librarian at Morrison & Forester in San Diego, California and taught a course at
the University of California at San Diego (UCSD) on Patent Searching & Internet
Research. Yateen has also served as a Scientific Advisor at two Intellectual
Property law firms in the New York area. Yateen got trained as a biomedical
scientist with a graduate degree from University of Miami, Miami, FL and with
three years of work experience at Columbia University, New York City, NY. Yateen
is a registered U.S. Patent Agent and an active member of PIUG (Patent
Information Users Group Inc.).
Use of Advanced Search Tools to Optimize Patent Categorization
Abstract
Patent database search conducted for patent landscape in a technology area
results in a few hundred relevant patents. Presenting this large set of complex
information to clients is a big challenge. Patent search professionals simplify
the presentation of information by categorizing patents, in custom made
categories (this is done to reflect the business context of the firm) such that
the number of patents in each category is a significantly lower number than the
large initial set.
Analysis and categorizing of patents is time consuming. There is a need to
optimize this task. Patent databases available today are not very useful for
this. Also, text mining tools available do not provide flexibility to patent
searchers to define the attributes that categorizes a patent in a certain
category. In this session, we will discuss different techniques that can be used
to categorize large patent data sets in various domains including biotechnology,
medical devices, chemistry, telecommunications, software and others. The methods
are a mix of manual and automated techniques that have resulted in effective
categorization of very large data sets over time. Finally, we will demonstrate
the techniques used by Dolcera's team for effective categorization of several
hundred thousand patents to date.
Samir Raiyani
Dolcera
Biography
Samir Raiyani is the Chief Executive Officer and co-founder of Dolcera, a
premier intellectual property and market research services company based
out of Hyderabad, India and Silicon Valley, US. Samir brings more than a
decade of leadership in high-tech and knowledge service innovation to the
company. At Dolcera, Samir has helped establish relationships with nearly
two dozen of the world’s largest companies in life sciences, manufacturing
and high tech. Samir was also the co-founder of MediSpark (iScribe), a
mobile healthcare startup that is now part of CVS Caremark Inc., one of
world’s largest retail pharmacy and pharmacy benefit chains in the world.
Prior to Dolcera, Samir was Director at SAP Research in Palo Alto,
California. At SAP, Samir helped launch several new initiatives in the
areas of metro wireless networks (WiFi-mesh/WiMax), RFID, sensor
networking and mobile multimodality. He was instrumental in setting up
partnerships with Intel, Motorola and several other companies. He has a
Masters degree in Computer Science from Stanford University and an
undergraduate degree in Electronics and Communication from Gujarat
University.
Nancy Lambert
Biography
Nancy Lambert earned a B.S. with honors in
Chemistry from Carnegie Mellon University in Pittsburgh and went on to complete
two years of graduate work in Chemistry at Princeton University before receiving
her M.S. in Library Science from Columbia University. She joined 3M Company as a
patent information specialist in 1974 and became their principal chemical and
polymer patent searcher. In 1986, lured by the prospect of living in Northern
California, Ms. Lambert moved to Chevron Research Company and served as a patent
information resource for all of ChevronTexaco and its subsidiaries. Ms. Lambert
was one of 17 individuals in attendance at the first ever meeting of the PIUG in
Crystal City, Virginia. She has been involved with PIUG since its beginning in
1988. Ms. Lambert has also contributed many articles to the PIUG Newsletter and
has provided a semiannual Vendor Update column for the PIUG Newsletter. In
addition, she has promoted the spirit of community by serving as organizer and
Director of the “IFFI Players” group of actors at the PIUG Annual Meetings,
often re-writing whole scripts to fit the bill and slip in a generous helping of
patent related humor.
Abstract
Recent and upcoming enhancements involving patent information in CAS databases
and services will be reviewed. CAS database coverage of exemplified prophetic
substances from patents will be highlighted, as well as expanded access to Asian
patent information in CAplus.
Brian Sweet
CAS
Biography
Brian Sweet is a Senior Product Manager at CAS, currently responsible for
STN AnaVist, STN’s new analysis and visualization software. He is a 28
year veteran of the information industry, and has been with CAS for 5
years. Previously, he worked for BIOSIS in Philadelphia, Elsevier Science
in New York and Amsterdam, and Ovid Technologies in New York. He is a
former President of the NFAIS. Brian holds undergraduate degrees in
Biology and History from the State University of New York at Binghamton,
and a Master’s degree in Information Studies from Drexel University.
Turn the Page – Adding Value to Full Text
Abstract
A multi-year project designed to change the way users think about full text
patents is nearing completion. During this presentation Richard Garner will
outline the steps LexisNexis is taking to develop the world’s most
comprehensive, multi-lingual, full text patent database; highlighting some of
the processes involved in turning the printed page into a value-added database.
Richard Garner
LexisNexis
Biography
Richard Garner’s career spans almost 25 years in the patent information
industry. He established the British Library’s Patent Express document
delivery service in the early 1980s; led Derwent’s First Level Data
Division in the 1990s and is now IP Product Director at LexisNexis.
Anthony (Tony) Trippe
Chemical Abstracts Service
Biography
Anthony Trippe is Sr. Innovation Manager at CAS where he is responsible for
creating new product ideas around the area of chemical and life sciences
information. Mr. Trippe has a long history of working in the patent information
field and has been a sought after speaker for many years on the topic of patent
analysis and visualization. He has a background in organic chemistry having
gotten a Master’s degree in synthetic organic chemistry and worked early in his
career at several different pharmaceutical companies.
Abstract
A review of the past twenty years of changes in European patent information will
throw some light on why the EPO decided to take a close look at its patent
information policy in 2007. The new patent information policy introduces the
concept of "barrier free" patent information and allows the EPO to do more to
make search tools available to the public. What will this mean in the longer
term?
Curt Edfjäll
EPO
Biography
Curt Edfjäll, born on 17 May 1944 in Uppsala, Sweden, has a BA in economics. In
1967 he started his career at Sweden's Telecom in the Economic Division swiftly
moving on to become head of the finance section of the Swedish Patent Office. In
1973 he joined Sweden's Ministry of Trade as head of administration. In 1977 he
joined the European Patent Office as Principal Director Organization/EDP and in
1988 was appointed to EPO's Controller. In 1996 he was appointed to his current
post as Vice-President, Administration. This has included overall responsibility
for the EPO's patent information activities since 2001.
New Developments in WIPO’s Patent Information Services
Abstract
A core function of the patent system is the publication and dissemination of the
technical information contained in patent documents, so as to make technology
developments available to all. In this respect, the World Intellectual Property
Organization (WIPO) provides, through PATENTSCOPE® Search Service, access to the
technology contained in over 1.3 million published international patent
applications.
The presentation will cover WIPO’s patent information objectives, updates on
WIPO patent information products and services, with a particular focus to WIPO
PATENTSCOPE® Search Service (see http://www.wipo.int/pctdb/en/), the
authoritative source of PCT international patent applications. The presentation
will also address the challenges WIPO is facing to meet the requirements and
demands from the global users of patent information and, will lastly, include an
update on WIPO’s products on patent statistics.
Juneho Jang
WIPO
Biography
Mr. Juneho Jang, a national of Republic of Korea, is a Senior Patent Information
Officer of WIPO. He is responsible for WIPO's activities in coordinating the
provision of WIPO's patent information services and products, outreach
activities for the promotion of patent information to the developing countries,
and the development of cooperation projects with IP offices on the digitization
and dissemination of patent documents. Mr. Jang holds a PhD in Mechanical
Engineering from R.P.I in USA. He is also a qualified patent attorney in
Republic of Korea.
Abstract
The Eurasian Patent Organization has operated as a regional intergovernmental patent
authority for more than 12 years, granting patents valid in 9 contracting states.
Over the past years, the Eurasian Patent Office has developed a number of products
and services for patent information users. This presentation reflects the current
state of patent information activities at the EAPO. It is mostly focused on legal
status information, description of CIS-region databases in the EAPATIS search
information system, and availability of Eurasian data in INPADOC and the DOCDB databases.
Andrey Sekretov
Eurasian Patent Office
Biography
Andrey Sekretov has been working as a Principal Specialist of the Information and
Search Systems Department of the Eurasian Patent Office since 1999. His background is
in automation and finance. The scope of his responsibilities includes development of
publication procedures of the EAPO including data extraction and dispatch,
implementation of standards for patent information presentation, development of a
number of patent information products on optical discs, and the EAPO-Espacenet project.
As a patent information expert, he also participates in most of the IT projects at the EAPO.
Alison Taylor
Threshold Information Inc.
Biography
Alison Taylor, Ph.D., is currently a Scientific and Patent Information
Analyst at Threshold Information, Inc., a private search firm service
based in the Chicago area. Threshold provides information services for a
wide range of clients from large Fortune 100 companies through small,
independent businesses. Prior to Threshold, Alison was Manager of the
Patent and Chemistry Searchers team for Pharmacia / Monsanto company in
Skokie, IL, from 1999-2003. She started with another division of the
Monsanto company in 1995 – The Nutrasweet Company – and was Manager of the
library at the Mt. Prospect site. She started her scientific career as a
bench scientist at Abbott Laboratories in the Molecular Biology group and
has a BSc in Biochemistry from the University of Surrey in England and PhD
in Microbiology and Molecular Biology from King's College London.
BLAST and Similarity Database Searching
Abstract
Neither one database nor type of search (BLAST vs. text) is adequate for a prior
art or freedom to operate search. No one database is comprehensive. Although
there is a lot of overlap, each database and search type has unique data and
information content. This is true for sequence searches.
The presentation will focus on BLAST searches done for the Wyeth patent
attorneys. For most of the presentation, data from 15 sequences were accumulated
for the analysis. The examples use non-confidential sequences.
Topics include search and data display parameters based upon the attorneys’
wants and desires, basic procedure of a search to the final spreadsheet, example
of a spreadsheet, STN vs. Seqweb (DGENE/PCTGEN/CAS Registry vs. GENESEQ/Genbank),
STN database comparison, CAS Registry vs. USGENE and PCTGEN, unique hits from
CAS Registry vs. status and comparison by database on the country level.
Adriene Shanler
Wyeth
Biography
Adrienne Shanler is a Patent Information Scientist in the Patent Law department
at Wyeth and chair of the PIUG NE Conference. Formerly, she was a Senior
Information Scientist in the Technical Information Center of the Cyanamid
Agricultural Research Center in Princeton NJ. Expertise includes human and
veterinary pharmaceuticals, vaccines, formulations as well as biotech. She
describes herself as “a Jane of most trades”. In addition she is an EMT and
volunteers with Edison First Aid & Rescue Squad #1, teaches first aid and CPR
for the American Red Cross, and is an active member of Maine Coon Rescue and
Paws of Gold, an all-breed feline rescue group. Currently, Adrienne shares her
life with Maine coon cats, a Wegie, a Birman and one MCR foster cat. Hobbies
include needlepoint and science fiction.
Abstract
With the reclassification of the backfile largely complete in the major offices,
and new implementations of IPC searching in place on many tools, the benefits of
using IPC-R (IPC8) effectively can be realized. Now we can take advantage of the
power inherent in the IPCR code types, and use the codes to focus on retrieval
that is far more targeted than previous IPC versions allowed. Examples that
display some best practices for use of the codes are provided in 3-4 code areas,
and comparisons with other older classifications are provided. Editing of
alerting strategies could make internal review tasks far less onerous.
Sue Cullen
Thomson Reuters
Biography
Sue Cullen led a research group for 18 years, and has 16 years of IP management
experience including directing a licensing office and participation in redesign
of IP practices at a large diversified company. Since 2000 she has worked as a
consultant in IP analysis, and aims to help make people and companies successful
through effective extraction of intelligence from IP. Sue has a Ph.D. in
Microbiology from Albert Einstein College of Medicine, a B.S. in Chemistry, is a
U.S. patent agent, and an Adjunct Full Professor at Washington University in St.
Louis.
Abstract
Building and maintaining a patent classification system for prior art retrieval
is a resource-intensive and often protracted undertaking. The presentation will
cover the historical evolution of the United States Patent Classification (USPC)
system, including coverage of significant historical changes to aspects of USPC.
Included will be an overview of patent classification automation activities, as
well as recent competitive sourcing and international patent classification
harmonization activities.
Terrence Mackey
USPTO
Biography
Terrence is with the International Liaison Staff, Search and Information
Resources Administration, United States Patent and Trademark Office. Terry
attended the University of Wisconsin where he earned his B.S. and M.S. degrees
in Materials Science and Engineering. During his 20-year tenure at USPTO, he has
worked as a patent examiner and patent classifier, as well as served as project
manager for the development of electronic tools and business processes related
to United States Patent Classification (USPC) activities. Terry has also worked
as a patent analyst in the USPTO Office of Electronic Information Products'
Patent Technology Monitoring Division which is responsible for producing
numerous reports of patent activity and trends. Since 2004, when he joined the
International Liaison Staff, Terry has worked on both USPC and International
Patent Classification (IPC) reclassification activities, and in particular
efforts to harmonize USPC information with the IPC system.
Jane Thompson
Eisai Corporation of North America
Biography
Jane Thompson is a registered U.S. patent agent with an MSc in Chemistry. She
has spent over 18 years in the patent information profession, previously holding
positions in the Patent Departments at the Dow Chemical Company, Vertex
Pharmaceuticals, and Pfizer, Inc. She is currently a Senior Patent Information
Scientist in the U.S. IP Dept. of Eisai Corp. in Andover, MA where she conducts
searches and analysis in support of IP, R&D, and business clients.
Basic Training: Patents 101
A primer for those who are curious about the language of patents
Or, why do submarine patents have nothing to do with undersea vehicles?
Abstract
Many patent workers are assumed to have a certain minimum amount of knowledge
about this area of intellectual property. Non-Obviousness, 102 objections,
continuations-in-part, statutory disclaimers, prior art dates, and yes,
submarine patents are all concepts that are assumed to be common knowledge
amongst patent researchers. But how does one actually learn this (and similar)
information? A lot of it is not even taught in law schools! This session will
cover the basics of patents in non-technical, non-legal terminology to equip you
in the basics of US patents.
Ron Kaminecki
Thomson Reuters
Biography
Ron Kaminecki is Director, Intellectual Property Segment with the The Scientific
Business of Thomson Reuters. Ron rejoined Dialog in 1999 after almost three
years at a major pharmaceutical company. Prior to this, Ron held various jobs at
Dialog for over nineteen years, including Regional Manager and Senior Staff
Advisor. He got his start in searching technical information via manual, online
and batch systems at the IIT Research Institute as an Associate Information
Specialist. His current responsibilities at Thomson Reuters include working with
various intellectual property groups to help develop new solutions for
searching, to collect information from these groups, and to disseminate this
knowledge. He is a registered US patent attorney and is a member of the Illinois
Bar and of the Bar of the Northern District Court of Illinois, and was a US
Patent Agent.
Claim Based Search Experiments on Latent Semantic Patent Search Engines
Abstract
Several free and commercial patent databases with powerful and unique search
capabilities exist. However, accurate patent retrieval continues to be
challenging. It appears though, that not much research has gone into the area of
information retrieval for different types of patent databases. The lack of
analysis to compare results from a patent retrieval collection has caused patent
search to remain an exclusive domain for expert searchers who have substantial
experience and knowledge.
CK Rao
SciTech Patent Art Services
Biography
Dr. Chellapilla Kameswara Rao is a Manager (Client Relations) at SciTech Patent
Art Services Private Limited. Dr. Rao manages patent related analytics projects
in mechanical and electrical engineering areas. He has over a decade of academic
and more than two decades of industrial research experience. He has several
publications and presentations in the area of dynamics and vibrations of power
plant structures and equipments. He had worked as Head of intellectual property
management for four years in Bharat Heavy Electricals Limited before joining
SciTech Patent Art in 2006.
Citation Analysis as a Component of Coporate Patenting Strategy
Abstract
Citation analysis can reveal useful information about a company’s patenting
practices. The use of citation analysis, with relevancy codes, to improve
corporate patenting process efficiency will be illustrated and discussed.
Elliott Linder
Questel
Biography
Elliott Linder earned a B.S. in Chemical Engineering from New York
University. He served for nearly 23 years at the American Petroleum
Institute's Central Abstracting and Information Services as indexing
manager and editor of the API Thesaurus. During this period his
professional affiliation with Orbit began when, in 1975, Orbit was the
first service to make the API files available online. It was also during
this time that Mr. Linder forged professional lifelong relationships with
many of today's PIUG members. In 1993 Mr. Linder resigned from a
drastically changed API and left his beloved New York for Washington, DC
to join his other beloved and future wife, Marsha Fenn. The couple will
celebrate their 15th anniversary in July. After working on a number of
different assignments Mr. Linder joined Questel·Orbit Inc in 2002 as Sales
Manager, North America.
Abstract
This paper will discuss free and fee based databases for patent research.
Database costs for conducting patent research can range from free to
prohibitively expensive. For attorneys working at larger law firms, the fee
based databases are likely readily available. However, if you are working with
clients who are cost sensitive, work at a smaller firm, working on a pro bono
case, or are a solo practioner, you might want to consider the value of free
databases.
This paper will evaluate the content, searchability, and functionality of both
the free and the fee based databases. The paper will specifically lay out the
advantages and disadvantages of these databases and when research is best
conducted in fee based databases and when you can find the results that you need
in free based databases.
Alicia Griffin Mills
Biography
Panel Discussion
Rules, Regulations and Reform – Patent Tumult in the US
Panel Moderator:
Marty Goffman
Panel Members:
Ric Henschel
Rick Neifeld
Roy Zimmerman
Ron Kaminecki
Biography
Marty Goffman
Martin has a BA, MA, and Ph.D. in Chemistry (Physics Minor) from Temple
University. After working in industry for 20 years, Marty founded Martin Goffman
Associates, a full service business and technical research organization. He is
also a co-founder of the www.patentvaluepredictor.com patent valuation service.
In 2006 he started the SequenceBase Corporation, producer of the USPTO Genetic
Sequence Database, USGENE® currently hosted on STN and also available by
subscription. He is a past chair of the PIUG Discussion List.
The $100,000 Application And "Dead on Arrival"
Rule Changes For Biological Deposits and Markush Claims
Abstract
This presentation will contrast two proposed rule changes, which are
doomed under the recent district court decision blocking the USPTO
continuation and claims rules, and the USPTO's accelerated examination
program, which involved no rule change but presents major obstacles in
cost and potential risk. The USPTO proposed rule changes for biological
deposits are unlikely to be finalized, because they contain the same flaw
that the district court found in the continuation and claims rules — they
involve substantive change by an agency with no substantive rulemaking
authority. While proposing to require public availability of biological
deposits upon publication instead of upon grant, the USPTO concedes that
case law has stated that it suffices to make such deposits available upon
grant. Similarly, the USPTO proposed rule changes for handling Markush
claims are unlikely to be finalized for the same reason: The USPTO
concedes that contrary case law exists in its own notice of the proposed
change. The USPTO's accelerated examination program is the only change
that it has successfully implemented recently — perhaps because it
involve no rule changes of any kind. Unfortunately, the USPTO not only
shifted the primary burden of search and examination to the applicant, but
asks the applicant to do far more than any examiner would, thus pushing
the potential cost of prosecuting an application under the accelerated
examination program north of $100,000.
Ric Henschel
Foley & Lardner
Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and is a
member of the Chemical & Pharmaceutical, Intellectual Property Litigation and
International Practices as well as the Nanotechnology Industry Team. Dr.
Henschel graduated from Georgetown University Law Center (J.D., 1999), City
University of New York (Ph.D., organic chemistry, 1990), and the City College of
New York (B.S., chemistry, 1981). While in law school, he was president of the
Student Intellectual Property Law Association. Dr. Henschel is a member of the
Virginia and District of Columbia bars and is registered to practice before the
USPTO.
Bang! Pow! Right in the KSR!
Abstract
The apparent goal of the US Supreme Court of late has been to focus on
intellectual property issues, including such decisions such as KSR Int'l
Co. v. Teleflex, Inc. and MedImmune, Inc. v. Genentech, Inc. Actually,
the Court has a history of ruling on intellectual property cases going
back over a century and a half in Hotchkiss v. Greenwood, which dealt with
the standard of proof in patent cases and is now targeting other specific
areas in patent law. These decisions have led to various rules, tests and
even other decisions which help determine what can be patented and also
what rights may be extended to patent holders and even licensees. How do
these new decisions affect the various parties of patent law, including
inventors, assignees, searchers, attorneys, litigants and the general
public? An overview of these points will be given along with how such
changes in the law will affect you.
Ron Kaminecki
Thomson Reuters
Ron Kaminecki is Director, Intellectual Property Segment with The Scientific
business of Thomson Reuters. Ron rejoined Dialog in 1999 after almost three
years at a major pharmaceutical company. Prior to this, Ron held various jobs at
Dialog for over nineteen years, including Regional Manager and Senior Staff
Advisor. He got his start in searching technical information via manual, online
and batch systems at the IIT Research Institute as an Associate Information
Specialist. His current responsibilities at Thomson Reuters include working with
various intellectual property groups to help develop new solutions for
searching, to collect information from these groups, and to disseminate this
knowledge. He is a registered US patent attorney and is a member of the Illinois
Bar and of the Bar of the Northern District Court of Illinois, and was a US
Patent Agent.
Ding Dong, the Rules Are Dead! – and
Other Updates on US Patent Law
Abstract
The public 1, the USPTO 0, in the battle on rules limiting continuations
and claims! Tafas v. Dudas, decision dated 4/1/2008, permanently enjoins
the USPTO from promulgating these rules. The USPTO plans to appeal the
decision. I will briefly explain the decision, the issues, and the
USPTO's prospects for ultimate success in the Courts. Second, the
decision in Tafas impacts the fate of other proposed rules. I will
discuss that impact on at least the proposed new rules for appeals and
IDSs. Third, I will provide some insight into the appeals process in the
USPTO, the impact of the proposed rules on appeals, and reveal some
startling statistics about appeals and explain why those statistics are so
important! Fourth, I will review some of the recent important judicial
decisions and provide an update on legislative developments.
Rick Neifeld
Neifeld PLC
Rick is a patent attorney. He has degrees in physics and mathematics, and a
Ph.D. in Physics from Rutgers University. Rick is the founder of Neifeld IP Law,
PC, which focuses on patent interference, and patent and trademark prosecution
in the USPTO and abroad. Rick has been involved in over fifty patent
interferences, is a former chair of the Interference Committee of the AIPLA, and
also administers the popular-amongst-interference -practitioners "patentinterference"
yahoo group list. He is widely published on patent law issues and many of those
publications appear on his firm's web site, www.Neifeld.com. He is also a
co-founder of the www.patentvaluepredictor.com patent valuation service.
The Three Weird Sisters of Patent Reform
Abstract
Good things, and often bad, come in threes. Winning the Trifecta is a
good thing. Combining incompetent top PTO management, ill-considered and
probably illegal patent practice rules changes, and the Patent Reform
bills in Congress makes a dangerous witches' brew threatening patent
attorneys, patent searchers, and the value of patents in the US. I'll
present some of the prior art searching and analyses provisions of
proposed rules and Patent Reform bills to consider their negative impacts
on costs, available capacity to comply, and devaluing US patents if all
become effective.
Roy Zimmerman
Medtronics
Roy Zimmermann is the Principal Patent Searcher for Medtronic, a large
medical device manufacturer. During his 15 years at Medtronic, Roy worked
initially in Medtronic's library, but has worked for more than a decade for
Medtronic's chief patent counsel supporting patent attorneys, litigators, and
patent portfolio managers. Roy serves on the Vendor Committee for PIUG, where he
has concentrated on web-based services, Micropatent, Delphion, Lexis. He also
serves on advisory boards to several online services, including Questel-Orbit.
He recently joined the IPI Selection Board for the annual IPI Award.
Doreen Alberts
Theravance
Biography
Doreen Alberts is the Associate Director of the Knowledge Management
Department at Theravance. After 11 years as a medicinal chemist at SmithKline
Beecham, Doreen transferred to the Information Management Department as an
information analyst. In 2000, she was recruited to join Theravance to build
their information management capabilities. Doreen is currently a member of the
Advisory Committees for Questel Orbit and OVID Technologies. Doreen is one of
the recipients of the 2007 PIUG Service Awards in recognition of her service to
PIUG as the Annual Conference Sponsorship Committee Chair for 2005-2006 and the
Strategic Planning Committee Chair for 2006-2007. She is the Program Co-chair of
the 2008 PIUG Annual Conference.
Abstract
Investors are becoming increasingly savvy in this knowledge economy. A
noticeable trend has emerged within the patenting arena in which those seeking
to acquire, license or invest in patented technology are asking more focused,
detailed and tough questions in order to assess whether commitment is warranted.
Being satiated with superficial or incomplete information or having lax
attitudes towards intellectual property appropriation are becoming a distant
memory, as more realize that by thoroughly scrutinizing patent rights before
purchase, the exposure to infringement risks or the risk of purchasing a "lemon"
can be mitigated.
As both a patent searcher and patent attorney, it has been my experience that
comprehensive freedom to operate searches and patent validity investigations
have become fundamental in advising clients on how to effectively approach any
in- or outlicensing activity or purchase arrangements relating to patents. In
order to advise clients, patent attorneys need reliable searches and this
presentation will examine the features of a sound approach to patent research
and analysis in support of patent acquisition, licensing or investment in
patented technology. Special considerations concerning Australian and New
Zealand patent law and resources will also be discussed.
Susanne Hantos
Davies Collison Cave
Biography
