PIUG 2008 Northeast Conference

Program – Tuesday, October 14, 2008

Meeting Abstracts and Biographies

Morning Session 1:
Certification, Licensure and Legal Liability for Patent Information Professionals

"Certification, Licensure and Legal Liability for Patent Information Professionals: A Primer"
Martin Wallace (University of Maine)

On Tuesday, 05 August, 2008, I posted an inquiry to the PIUG discussion email list soliciting comments regarding requirements for becoming a professional patent searcher, especially as they pertain to certification, licensure and legal liability. This inquiry sprouted from my curiosity as a patents librarian desiring to learn about substantive differences in qualifications, liabilities, and practices between patent librarians and professional patent searchers. My inquiry garnered many responses on the topic from a variety of perspectives. My presentation will outline and summarize those responses, while reflecting on the original intent of my inquiry from the perspective of an academic librarian and a representative of the Patents and Trademarks Depository Library Program (PTDLP).

Martin K. Wallace
Science & Engineering Librarian
Science & Engineering Center, Raymond H. Fogler Library
University of Maine, Orono, ME 04469

Martin Wallace, a science and engineering librarian at the University of Maine in Orono, is the Patents and Trademarks Depository Library Program (PTDLP) representative for the state of Maine. In 2007 he was the recipient of the PIUG Brian Stockdale Memorial Award. Martin is a currently a member of the Training Working Group of the PIUG Education and Training Task Force (PETT).

"The PIUG Wiki – A New Medium for PIUG Collaboration and Discussion"
Tom Wolff (Wolff Information Consulting LLC)

The new PIUG wiki is designed to further the PIUG mission "to support, assist, improve and enhance the success of patent information professionals through leadership, education, communication, advocacy and networking."

It is also a Web 2.0 development. According to the Wikipedia entry, "Web 2.0 is a living term describing changing trends in the use of World Wide Web technology and web design that aims to enhance creativity, information sharing, collaboration and functionality of the web. Web 2.0 concepts have led to the development and evolution of web-based communities and hosted services, such as social-networking sites, video sharing sites, wikis, blogs, and folksonomies."

The PIUG wiki has information sharing, social networking, and discussion forum functionality. It is expected to complement the current PIUG website, which will be reserved for generally static and official content, and the current PIUG Discussion List. The primary PIUG wiki space is open to all patent information professionals worldwide through a simple signup procedure. Some content and features are limited to current PIUG members. For example, only PIUG members are able to create and maintain "Personal Spaces" that allow members to share information about themselves. These personal spaces are accessible to all wiki registrants and are analogous to profiles posted on LinkedIn and other social networking sites. The PIUG Board of Directors and PIUG committees, task forces, and teams will have private wiki spaces open to their members only. Each wiki space will have one or more discussion forums to eliminate the need for sending mass email to participants.

Wiki spaces and forums have many powerful features including easy content creation and editing, easy application of links to other wiki and web content, submission of collaborative comments to any entry, optional attachment of documents with checkout/checkin control, and complete user control over whether the user is notified by email of new contributions (“watches”). Forums are fully integrated within the wiki and are open or closed in parallel with the wiki space in which they are hosted. Forum entries have clear topic thread format, full email push of new or edited content to all who are “watching” the forum, and no of out-of-office messages. The wiki discussion forum may be viewed in time as superior to the email discussion list due to these advantageous features.

This presentation will introduce the wiki and cover basic usage, including creating, viewing and watching wiki content. Current development issues will be highlighted to stimulate discussion, encourage active community usage, and promote providing input towards further wiki features improvement.

Thomas E. Wolff, Ph. D.
Wolff Information Consulting LLC
Web: www.wolffinfo.com

Tom formed Wolff Information Consulting LLC in 2006. He began is career at Amoco Chemical Company carrying out industrial organic chemistry and catalytic and polymerization development. Tom then moved to the Information Research and Analysis team in 1990 where he continued through the merger with BP and spin-off of the petrochemical and polymer company, Innovene, until its sale to Ineos. Tom works as a patent information specialist and technical advisor on a contract basis. He has been PIUG webmaster for two years and chairs the PIUG Electronic Communication Committee. Tom has a PhD from Stanford University in bioinorganic chemistry, B.S. from the Massachusetts Institute of Technology and is a registered patent agent. Additional information is available on the WolffInfo website at www.wolffinfo.com.

"The Facts on Legal Status - Who, What, Where, When & Why"
Jim Brown (FIZ Karlsruhe)

Following and understanding the various types of legal status as pertains to patents and applications is a daunting task. With various patenting offices around the world using differing legal status designations and codes, it is no wonder that today's patent searcher can be overwhelmed in this area. This talk looks at where to find international patent legal status data and what it all means. The various legal status designations will be broken down into seven categories - Examination, Opposition, Change in Owner, Not-in-Force, Reinstatement, Licensing and Supplementary Protection.

Jim Brown
Regional Sales Manager (IP)
FIZ Karlsruhe Inc
Email: jim.brown @ fiz-k.com

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Updates on US Patent Law, Rules, and Practice
Rick Neifeld (Neifeld IP Law, PC)

I will provide an update on important U.S. patent law, including the appeal in Tafas v. Dudas, recently proposed and promulgated changes in USPTO patent rules, and provide a vision where U.S. patent law and practice are heading in the years to come.

Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Home Page: www.Neifeld.com

Rick graduated from the University of Rochester with degrees in Physics and Mathematics, and he received a Ph.D. in Physics from Rutgers University in 1986. After working in R & D for the U.S. Army, Rick was hired by the law firm of Oblon, Spivak McClelland, Maier and Neustadt, PC, and began law school at George Washington University in 1990. From 1990 untill 2002, Rick worked his way up to partner and deputy head of the Oblon firm's interference section. In 2002, Rick left Oblon and founded Neifeld IP Law, PC, where he has been ever since.

Rick is also a former chair of the Interference Committee of the AIPLA. He is widely published on patent law issues many of which appear on his firm's web site, www.Neifeld.com. He also administers the popular-amongst-interference -practitioners "patentinterference" yahoo group list. He is also a co-founder of the www.patentvaluepredictor.com patent valuation service.
Rick is admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, the United States District Court for the District of Columbia, and the Court of Appeals for the Federal Circuit.

Rick's firm focuses on patent and trademark prosecution in the USPTO and abroad.

Locating Patent Information About the Newest High Technology:
A Case Study of Nanotechnology Patents
Ron Kaminecki (Dialog LLC)

Patent offices around the world are the recipients of applications for cutting edge technology and in many cases, they are the first outsiders to see these inventions. They are also challenged with trying to find prior art on concepts so new that there are no easy ways to identify the concepts, from class codes to correct terminology. Applicants are faced with the same problem - how do you find information about something that has not yet been invented? This session will discuss some strategies to consider when faced with locating information about something that may not exist outside of the patent application. A case study in searching for nanotechnology patents will be presented.

Ron Kaminecki
Dialog
A ProQuest Company
Chicago, Illinois
USA
ron.kaminecki @ dialog.com

Ron Kaminecki 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 Scientific 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.

Ron has written over thirty articles, book chapters, presentations and papers on various aspects of online searching and information retrieval since 1974, including R&D Management, FreePint.com and the Journal of Chemical Information. He has worked with searchers in the Fortune 500 and in major law firms and patent offices around the world. He has also worked as an expert witness in patent cases.

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. He is a co-author of NISO Standard Z-39.58, "Common Command Language for Online Information Retrieval."

He is a member of the American Bar Association, American Intellectual Property Lawyer's Association, Illinois State Bar Association, Chicago Bar Association, Patent Information User's Group, Special Libraries Association, and is a thirty-two year member of the American Chemical Society.

Ron has a BS in Chemistry; an MS in Computer Science and Information Systems; and a JD with a Certificate in Patent Law.

Why IP is Important and What an IP Attorney Looks for in a "Good Search"
Richard Woodbridge (Fox Rothschild LLP)

1. What an IP attorney looks for: Materials that can be easily plugged into an opinion letter.
   1. Are most important items identified and organized in logical order.
   2. What are sources?
   3. Could / should the search be extended?
2. Why is IP Important? The value of IP and IT (Intangible Assets) has increased from 29% to 79% from 1975 to 2005.
3. Approximately 65% of professional patent and trademark opinions end up in a recommendation that a patent or trademark application should not be pursued.
4. Patent Searches
   1. Patentability – most common.
   2. Infringement
   3. State of the Art (“Collection” searches)
   4. Check the forward citations!
5. Trademark searches
   1. “Knock Out”
   2. Comprehensive.
6. Trademark issues
   1. Is mark confusingly similar to another mark?
   2. Do the marks travel in the “same line of commerce”?
7. Resources
   1. www.uspto.gov (patents and trademarks).
   2. Google Patents (Patents only).
8. Do you have an agreement with your client? Scope of search? Liability of searcher? Disclaimers in engagement agreement and in materials supplied to your client?
9. When is out sourcing overseas useful? State of the Art – mostly.
10. Competitive Intelligence on a target.
11. Opportunities
    1. State of the Art to help patent attorneys get expedited examination.
    2. Rembrandts in the Attic – opening up.
    3. Due Diligence on potential acquisitions.

Richard C. Woodbridge, Esq.
Fox Rothschild LLP
Princeton Pike Corporate Center
997 Lenox Drive
Princeton, NJ

Richard focuses his practice in mechanical and electrical inventions, with an emphasis on computers, computer software, technology transfer, licensing and the organization of high technology businesses. He has appeared often on public television and radio and is the editor and chief author of Protecting Intellectual Property Under New Jersey Law, published by the Cambridge Institute, and co-author of the 1989 edition of Marketing Your Invention, a booklet published by the American Bar Association. He has served on: the New Jersey State Subcommittee for Capital for New Technology; the New Jersey Higher Education Committee to establish academic/industry guidelines; the New Jersey Technology Transfer Merit Program Selection Committee; the New Jersey Business Incubator Task Force; and Congressman Richard Zimmer's Science and Technology Advisory Committee.

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