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The International Society for Patent Information Professionals

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PIUG 2009 Annual Conference
An International Conference for Patent Information Professionals

Searching for Patents Beyond Your Borders

Overview | Program | Conference Materials (PIUG members only) | Sponsors | Travel | Workshops

Saturday, May 2 to Thursday, May 7, 2009

Hyatt Regency San Antonio
123 Losoya
San Antonio, Texas, USA 78205
Tel: +1 210-222-1234

Conference Program

Conference Events

Registration covers all these conference events:

  • Speakers Dinner (by invitation only) – Saturday evening, May 2
  • PIUG Business Meeting – Sunday afternoon, May 3
  • First-Time Attendees Reception – Sunday evening, May 3
  • Welcome Reception – Sunday evening, May 3
  • IPI Award Ceremony and Dinner Celebration – Monday night, May 4
  • Conference breakfasts, lunches, and refreshments during meeting breaks – Monday-Wednesday, May 4-6
  • IFFI Players Production and dessert reception – Tuesday evening, May 5

The deadline for Advanced Registration closes Friday, May 1, 2009. The registration fee is $550 and is not refundable after April 4, 2009. On-site registration may be possible if space is available. See full details on the Registration page.

Conference Agenda

Pre-conference Workshops, Business Meeting, and Receptions

Workshops on Saturday, May 2, Sunday, May 3 and Tuesday, May 5. See the Workshops page.

Technical Program

Monday, May 4

Tuesday, May 5

Wednesday, May 6

Post-conference Workshops

Workshops on Thursday, May 7. See the Workshops page.

Pre-conference Workshops, Business Meeting and Receptions
Saturday and Sunday

Saturday, May 2
Workshops

1:00pm-5:15pm
Registration is required for all workshops; some have fees. See Workshop page for details.
1:00pm-2:30pm Creating Combined Reports with BizInt Smart Charts for Patents - Present and Future
BizInt
Live Oak
1:00pm-2:00pm Web 2.0 Tools and Processes for Patent Research
Dolcera
Pecan
2:00pm-3:00pm Markush Space Investigation and its Relevance to Intellectual Property Analysis
DecrIPt
Blanco
3:15pm-4:15pm New developments at Sumobrain: Launch of Biomedsearch (www.biomedsearch.com) and Integration with Sopheon
SumoBrain
Pecan
3:15pm-5:15pm TotalPatent™ – Using Boolean and Semantic Search
LexisNexis
Live Oak
Saturday, May 2
Evening
7:00pm Speakers Dinner (by invitation only)
Sponsored by LexisNexis
Acenar Restaurant
Sunday, May 3
Workshops

11:15am-3:45pm
Registration is required for all workshops; some have fees. See Workshop page for details.
10:30am-1:30pm
 
The 3M Move to QPAT: Case Study of a Corporate Transition and Implementation
Questel, Judy Alexander, 3M
Lunch
From Charts to Smarts: Affordable Visualizations for Extraction of IP Intelligence
Questel, Elliott Linder, Questel
Live Oak
2:00pm-3:15pm Strategies for Improving Your Patent Research and Information Management with Derwent World Patents Index® (DWPISM)
Thomson Reuters
Chula Vista
Sunday, May 3
Business Meeting and Welcome Receptions
3:30-5:30pm PIUG Business Meeting
(PIUG members and non-members are encouraged to attend)
Rio Grande West
6:15-7:00pm First Time Attendees and PIUG Volunteers Welcome Reception
Sponsored by PIUG
Garden Terrace
7:00-9:00pm Welcome Reception for all Conference Attendees / Exhibits Open
Sponsored by PIUG
Regency Center/West

Technical Session – Monday to Wednesday – Regency East

Monday, May 4
Morning

 
7:00-8:00am Breakfast
Location: Exhibits Hall – Regency Center/West
8:00-8:20am Welcome
Cynthia Barcelon Yang, PIUG Chair, Bristol-Myers Squibb
8:20-8:30am Brian Stockdale Award Presentation
Edlyn Simmons, Director-at-large PIUG, The Procter & Gamble Co.
8:30-8:35am Opening Remarks
Kartar Singh Arora, Program Chair, BASF Corporation
8:35-9:20am Keynote Address
Professor Dennis Crouch, University of Missouri Law School
9:20-9:45am The Information Retrieval Facility: the Bridge between Intellectual Property and Information Retrieval Research
John Tait, Chief Scientific Officer, Information Retrieval Facility
9:45-10:00am Product Reviews
10:00-10:30am Break – Regency Center/West
Sponsored by Minesoft
10:30-10:35am Going beyond Borders and Other Challenges – Opening Remarks
Chairperson – John Arenivar, 3M Company
10:35-11:05am Why IP & R&D Matter During Recessionary Periods
Giles Newman, Vice President Sales and Marketing, Thomson Reuters Legal
11:05-11:35am Toward Greater Internationalism in Patent Information: A Provider-Vendor Perspective and Approach
Elliott Linder, Questel
11:35-11:55am Quality - Key Factor in the Professional Information Workflow
Sabine Brünger-Weilandt, President and CEO, FIZ Karlsruhe
11:55am-12:15pm Product Reviews
Monday, May 4
Afternoon

12:15-1:30pm Lunch
Sponsored by Thomson Reuters
Location: Rio Grande Ballroom
1:30-3:00pm Panel Discussion on Recent Changes to USPTO Practices – Opening Remarks
Chairperson – Martin Goffman, Sequence Base Corporation
Participants – Ron Kaminecki, Dialog, and Rick Neifeld, Neifeld PLC
3:00-3:15pm Product Reviews
3:15-3:45pm Break – Regency Center/West
Sponsored by Search Technology/VantagePoint
3:45-4:00pm Service Awards
4:00-4:05pm Patent Information from non-English Speaking Regions – Opening Remarks
Chairperson – Bruce Mason, CibaVision
4:05-4:20pm Asian Patent Chemistry Information: Coverage Expansions for a Global Audience
Brian Sweet, Chemical Abstracts Service
4:20-4:40pm Administrative Protection of Pharmaceuticals in China
Aleksandr Belinskiy, sanofi-aventis
4:40-5:00pm Searching Chinese Patent Literature: The Need For and a Benchmarking of Patent Data Providers
Chris Smyth, Evalueserve
5:00-5:20am China – The State of Innovation and Why US Companies Need to Stay Vigilant
Bob Stembridge, Thomson Reuters
5:20-5:30pm Product Reviews
6:30pm- IPI Award Dinner
Cocktails at 6:30pm (cash bar), dinner at 7:15pm
Sponsored by Thomson Reuters and PIUG
Location: Rio Grande Ballroom
Tuesday, May 5
Morning

7:00-8:00am Breakfast
Sponsored by Chemical Abstracts Service
Location: Exhibits Hall – Regency Center/West
8:00-8:05am Updates from Patent Offices – Opening Remarks
Chairperson – Stephen Adams, Magister Ltd.
8:05-8:30am Updates from WIPO - PATENTSCOPE
Andrew Czajkowski, WIPO, Geneva, Switzerland
8:30-8:55am News from EPO
Richard Flammer and Daniel Shalloe, EPO Vienna, Austria
8:55-9:20am Indian Patent Office - Enforcing Renovations
Srinivasan Parthiban, Parthys Patent Eagle
9:20-9:45am Other Patent Offices and Open Discussion
9:45-10:00am Product Reviews
10:00-10:30am Break – Regency Center/West
Sponsored by INTELLIXIR
10:30-10:35am Some Legal Aspects of Patent Information – Opening Remarks
Chairperson – Steve Mitchell, TPR International
10:35-10:55am A View from Inside the Bar - Patent Information in Law Libraries
Lucy Curci-Gonzalez, Kenyon & Kenyon LLP
10:55-11:15am A View from Inside the Bar - Patent Information in Law Libraries - Part 2
Paulette Toth, Kirkland and Ellis LLP
11:15-11:35am Some Lessons from Patent Searching
Jon Cavicchi, Professor & Intellectual Property Librarian Franklin Pierce Law Center
11:35-11:55am Some Lessons from Patent Searching – Part 2
Dr. Stanley P. Kowalski, Scholar in Residence, Franklin Pierce Law Center
11:55am-12:15pm Product Reviews
Tuesday, May 5
Afternoon

12:15-1:30pm Lunch
Sponsored by Questel
Location: Rio Grande Ballroom
1:30-1:35pm Other Items Beyond Borders – Opening Remarks
Chairperson – Jane Thompson, Eisai Corporation of North America
1:35-2:05pm Patent Portfolio Optimization: Vital in Today's Economic Climate
Rich Kolar, Computer Patent Annuities (CPA) Global
2:05-2:30pm Product Reviews
2:30-6:00pm Exposition Room Open
3:30-4:00pm Break – Regency Center/West
Sponsored by FIZ Karlsruhe
4:00-5:00pm Workshop – Minesoft Update on PatBase and Other Products
Minesoft
Location: Regency East
4:00-5:00pm Workshop – Learning and Sharing: Getting the Most out of the PIUG Wiki
Thomas Wolff, Wolff Information Consulting LLC
Location: Llano
7:30pm- IFFI Play and Dessert Reception
Location: Rio Grande Ballroom
Wednesday, May 6
Morning

7:00-8:00am Breakfast
Sponsored by PIUG
Location: Exhibits Hall – Regency Center/West
8:00-8:05am When Analysis and Visualization of Patent Information is not your Forte – Opening Remarks
Chairperson – Anthony (Tony) Trippe, 3LP Advisors
8:05-8:30am Enhancing Patent Landscape Analysis with Visualization Output
Yun Yun Yang, Bristol-Myers Squibb
8:30-8:55am Applying Latent Semantic Analysis and Computed Statistical Patent Quality Data to Patent Portfolio Analysis and Management
Andy Gibbs, PatentCafe
8:55-9:10am Beyond Record Borders – The Next Generation of Patents Reports
Diane Webb, BizInt
9:10-9:35am Patent Sequence Dashboard
Lakshmikant Goenka and B. Subramanian Manikandan, Dolcera
9:35-10:00am Searching Beyond Patents
Erik Reeves, Sumobrain & FreePatentsOnline
10:00-10:30am Break – Regency Center/West
Sponsored by GenomeQuest
10:30-noon Roundtable Discussion: Challenges and Opportunities Facing Patent Information Analysts and Providers in this Economic Downturn
Chairperson – Lucy Akers, Bristol-Myers Squibb
Participants – Orlando Fuentes, Questel; Ford Khorsandian, Technology & Patent Research (TPR) International; Adriene Shanler, Shanler Information LLC
Wednesday, May 6
Afternoon

Noon-1:30pm Lunch including Bingo Card drawing
Sponsored by Computer Patent Annuities
Location: Rio Grande Ballroom
1:30-1:35pm Some Ways to Cope with Beyond Borders – Opening Remarks
Chairperson – Zhifu Shu, ExxonMobil
1:35-2:00pm Resources for Coping Beyond Borders: the PIUG Wiki and Discussion Forum
Thomas Wolff, Wolff Information Consulting
2:00-2:40pm Patents 102 – Part Two of a Basic Patent Primer
Ron Kaminecki, Dialog
2:40-2:55pm Semantic & Boolean Searching: The Best of Both Worlds
Michael Hudelson, LexisNexis
3:00-3:30pm Break – Regency Center/West
Sponsored by SumoBrain
3:30-3:35pm Beyond Your Area of Expertise – Opening Remarks
Chairperson – Thomas Wolff, Wolff Information Consulting
3:35-3:55pm The How, Why, and When of Accelerated Examinations: A Searcher's Perspective
Dominic Demarco, Demarco IP
3:55-4:15pm Use of the Inventor Field in Patent Searching
Henry (Hal) Murray, ExxonMobil
4:15-4:35pm Chemical Structure Searching for Non-chemists
Sandy Burcham, David Gange
4:35-4:55pm Impact Assessment of In re Bilski
Roy Zimmermann, Medtronic; Samir Raiyani, Dolcera; Lakshmikant Goenka, Dolcera
4:55-5:10pm Closing Remarks
Doreen Alberts, PIUG Vice Chair, Theravance Inc.
Thursday, May 7
Workshops

8:00am-4:00pm
Registration is required for all workshops; some have fees. See Workshop page for details.
9:00am -4:00pm STN Patent Forum
CAS and FIZ Karlsruhe
Live Oak
11:30am-2:30pm Automating Patent Analysis: Tricks, Tips and Techniques from Around the World
Barry Brager, Perception Partners
Frio
3 similar sessions:
8:00am-9:00am
9:30am-10:30am
11am-Noon
Learning and Sharing: Getting the Most out of the PIUG Wiki
Thomas Wolff, Wolff Information Consulting LLC
Nueces
9:30am-10:30am The INTELLIXIR System at Work
Intellixir
Blanco
9:30am-10:30am Recent innovations in Sequence Searching and Analysis using GenomeQuest
GenomeQuest
Pecan
9:30am-11:30am Doing More with Less: How efficient analysis can improve your vantage point on information
Search Technology/ VantagePoint
Chula Vista
11:00am-Noon WIPO Patent Information Products–Latest Developments
WIPO
Blanco
Related Information for Speakers

Speakers must upload presentation documents via the Presenter Bank as explained in the instructions for uploading speaker presentations.

Conference Abstracts and Biographies

Welcome

Cynthia Barcelon Yang
Bristol-Myers Squibb
Chair – PIUG

Biography

Cynthia S. Barcelon Yang is currently Director of the Patent Analysis Group at Bristol-Myers Squibb, Princeton, New Jersey. She started her career in 1980 as a medicinal bench chemist at American Critical Care, Waukegan, IL, which was purchased by DuPont in 1986. After 8 years at the bench, she joined DuPont Corporate Information Science unit at Wilmington, DE where she worked as information scientist for more than 10 years. She was also project manager/co-leader of several DuPont corporate-wide standardization initiatives (property nomenclature, analytical test methods and TSCA chemical inventory reporting) and was a DuPont delegate to the Polymer Industry Advisory Council (PIAC) consortium from 1994-1997. In 1999, Cynthia transferred to the DuPont Pharmaceuticals subsidiary, and within a year, she was assigned as Team Leader of the Patent Information Services Group. With the acquisition of DuPont Pharmaceuticals Company by Bristol-Myers Squibb (BMS) in 2001, Cynthia was promoted to Associate Director, Patent Analysis Group and subsequently in 2004 to her current position. Cynthia has a B.S. degree in Chemistry (magna cum laude) from College of the Holy Spirit, Manila, Philippines. She obtained her M.S. degree in Physical-Organic Chemistry from Marquette University and her M.S. degree in Library & Information Science from Drexel University.

Cynthia has been an active PIUG volunteer, both at the regional and national levels. She was one of the recipients of the 2006 PIUG Special Recognition Award for her dedicated service to the organization, including co-championing the Membership Directory 2003, and co-chairing the Membership Label Committee 2003-2005. She chaired the 2007 Sponsorship Committee and co-chaired the 2008 Planning Committee.

Brian Stockdale Award Presentation – Recognition of the 2009 Brian Stockdale Award Recipient

Edlyn Simmons
Director-at-large PIUG
The Procter & Gamble Co.

Biography

Edlyn Simmons is currently serving as PIUG Director-at-Large. She was one of the founders of PIUG in 1988, and was its first elected Chair in 1990-1992 and a member of the Executive Committee in 1992-1994. She received B.S. and M.S. degrees in Chemistry from the University of Cincinnati and has been a registered patent agent since 1977. She is employed by Procter & Gamble Intellectual Property & Business Information Services as Section Manager, Patent Information. Edlyn has spoken and written extensively on patents and chemical information.

As a founder and active member for the entire history of PIUG, and a member of the Board of Directors for the last four years, I offer a deep institutional memory to the operation of PIUG, Inc. The organization has already succeeded beyond the expectations of the founders, but there is much work to be done to help PIUG mature into the world class corporation it has become. I hope that the members will give me the opportunity to help steer PIUG, Inc., into the future.

Opening Remarks

Kartar Singh Arora
Program Chair
BASF Corporation

Biography

Kartar works as a Technical Manager for BASF Corporation. In this role he is responsible for management of intellectual property for the Resins business unit located in Wyandotte, Michigan.

Kartar started his professional carrier with post-doctoral research at Columbia University. Kartar has held positions in R&D for the Sherwin-Williams Company, Mead Imaging, Henkel Corporation and Johnson Polymer. He is an inventor in several patents. Kartar has a PhD in Polymer Science from the University of Michigan. He is a registered patent agent.

Kartar chaired the Exhibit Room at PIUG annual meetings from 2004-2006. He has co-chaired the program committee for PIUG annual meetings since 2007. Kartar was one of the recipients of the PIUG Service Awards in 2007 for his work for the PIUG.

Keynote Address

Professor Dennis Crouch
University of Missouri Law School

Biography

Professor Crouch is Associate Professor of Law at the University of Missouri-Columbia School of Law. Prior to joining the MU Law Faculty, he was a patent attorney at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, and taught at Boston University Law School. He has worked on cases involving various technologies including computer memory and hardware, circuit design, software, networking, mobile and internet telephony, automotive technologies, lens design, bearings, HVAC systems, and business methods. He is also the editor of the popular patent law weblog: Patently-O .

Professor Crouch received his BSE in mechanical engineering cum laude from Princeton University, where he also earned a certificate in engineering management systems. He then earned his JD cum laude from the University of Chicago Law School. While at the University of Chicago, he was a Microsoft, Merck, & Pfizer scholar and a member of the Olin program in law and economics.

Prior to attending law school, Professor Crouch worked as a technical consultant for manufacturing firms in New England, as a research fellow at NASA's Glenn Research Center, as a software developer at the Mayo Clinic's department of biomedical imaging, and as a Peace Corps Volunteer in Ghana, West Africa. Dennis Crouch grew up on a farm near Pittsburg, Kansas.

The Information Retrieval Facility: the Bridge Between Intellectual Property (IP) and Information Retrieval (IR) Research

Abstract

The Information Retrieval Facility (IRF) is a non profit, open source, research institute which aims to promote and facilitate research in large-scale information retrieval, especially in patent retrieval and related areas.

This talk will focus on the role and mission of the IRF, its current activities, and how the unique interaction between the leading experts in IR research and information professionals in industry can ensure not only high scientific standards but also the relevance of research results for business. Several current activities will be overviewed including the IRF-led Cross Language (IR) Evaluation Forum Intellectual Property (CLEF IP 2009) track, the NIST approved TREC CHEM track, which will assess chemical IR, including patents, and activities to promote public/private partnership funding of research in improved machine translation for IR, including a specific focus on patent information.

John Tait
Chief Scientific Officer, IRF

Biography

John Tait obtained a Ph.D. from the University of Cambridge in 1983 for a thesis entitled "Automatic Summarising of English Text". He subsequently followed a career in industry, mainly working on problems of large scale information retrieval and management, before taking up a post at the University of Sunderland in 1991, where he eventually became Professor of Intelligent Information Systems and Associate Dean of Computing And Technology, as well as leading the University of Sunderland Information Retrieval Group. In September 2007 he took up the post of Chief Scientific Officer of the Information Retrieval Facility, a not-for-profit institution dedicated to promoting research in large scale information retrieval. John is a past Programme Committee chair of the ACM SIGIR conference (2005), past General Chair of the European Conference on Information Retrieval (2004), an Associate Editor of ACM Transaction on Information Systems, joint Editor of Natural Language Engineering and has published over 90 refereed conference and journal papers. His current research focuses on problems of non-English web search and on patent retrieval. See website at http://www.johntait.net for more information.

Going beyond Borders and Other Challenges

John Arenivar
Session Chairperson
3M

Biography

John Arenivar is an Advanced Technical Information Specialst with 3M Information Research & Solutions. Prior to joining 3M in 1997, John performed information research at Teltech and chemical R&D and scale-up with The Shepherd Chemical Co. John holds a B.S. degree in chemistry from MIT and and Ph. D. in Inorganic Chemistry from the University of California, Berkeley. Besides PIUG, he is also a 25-year member of the American Chemical Society.

Why IP & R&D Matter During Recessionary Periods

Abstract

The world is in an economic slowdown of unprecedented proportion. News headlines are filled with stories of company downsizings and workers being laid off.

During this session, you will learn why it is in just such times that it is critical for companies to continue with their R&D investments and to protect their innovations through intellectual property. Doing this will give the organization a competitive advantage and a point from which to grow when the economy improves.

Intellectual assets are also a source of revenue for companies struggling with cash flow. Knowing how to assess an IP portfolio and value the rights is critical to finding ways to segregate assets and turn the appropriate ones into capital.

Hear from a top executive at the Scientific business of Thomson Reuters about how intellectual property is becoming an even more important asset in this environment and how some leading organizations are using it to weather the economic storm.

Giles Newman
Vice President Sales and Marketing, Thomson Reuters Legal

Biography

Giles Newman joined Thomson Reuters in September 2004 as the Vice President of Sales and Marketing for the IP business unit. He has helped manage the integration of a number of acquired companies into Thomson Reuters and is responsible for global sales of Thomson Reuters' extensive collection of IP tools and databases. He is based in London, UK. He has overall responsibility for IP sales and account management worldwide, he is a keen advocate of putting the customer at the centre of our operating principles and has helped lead Thomson Reuters customer facing teams to focus on the business needs of our diverse range of customers.

After graduating from university, Giles was employed by a United Kingdom software company in support and account management roles in the UK and for a time in Switzerland. He went on to gain extensive experience in sales strategies, global sales, and risk management at GE and then Bankers Trust. Subsequently, Giles took leadership roles in two start up businesses serving the banking and finance sector. In all these roles he gained extensive international management experience.

Giles holds a Pure Mathematics and Statistics degree from Exeter University in the UK.

Toward Greater Internationalism in Patent Information: A Provider-Vendor Perspective and Approach

Abstract

This is a period of rapid transition for IP information provider-vendors toward greater internationalism. Vendors are taking a variety of approaches to meet the growing demand for far more international content as well as interface and system features to enhance retrieval and display of such content. This session will examine the Questel perspective on, and multi-faceted approach to, this important transition. Various aspects of how Questel is addressing the demand and facilitating the transition, both currently and in the near-term, 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.

Quality - Key Factor in the Professional Information Workflow

Abstract

Quality in the information workflow directly influences precision and recall of search results. Quality assurance is required over the entire information workflow and includes database producers, vendors, and searchers. Quality criteria are discussed, such as:

  • Databases: current and comprehensive coverage of their field; transparency of the content selection and the intellectual value-add.
  • Vendors/Hosts: provision of synergy from databases of different provenance; reliable operations and secure access; sophisticated and transparent retrieval, evaluation, analysis and reporting tools; efficient customer support.
  • Searchers: information competence, i.e. familiarity with their company´s research topics, sophisticated information tools and the specifics of databases.

Information professionals and intellectual property (IP) professionals depend on the quality information products from commercial vendors to deliver to their organizations the quality needed for business critical research and decisions.

Sabine Brünger-Weilandt
President and CEO, FIZ Karlsruhe

Biography

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.

Panel Discussion on Recent Changes to USPTO Practices

Martin Goffman
Session Chairperson
Sequence Base Corporation

Biography

In 2006, Martin Goffman founded the SequenceBase Corporation (www.sequencebase.com), the organization that produces the USPTO Genetic Sequence Database, USGENE®. USGENE® is currently hosted on STN and is also available on a subscription basis. The database is the leader in providing patent sequence information to the biotechnology, legal, pharmaceutical, scientific, technical and academic bioinformatics communities.

Prior to founding SequenceBase, since 1985, Martin Goffman has been the owner and principal consultant of Martin Goffman Associates (www.goffman.com), a privately held research, development, and consulting organization. His company has a consulting base ranging from extremely large multinational corporations featured in the Fortune Magazine Top 10 to mid-sized corporations in the Fortune 500. His firm also consults with many of the top intellectual property firms in the country. The company has won research awards from the National Science Foundation, the Department of Defense, and the National Institutes of Health. Prior to starting his consulting practice Martin worked in industry. Martin has a BA, MA, and Ph.D. in Chemistry with a Physics Minor from Temple University.

He is also a co-founder and CEO of StockPricePredictor.com, LLC (www.patentvaluepredictor.com), a web based patent valuation service.

Panelist Biographies

Ron Kaminecki
Dialog

See biography below.

Rick Neifeld
Neifeld PLC

Biography

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.

Patent Information from non-English Speaking Regions

Bruce Mason
Session Chairperson
CibaVision

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.

Asian Patent Chemistry Information: Coverage Expansions for a Global Audience

Abstract

To better serve an increasingly global audience, CAS has expanded coverage for its databases, to better meet the needs of far away searchers for locally produced materials, and of local searchers to determine what has already been discovered far away. In this session, we'll provide an analysis of the subject areas covered in recent Asian patents and utility models, including analysis of subject area focus. We'll also look at the value provided by traditional medicine patents for pharmacology and consumer products. And finally, we'll discuss any further coverage developments likely to be of importance to global patent information searchers.

Brian Sweet
Chemical Abstracts Service

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.

Administrative Protection of Pharmaceuticals in China

Abstract

Administrative Protection of Pharmaceuticals (APP) represents transitional (pipeline) protection for pharmaceuticals which were not patentable under Chinese patent law before 1992 and was used to provide market exclusivity in China for many world best-selling drugs. It was introduced in China in 1993 as a result of the Chinese bilateral WTO negotiations with several major developed countries (US, JP, European Union) for new drugs protected by patents issued in those countries in 1986-1992. In contrast to other countries (KR, CZ, TH, BR, RO, CR, etc.), where transitional protection could last 5-10 years from the date of its legislative enactment in 1990s and has mostly expired, in China administrative protection lasts 7.5 years from the date of APP authorization (provided the foreign reference patent is still in force). APP certificates are issued for drugs, not patents, but APP in fact represents extension of patent protection in China for foreign drug patents. These non-conventional CN patent family equivalents are not recorded in any major patent databases, likely because patents referenced in application for APP are normally not listed in public APP announcements.

Comprehensive APP information is available at the database at Huake Pharmaceutical Intellectual Property Consultative Center (http://www.huake.com.cn/xb/ap1.htm) and includes: company name, generic and trade drug names, application acceptance number date, an authorization/rejection date and AAP certificate number. AAP actual termination dates and reasons for APP terminations (7.5 year term, expiry of the foreign patent, or non-payment of annual maintenance fee) are included in cessation notices available on the Chinese SFDA. Additional information on 137 of 199 APPs (including foreign patent numbers) could be found in monthly reviews published in 2001-2006 in Chinese Journal of New Drugs and Clinical Remedies (in Chinese). As of April 10, 2009, 21 APPs are still in force for 15 drugs (including such as Advair/Seretide, Clarinex, Abilify). On the other hand, AAPs for several best-selling drugs, which are still under the original compound patent in USA, were terminated in recent years (Lipitor, Plavix). By author's estimate the latest AAP would expire for CYMBALTA in June 2013.

The author will discuss accessibility of APP data in English and Chinese (with use of machine translation), give examples of how a choice of a country of the foreign referenced patent was used to maximize APP in China, and how to estimate the date of cessation of APP (by identification of referenced patent and its expiry).

Aleksandr Belinskiy
sanofi-aventis

Biography

Aleksandr Belinskiy has been a patent information scientist with sanofi-aventis since 2002. Prior to sanofi-aventis, Alex worked as information consultant, held contract positions in the Research Library of the National Institute of Standards and Technology (NIST) and in the Scientific and Technical Information Center of the USPTO. Prior to his relocation from Ukraine in 1999, Alex managed a technical and business information center in a leading Ukrainian chemical and pharmaceutical company and was a scientist in a chemical research institute. Alex holds a Masters Degree in Chemistry from Moscow State University and has a post-graduate education in the Karpov Institute of Physical Chemistry (Moscow, Russia) in the field of theoretical chemistry.

Searching Chinese Patent Literature: The Need For and a Benchmarking of Patent Data Providers

Abstract

As China continues to grow in prominence within the global patent community (Roughly 290,000 applications filed in 2008, an 18% annual increase, making China the third largest jurisdiction in terms of patent filing) the need to search in the Chinese language is growing. However, searching Chinese patent literature remains a tricky proposition. Errors due to human or machine translation from Chinese (Mandarin) to English and the shortfalls of various patent data sources can easily render a patent research assignment useless. Based on our experience of many years of researching within native Chinese patent data sources, we will provide a brief overview of searching Chinese patent literature, including ways to mitigate translation errors and specific instances where local knowledge was necessary. Most importantly, we will shed light on our recent internal benchmarking study of the various patent data providers and their relative effectiveness in querying Chinese patent literature.

Chris Smyth
Evalueserve

Biography

Chris is an Engagement Manager with Evalueserve and is based in New Jersey. Chris is a U.S. Patent Agent and has considerable experience in preparing and prosecuting patent applications as well as conducting patent research. Chris received a B.S. in Electrical Engineering from the Georgia Institute of Technology.

China - The State of Innovation and Why US Companies Need to Stay Vigilant

Abstract

China is patenting innovations at a skyrocketing rate. A recent report published by Thomson Reuters predicts that China will surpass the United States and Japan in its patent volume by the year 2012.

Hear from the authors of the report, "Patented in China - The Present and Future State of Innovation in China" about current patent trends and what the world of patent information will look like in five years. They will explore patent volumes and trends, as well as the underlying causes of increased innovation in China, including economic and government policy factors.

Learn also why it is so important for U.S. patent searchers to keep a vigilant watch over the state of innovation in this rapidly developing region.

Bob Stembridge
Thomson Reuters

Biography

Bob Stembridge graduated from University of Sussex, UK with an Honours degree in Chemistry. He joined Derwent (one of the founding components of the Scientific business of Thomson Reuters) in 1980 and has held various roles in editorial, marketing, sales and product development over the years. Leaving in 1988 for interludes working as Senior Information Analyst specialising in patent analytics at British Petroleum and European Sales Liaison with Dialog, he returned to Thomson Reuters in 1996 and most recently became Customer Relations Manager with responsibility for liaison with customer user groups for the organisation.

He is a member of ACS, CILIP and PIUG, and is Secretary of CEPIUG and current Chair of PATMG. He was elected to the CSA Trust Board of Trustees in February 2007.

Updates from Patent Offices

Stephen Adams
Session Chairperson
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.

Patent Information Beyond Europe

Abstract

This presentation will cover several develpments from EPO. IP5 - patent policy beyond Europe's borders. The world five largest patent offices (JP, US, CN, KR and EP) sat down at a table last October in Korea and agreed to share their concerns about the growing number of pending patent applications and the length of time taken to grant patents. The result was an agreement to look closely at ten projects, at least three of which could have a lasting impact on patent information worldwide.

Recently, the EPO has expanded its Asia helpdesk by adding India to the list of countries it covers. The Asia patent information team has also been studying how to get to grips with language and cultural barriers, e.g. by applying machine translation in patent searching, and by asking the question, "Which is better, on-the-fly translation or database translation?".

EPC 2000 and the London Agreement - changes to patent law across Europe's borders. The entry into force of the new European Patent Convention at the end of 2007, and of the London Agreement early in 2008 both have the potential of adding some new challenges to a patent searchers' average day. What is a B3 document? Has the EPO observed any changes in applicants' behaviour? Which member states demand translations of a European patent and which do not? Where is all this information available?

Richard Flammer and Daniel Shalloe
EPO Vienna

Biographies

Richard Flammer, Principal Director Patent Information, EPO Vienna

Dr Richard FLAMMER is Principal Director, Patent Information at the EPO, Vienna since 2008. He has a degree in law and a PhD on biotechnological inventions in patent law from Vienna University. Dr Flammer joined Austrian Patent Office in 1994 and worked through various assignments to the position of Vice President in 2004. Since 2003 he is a Lecturer at the University of Agriculture in national and international patent law.

Daniel Shalloe, Head of section, Promotion and Training, EPO Vienna

Daniel Shalloe joined the European Patent Office in September 1989 as a search examiner, having completed a degree in Mechanical Engineering at Imperial College, London two years previously. In October 1991, he moved to the EPO's newly created Vienna sub-office, specialising in patent information. Since 1991, he has been editor-in-chief of EPIDOS News and a leading member of the organising team for the EPO Patent Information Conference.

Updates from WIPO - PATENTSCOPE®

Abstract

The World Intellectual Property Organization (WIPO) actively contributes through its technical cooperation programs in reducing the knowledge gap between its many Member States.

It has rapidly developed its patent information services offering access to the technology available in PCT international patent applications. Its PATENTSCOPE® service offers various search options, such as full-text searching and graphical analysis, which are now quite well known. Other less known features include: different language search interfaces; the possibility of searching using different languages, (including Russian and Japanese, with Chinese and Korean foreseen in the future); "technology focus" on specialized areas such as traditional medicine, desertification, ozone depletion, etc. regarding developments in technologies particularly of public policy interest; statistical information assisting in the analysis of international technology trends for use by businesses and policy makers.

An important addition to the PATENTSCOPE® service in 2009 will be the addition of fully searchable national patent collections from the offices of several WIPO member states. Some of these collections will be from offices where coverage of patent information has been incomplete or non-existent in the past. This is the result of an ongoing technical assistance program that covers scanning, data formatting, OCR and dissemination of patent data, especially for patent offices in developing countries.

Andrew Czajkowski
WIPO

Biography

Andrew Czajkowski graduated in nuclear engineering from Queen Mary College, University of London in 1987. He subsequently joined the European Patent Office (EPO) where he held various posts: as a prior art search examiner in The Hague for 6 years, a substantive examiner in Munich for 5 years, the EPO's Liaison Officer responsible for patent information cooperation activities at the Italian Patent and Trademark Office in Rome for 4 years, before returning to Munich to work in technical cooperation with Central and Eastern European Countries, manage the European Union's IPR Project for the Western Balkans and coordinate the EPO's Trilateral Cooperation activities.

Since October 2007 he works for the World Intellectual Property Organization in the Global IP Information Service. He is responsible for promoting the use of patent information through the organization of conferences and workshops, as well as producing information materials on this subject.

Indian Patent Office - Enforcing Renovations

Abstract

India has come into focus of the global IPR fraternity in the recent times owing to the fast-paced development of infrastructure, standardized laboratories backed by a vast human resource pool trained in science and engineering. India is a signatory to various international IPR treaties - TRIPS, PCT, etc.

The Indian Intellectual Property Office has reengineered itself to meet the demands of the ever-changing scientific and economic world and to be in-line with the international IP standards. This presentation deals with the various modernization initiatives and reforms undertaken by the Indian Government to make the Indian Intellectual Property Office more user-friendly, transparent and accessible.

The key technological innovation is the 'Digitization' of all existing Indian patents. The presentation outlines the entire history and progress of this initiative with information regarding the technology used and process flow. The Indian Intellectual Property Office has also established a Quality Management System to ensure high-quality digitization of the patents.

Srinivasan Parthiban
Parthys Patent Eagle

Biography

Parthi is currently the founder and CEO of Parthys Patent Eagle, a patent search and market research services company located in India.

Parthi earned his PhD from Indian Institute of Science, specializing in Computational Chemistry. He also has double Masters Degrees in Science and Engineering. He has co-authored several international and national research publications and a Chapter in a book. He worked for NASA Ames Research Center, Weizmann Institute of Science and AstraZeneca. Later, Parthi moved into Contract Research Organizations in India, where he was heading Knowledge Engineering Business Units.

A View from Inside the Bar - Patent Information in Law Libraries

Steve Mitchell
Session Chairperson
TPR International

Biography

Steve has over twenty years experience in the application of molecular/cellular biology strategies, computorial biology, and intellectual property protection. Steve is the Director of Biotechnology and Genomic Services at Technology & Patent Research (TPR) International. Before joining TPR, Steve was Senior Information Scientist at Abbott Laboratories where he worked with both scientists and attorneys. This work included the maintenance and analysis of comparative sequence-based information and responsibility for conducting all types of patent searches, ranging from prior art to in-depth freedom-to-operate and validity research. Steve's contributions while a member of the Abbott team were well recognized. He received both the 'President's Award' and the 'Administrative Services Award of Excellence'.

Steve's successful experience as a cancer scientist, and his participation on the Human Genome Project, have provided him with firsthand knowledge of gene cloning and sequencing. Also, Steve's numerous patented inventorships confirm him as being on the cutting edge of technology and the patent process.

In his professional history as a longtime Molecular Biologist, Steve has been directly involved with the pharmaceutical discovery and development process, has managed laboratories and has gained a comprehensive understanding of genetics and immunology.

Among the many institutions where Steve has worked, he has spent time contributing to the Human Genome and Class II Gene Regulation research projects at CalTech and Harvard University respectively. Additionally, Steve has conducted genomic and heart disease research at Cedar Sinai/UCLA.

In intellectual property protection at TPR, Steve's clients include most major pharmaceutical companies, and a very large group of biotechnology companies and law firms worldwide.

A View from Inside the Bar - Patent Information in Law Libraries

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. Two law firm library directors will discuss the economics of IP legal research and the types of patent research conducted to support an IP law practice.

Lucy Curci-Gonzalez
Kenyon & Kenyon LLP

Biography

Lucy Curci-Gonzalez has over 25 years of library management and intellectual property research experience. Prior to joining Kenyon & Kenyon LLP as Director of Library Services, she was the head librarian at Morgan & Finnegan LLP. Mrs. Curci-Gonzalez earned her MS in Library and Information Science from The School of Library Service at Columbia University. She has worked as a catalog, interlibrary loan and reference librarian at state court , law school, corporate legal department and federal government agency law libraries in New York City. Mrs. Curci-Gonzalez is active in the Law Librarians Association of Greater New York and in the IP Group of the American Association of Law Libraries Private Law Libraries Special Interest Section. Lucy is a past LLAGNY President and PLL Chair. She has also published articles and made numerous presentations on IP law research and law library management for LLAGNY, AALL, the Practising Law Institute and Legal Information Alert.

A View from Inside the Bar - Patent Information in Law Libraries - Part 2

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. Two law firm library directors will discuss the economics of IP legal research and the types of patent research conducted to support an IP law practice.

Paulette Toth
Kirkland and Ellis LLP

Biography

Paulette Toth is the Information Services Manager of the New York Office of Kirkland & Ellis LLP, a preeminent global general services law firm. At Kirkland, she manages a small research team of professional law librarians specializing in scientific, technical and business research in support of the Intellectual Property, Corporate and Litigation practice areas of the firm. Kirkland is known for its outstanding achievements in patent litigation. Patent, trademark, copyright and domain name research loom large in the Corporate practice at Kirkland as a part of due diligence for mergers, acquisitions and licensing.

Paulette received her Masters in Library and Information Science from Pratt Institute, New York following a Bachelor's Degree in English at Albright College, Reading, PA. She has been searching patents, trademarks and copyrights for over 30 years. Her professional achievements include serving as President of the Law Library Association of Greater New York, 1992-93, and she is currently Chair of the Intellectual Property Group of the Private Law Libraries Special Interest Section of the American Association of Law Libraries, 2008-2009.

Some Lessons from Patent Searching

Abstract

For two decades the Franklin Pierce Law Center has been the sole law school in the U.S. that has provided programmatic instruction and practice in patent database mining. Under the visionary leadership of Professor Jon Cavicchi, who has applied and promoted the hybrid iterative technique to patent searching, Pierce Law has developed unique classroom and clinical programs. The introductory courses teach: types, consumers and uses of data sources, multiplicity of access points, factors to mix and match tools, transferability of skills between platforms who should perform each type of search as well as data presentation and analytical tools. The Patent Landscape Clinics take the next step where search approaches, instruction and theory are applied to analyzing complex patent landscapes pertinent to advancing the global public interest. Operationally, internationally diverse groups of students (typically organized into "corporate" teams) apply advanced patent database mining strategies and then dissect and analyze complex biotechnological products, for example, HIV vaccine technologies. Skills learned are directly transferable to subsequent employment, whether in a law firms, corporations or the public sector.

Jon Cavicchi
Professor & Intellectual Property Librarian Franklin Pierce Law Center

Biography

Professor Cavicchi is the chief administrator of intellectual property information resources at Pierce Law Intellectual Property Library. He presently teaches Mining Patent Information in the Digital Age, and has previously taught M.I.P. Legal Skills, Moot Court, Intellectual Property Research Tools and Strategies and Patent and Trademark Research Tools and Strategies. In his classes, he uses electronic teaching tools, including online services, Foilos the Internet presentation software, as well as audiovisual sources. In recognition of his expertise in the intellectual property research field, Professor Cavicchi has been chosen to sit on the Advisory Board of QUESTEL/ORBIT, a key information producer for patent professionals. He writes The Trade Secrets Vault, a blog highlighting the essential role trade secrets play in day to day business and legal environments.

See website at http://www.piercelaw.edu/joncavicchi/.

Some Lessons from Patent Searching – Part 2

Abstract

For two decades the Franklin Pierce Law Center has been the sole law school in the U.S. that has provided programmatic instruction and practice in patent database mining. Under the visionary leadership of Professor Jon Cavicchi, who has applied and promoted the hybrid iterative technique to patent searching, Pierce Law has developed unique classroom and clinical programs. The introductory courses teach: types, consumers and uses of data sources, multiplicity of access points, factors to mix and match tools, transferability of skills between platforms who should perform each type of search as well as data presentation and analytical tools. The Patent Landscape Clinics take the next step where search approaches, instruction and theory are applied to analyzing complex patent landscapes pertinent to advancing the global public interest. Operationally, internationally diverse groups of students (typically organized into "corporate" teams) apply advanced patent database mining strategies and then dissect and analyze complex biotechnological products, for example, HIV vaccine technologies. Skills learned are directly transferable to subsequent employment, whether in a law firms, corporations or the public sector.

Dr. Stanley P. Kowalski
Scholar in Residence, Franklin Pierce Law Center

Biography

Geneticist and researcher, Dr. Stanley P. Kowalski, served as management consultant in intellectual property and technology transfer at the AmeriCenter in Cornell, NY prior to earning his JD from Pierce Law in 2005. He is currently working on projects seeking to improve the agriculture of developing countries.

From 1999 to 2001, Dr. Kowalski analyzed and evaluated agricultural biotechnology relating to ISAAA's Global lP Initiative in developing nations. He also worked as a research geneticist at the Vegetable Laboratory of BARC-West in Beltsville, MD and as a postdoctoral research associate at Cornell University's Department of Plant Breeding in the late 1990s.

As a research associate at Texas A&M University from 1991 to 1994, Kowalski developed RFLP-based genome mapping strategies for improvement of commodity crops important to Texas.

Kowalski has published numerous articles relating to genetics, molecular structure and plant crops.

See website at http://www.piercelaw.edu/stanleykowalski/.

Other Items Beyond Borders

Jane Thompson
Session Chairperson
Eisai Corporation of North America

Biography

Jane Thompson has an MSc degree in Chemistry from the University of Toronto, and has been a registered patent agent since 1991. She has spent over 19 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. Intellectual Property Dept. of Eisai Corp. in Andover, MA, where she conducts a wide range of searches and analysis in support of IP, R&D, and business clients.

Patent Portfolio Optimization: Vital in Today's Economic Climate

Abstract

Organizations cannot afford to ignore or compromise IP optimization and monetization strategies during times of economic uncertainty. Properly maintaining and leveraging IP rights may mean the difference between survival and extinction. This becomes an increasing challenge when IP departments are up against shrinking budgets and demands for greater returns on investments in patent filings.

A Patent Portfolio Optimization strategy is a best practice approach that allows companies to maximize their IP assets and maintain their innovative edge. We will outline the strategies our clients have successfully employed to manage their IP portfolios, which include:

  • Understanding and aligning their business objectives with their IP Strategy
  • Assessing their competitive position in the marketplace
  • Segmenting their portfolio into core and non-core assets
  • Developing strategies to protect core assets and leverage non-core assets

While essential during an economic downturn, this process should also be integrated and embraced as a systematic annual practice. Companies that are able to maintain a market leadership position, stay ahead of competitors, employ cost-savings measures, and identify new revenue streams have a far greater chance of not only enduring, but positioning themselves for growth.

Rich Kolar
CPA Global

Biography

Rich Kolar is Patent Intelligence Manager for CPA Global. Rich has over 17 years experience in intellectual property consulting, patent searching and quantitative data analysis. Rich has provided patent analytics services to universities, government agencies, and corporations in support of R&D planning, competitive insight, licensing, technology transfer, program evaluation, and litigation. Rich has also designed and built patent citation databases, developed unique patent indicators under grants from the National Science Foundation, and has extensive experience with numerous patent search, analysis, and data visualization software tools. Prior to joining CPA Global, Rich held senior positions with UTEK-ICC, Metrics Group, Aurigin Systems and Mogee Research & Analysis.

Rich has published several articles in journals such as Expert Opinion in Therapeutic Patents, Technology Analysis & Strategic Management, and World Patent Information. He has also given presentations and taught workshops on patent analysis techniques for many industry groups.

When Analysis and Visualization of Patent Information is not your Forte

Anthony (Tony) Trippe
Session Chairperson
3LP Advisors

Biography

Anthony Trippe is Director, IP Analytics for 3LP Advisors a management consulting company specializing in aligning client's business goals with their intellectual property strategy. Previous to 3LP Advisors Anthony was Sr. Innovation Manager at CAS where he was responsible for creating new product ideas around the areas of chemical, life sciences and patent 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.

Enhancing Patent Landscape Analysis with Visualization Output

Abstract

Patent Landscape Analysis is derived from a general state-of-the-art patent search and provides graphic representations of information from the search results. It focuses on in force or expired patents and patent applications from a given technology area or competitor patent portfolio. Unlike a traditional state-of-the-art search which provides relevant information in text format, the patent landscape analysis provides graphics and charts to demonstrate patenting trends, leading patent assignees, collaboration partners, white space analysis, technology evaluations, etc.

In this presentation, we will provide an update on our Phase II investigation and illustrate case studies from a more in-depth evaluation of VantagePoint. Output from VantagePoint may be integrated into patent analysis workflow to yield critical visualization and actionable business intelligence from Patent Landscape Analysis.

Yun Yun Yang
Bristol-Myers Squibb

Biography

Yun Yun Yang is currently a Senior Patent Analyst in the Patent Analysis group at Bristol-Myers Squibb Co. providing patent information support to legal/Patent Department and the cardiovascular drug discovery group. Yun Yun also leads the initiative to evaluate text mining and visualization tools for Patent Analysis group. Yun Yun graduated from Beijing Normal University with a PhD degree in Organic Chemistry and completed her post-doctoral research work at the School of Medicine, University of Pennsylvania. Yun Yun worked as chemistry editor at ISI and as an information scientist at DuPont Co. prior joining BMS. Yun Yun has been actively involved at PIUG and was Exhibits Committee Chair for the 2007 PIUG Annual Conference.

Applying Latent Semantic Analysis and Computed Statistical Patent Quality Data to Patent Portfolio Analysis and Management

Abstract

The 2008 international economic meltdown put in motion an urgent call for corporations to cut costs and generate more revenue. As CEOs and CFOs reshape corporate priorities during 2009, many are now viewing patent portfolios as cornerstone assets that must be managed more aggressively to support the cost savings and revenue generation initiatives.

The practical reality is that traditional patent research tools are simply not designed to support timely or objective analyze portfolios of 500, let alone large portfolios containing 10s of thousands of patents.

The presentation will include a case study showing how quantitative patent analysis of a public company's portfolio specifically identified the "worst patents" to prune from a 5,000 patent portfolio, potentially resulting in more than $2,500,000 immediate maintenance fee savings, "found money" to re-budget to new filings of higher quality patents in more important emerging technology areas.

Attendees will experience the ability to not only reasonably research and manage patent portfolios down to the individual patent level, they will develop an understanding of how statistically generated quantitative patent data can be mined to produce the highest possible cost savings (effective portfolio pruning), as well as highest revenue opportunities (identification of portfolio assets with highest statistical commercial value).

Andy Gibbs
PatentCafe

Biography

Andy Gibbs is the Chairman and CEO of PatentCafe, the world's premier Enterprise Solutions provider of Patent Portfolio Decision Support Systems (DSS). He is also Chairman of the IP Metrics Committee, Intangible Asset Finance Society.

He served two terms on the USPTO Public Patent Advisory Committee (PPAC), and served as Chairman, E-government Subcommittee advising on Patent Office IT infrastructure and software tools. He is an immediate past member of the Board of Directors, Intellectual Property Owners Association, and a member of the Licensing Executives Society and Patent Information Users Group. Mr. Gibbs authored the corporate patent strategy book, Essentials of Patents (Wiley), PatentWiter (Sq. One), and more than 100 patent quality and IP management articles.

An IP Thought Leader, he presented an Empirical Study on statistical patent quality indicators at Columbia University, served as Forum Moderator of a the IBM Sponsored WIKI: Standards for Standards, a global discussion of invited policy makers and IP professions addressing abuses and guideline standards for technology (patent) standards organizations, and was a member of the esteemed panel of participants in Building a New IP Marketplace - the IBM / NY Law School WIKI on policy and process for improving patent quality, transparency, fair valuation, flexibility and global consistency.

Beyond Record Borders - The Next Generation of Patents Reports

Abstract

Information on a patent or patent family is often found in many different database records. But currently each row in a patent report represents information from only a single database record. The next generation of patent reports will empower patent information specialists to go beyond record borders to integrate information from different records into simple yet powerful summary reports.

Several challenges must be met to develop reports which go beyond record borders. This paper will discuss the following challenges and potential solutions:

  • Identify and group related patent documents
  • Resolve structural differences between sources
  • Select the information to present in the summary view
  • Present information clearly in both summary and detailed views
  • Compare different versions of data

Diane Webb
BizInt

Biography

Diane Webb is co-founder, President and CEO of BizInt Solutions, Inc. Diane has 20 years of experience managing the development of software tools for information analysis. Prior to joining TRW, Inc., Diane managed several US Government projects in which the core technology used in BizInt Smart Charts was developed. In 1993, she launched the TRW "defense conversion" project which created the initial Smart Charts concept and software. In 1996, Diane and John Willmore purchased the Smart Charts product and founded BizInt Solutions. Diane has degrees in the history of science and physics from Harvard University and the University of Pennsylvania. She spends much of her time outside work training and competing with her three longhaired dachshunds.

Patent Sequence Dashboard

Abstract

Most of the off the shelf sequence comparison software tools prevailing today prove to be a challenge for the researchers as they lack in several features such as -comprehensive multi sequence comparison, data integration from various sequence databases into a single platform, enhanced filter criteria that facilitate patent data analytics, etc. In addition to their inefficiencies, these software tools may lead to an inaccurate evaluation of IP information and, ultimately give way for uninformed decision making.

During this presentation, Dolcera will share the framework with specific case studies the tool it has developed to visually analyze gene sequences for research purposes. It is to be noted that this tool has been developed with active inputs from some of the world's largest technology companies.

Lakshmikant Goenka
Dolcera

Biographies

Lakshmikant has had a rich and varied experience in product development and domestic and international marketing while working at Pidilite India and United Chemie. Lakshmikant is an inventor and has authored two patents on chemical processes at United Chemie. His inventions helped his former company to increase revenues and strengthen its competitive position. Lakshmikant has a Bachelor's Degree in chemistry, and an MBA from the prestigious Management Development Institute, Gurgaon.

Searching Beyond Patents

Patent professionals are always looking for ways to improve the precision and recall of their searches. Whether they are looking for patentability, conducting competitive analysis, or some other type of analytical work, they are faced with an almost unlimited universe of information to muddle through, usually with time pressure.

Economics dictate that researchers have limited time and the selection of tools and techniques thus becomes critically important. The patent database(s) are an obvious starting point, because of the maturity, structure, and completeness of these sources; however, all professionals realize that stopping at patents comes with a substantial risk of insufficient coverage.

We'll describe a vision of the direction that information research might go, to the benefit of all information professionals. These ideas are based on - the power of Wiki, open access and social networking.

Erik Reeves
Sumobrain & FreePatentsOnline

Biography

Erik Reeves is CEO of Patents Online, LLC (FPO), the company behind the well-known free patent resources www.freepatentsonline.com and www.sumobrain.com, as well as the newly launched www.biomedsearch.com, a site dedicated to improving searching and exposure of biomedical research. Erik has extensive experience in the web domain, FPO being his second stint as an executive for an internet services company. He also has over 15 years experience in the IT field, working in consulting, healthcare, and data services for companies that ranged in size from $1 million to $10 billion. He has a wife, who is an MD researcher and a daughter and lives in Ellicott City, Maryland.

Roundtable Discussion: Challenges and Opportunities Facing Patent Information Analysts and Providers in this Economic Downturn

Lucy Akers
Session Chairperson
Bristol-Myers Squibb

Biography

Lucia Teixeira Akers, a U.S. Patent Agent with a degree in chemistry, has over 25 years of experience in the information field, including former positions at Shell and ExxonMobil. She was the Chair of PIUG from 2000-2004 and also participated for several years as a member of the Selection Board for the International Patent Information Award. She was a recipient of a PIUG Special Recognition Award and was also one of the major catalysts for the PIUG Strategic Planning Committee. Most recently, Lucy leads the PIUG Education and Training Task Force (on mentoring, training and certification), serves as the PIUG Special Envoy to CEPIUG, and is a senior patent analyst with Bristol-Myers Squibb.

Panelist Biographies

Orlando Fuentes
Questel

Biography

Orlando's professional career began as a Field Engineer for IT and Electronics; involved in networking, industrial automation, communications, robotics and CAD/CAM systems. He also worked in the same areas for Production Industries in the R&D Department while holding a position as teacher at the University. In middle 90's he decided to jump into management and business development in the technology related industries. He has always been connected to IP and Standards industry, which led him to accept a position in the IP industry at Questel Digipat; where he serves as Managing Director and oversees new ventures such as Patent Search Services for Questel Digipat in the American market.

Ford Khorsandian
Technology & Patent Research (TPR) 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. TPR also provides patent analysis, and competitor intelligence studies. Ford holds a B.S. Hons degree in Electronic and Engineering from the U.K. and started his career in Europe with Derwent (now Thomson Reuters) World Patents Index databases. He has held the positions of Vice President of Derwent North America, and a Director at the Chemical Abstracts Service (CAS), Division of the American Chemical Society. He has also been the Vice Chair of the Patent Information Users Group (PIUG), and is the current Chair of the PIUG Nominations Committee. Ford is founder and board member of the International Patent Information (IPI) Institute, and Pharma-Bio-Med Institute.

Adrienne Shanler
Shanler Information LLC

As a former employee of American Cyanamid and Wyeth, Adrienne Shanler, a patent and literature searcher with 21 years of experience in supporting and protecting Intellectual Property development in the fields of biotechnology, pharmaceuticals, animal health and crop protection, has formed Shanler Information LLC. She has a demonstrated record of success in patentability searches covering topics ranging from early discovery leads to the protection of commercial products. For more information, see www.shanlerinformation.com

Some Ways to Cope with Beyond Borders

Zhifu Shu
Session Chairperson
ExxonMobil

Biography

Zhifu Shu joined Exxon Mobil'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 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.

Resources for Coping Beyond Borders: the PIUG Wiki and Discussion Forum

Abstract

The PIUG Wiki and Discussion Forum are the collaboration and communication media for PIUG. They provide patent information specialists outstanding information and resources for coping beyond borders. The wiki was rolled out in December 2008. The Discussion Forum replaced the Discussion List PIUG-L in February 2009. Patent community members have been adding, updating and editing content throughout the wiki and conversing via the Discussion Forum. The high level of acceptance and participation in both will be discussed at the Business Meeting on May 3.

This presentation will focus on what resources and information are available currently and how users can build upon and make best use of them. While most content may be read by anyone on the world wide web, users are encouraged to register for the wiki to add topics and comments and to be regularly informed of new content via full-content email notifications. Details on how to use the wiki will be left to other resources, including workshops at the Annual Conference; webinars, help (QRG) pages, and the Electronic Communications Forum on the wiki; and email queries to the PIUG Wikimaster.

Thomas Wolff
Wolff Information Consulting LLC

Biography

Thomas E. Wolff, Ph. D, formed Wolff Information Consulting LLC in 2006 to provide technical and patent information services on a contract basis. Tom 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. He has a BS in chemistry from the Massachusetts Institute of Technology and Ph. D. from Stanford University in bioinorganic chemistry. Tom has two US patents and is registered patent agent. For more information, see www.wolffinfo.com

Patents 102 - Part Two of a Basic Patent Primer

This session is aimed at covering the very basics of the patent process and patent law that form the foundation for patent searchers. Newcomers to the field and also those who have been working in patents for a long time will benefit from learning the background, the history, and the effects of various nuances of patent searching including the source and interpretation of patent law as it affects searchers, the derivation and interpretation of these laws on searching activities, and the very basics to allow patent professionals to feel comfortable in discussing patents with other professionals.

Ron Kaminecki
Dialog

Biography

Ron Kaminecki has worked in scientific and technical searching, especially patent searching, for over 35 years. He has worked with patent attorneys, patent agents, patent searchers, and examiners from companies, firms and patent offices all over the world. He is a registered US Patent Attorney and has been a US Patent Agent prior to becoming an attorney. Ron has a BS in Chemistry, an MS in Computer Science and Information Systems, and a JD with a Certificate in Patent Law. His current responsibilities at Dialog 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 and is an inventor with an American and a PCT published patent application. 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. Ron is a co-author of NISO Standard Z-39.58, "Common Command Language for Online Information Retrieval" and 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-three year member of the American Chemical Society.

Semantic & Boolean Searching: The Best of Both Worlds

Abstract

This talk will present ideas on combining the best of keyword and conceptual searching to increase precision and recall of search results.

Michael Hudelson
LexisNexis

Biography

Michael Hudelson is a Director of Intellectual Property Solutions with LexisNexis. Michael holds Bachelor & Master's degrees from Indiana University and a J.D. degree from the University of California. He practiced law before joining LexisNexis in 1996, and has spoken at various conferences and authored articles about IP.

Beyond Your Area of Expertise

Thomas Wolff
Session Chairperson
Wolff Information Consulting

Biography

See biography above.

The How, Why, and When of Accelerated Examinations: A Searcher's Perspective

Abstract

Petitions to Make Special under the USPTO's Accelerated Examination (AE) program allow an applicant the option to trade the long pendencies and carousel of rejections, amendments, and appeals for a quick decision and potential allowance in under 12 months. More importantly to us, these petitions require a fully documented patent search, which should be music to the ears of the PIUG membership. In a year of declining budgets and difficult decisions by our bosses and clients, a program which can make us essential to the patenting process should pique our interest.

The presentation will be based upon an established patent research firm's experiences in handling over three dozen AE petitions. Strategies needed to successfully pursue an AE will be demonstrated, as well as the pitfalls that one may encounter and how these should be handled. Concrete examples of allowed petitions across multiple technologies to use as guidance and multiple examples of rejected petitions to use as warnings will be provided to the PIUG membership.

Dominic Demarco
Demarco IP

Biography

Dominic DeMarco is the managing director of DeMarcoIP, a patent search firm focused on serving the needs of patent attorneys in both prosecution and litigation. DeMarcoIP performs searches across a full range of chemical, electrical and mechanical technologies and has had a great deal of success in the USPTO's Accelerated Examination program. Dominic has a degree in Chemical Engineering from the University of Virginia and is a registered patent agent. Originally trained to search the infamous shoes at the USPTO's Public Search Room in the mid-90's, he was of the lucky generation able to easily transition their skills to the myriad of computerized systems used today by patent information professionals. Dominic's true expertise is in using the USPTO's East (Examiner Automated Search Tool) computer system, the primary search tool provided for the nearly 6,000 patent examiners employed within the US and for the lucky few public searchers living in the Washington DC area.

Use of the Inventor Field in Patent Searching

Abstract

Inventorship is a legal determination and is directly tied to the claims of a patent. This requirement gives the inventor additional significance not fully appreciated or exploited by many patent searches. An innovative method, using the inventor field to identify relevant art in the course of a patent search, will be presented. Conditions where and when the inventor field can be best used by patent searches will be described The method will be validated and an example given illustrating the utility of this inventor-centric approach. An example will also be given where patent family members have different inventors, and the implications of this situation explained.

Henry (Hal) Murray
ExxonMobil

Biography

Hal Murray was formally trained as a inorganic chemist, Eastern Kentucky University and 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. In 1996 Hal joined the Information Research and Analysis Group. Hal is a member of the EI EnCompass vocabulary task force. In addition to patent searching, Hal's other professional interests include competitive intelligence and data visualization.

Chemical Structure Searching for Non-chemists

Abstract

Most searchers are comfortable with text searching, but what do you do when words fail and you have to jump into the world of chemical structure searching. In this talk we'll explore chemical structure searching for the non-chemist. We'll cover structure drawing tools, sources of structure information (both free and subscription), basic structure searches (and how to perform them), what to request from a chemical searching professional, and what constitutes a thorough structure search.

Sandy Burcham and David Gange

Biographies

Sandy Burcham has over twenty years experience as a patent and chemical information search professional, working in such areas as patent searching, chemistry searching, biomedical/biotech searching, and competitive intelligence searching. She has worked for chemical information thought-leaders including Orbit, Derwent, and Questel.

Sandy is an expert the Questel Merged Markush Service (MMS), and continues to provide MMS support for customers using Questel databases and the MMS system. Sandy's clients include law firms, chemical companies, pharmaceutical companies, and biotech companies. In addition to conducting chemistry patent searches and providing Questel customer support, Sandy also provides chemistry searching training.

Sandy received her Bachelor of Science in Chemistry from the College of William and Mary, and attended graduate school at the University of Pennsylvania.

Sandy is a member of the American Chemical Society, the Association of Independent Information Professionals, and the Patent Information Users Group.

For over twenty years David Gange has worked in the areas of chemical information management, chemistry searching, and patent searching. He is the author of more than thirty patents and publications, and in 2007 was awarded U.S. Patent 7,251,643 for a new method of chemical database searching. His clients include law firms, chemical companies, pharmaceutical companies, and biotech companies. David's searching specialties include pharmaceuticals, small molecules, and medical devices. Past projects include novelty searching, competitive intelligence, M & A due diligence, infringement analysis, and state-of-the-art surveys.

David received his Bachelor of Science with Honors in Chemistry from Tulane University. After graduating from Tulane, he went on to receive a Ph.D. in organic synthesis from The Ohio State University and completed postdoctoral studies at Columbia University.

David is a Registered Patent Agent (Reg. No. 55,198), and a member of the American Chemical Society, the Association of Independent Information Professionals, the Patent Information Users Group, the Chemical Consultants Network, and the Society of Competitive Intelligence Professionals.

Impact Assessment of In re Bilski

Abstract

In re Bilski, the en banc United States Court of Appeals for the Federal Circuit (CAFC) decision on the patenting of method claims, has brought the spotlight back on the world of business method patents. Several patent cases have recently been rejected by the Board of Patent Appeals and Interferences (BPAI) for containing software-style method claims as lacking patentable subject matter.

We are currently conducting a study on a sizable number of patents pertaining to subject matters in several different domains including medical devices, software and telecommunications. Each of the randomly selected patent applications will be reviewed with respect to the machine-or-transformation test as the applicable test for patent-eligible subject matter. We will assess the proportion of the selected patents that would be affected by Bilski, and lay out the implications thereof for inventors in different industries.

Biographies

Roy Zimmermann
Medtronic

Roy Zimmerman 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.

Samir Raiyani
Dolcera

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.

Lakshmikant Goenka
Dolcera

Lakshmikant Goenka – see biography above.

Closing Remarks

Doreen Alberts
PIUG Vice Chair
Theravance Inc.

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 was the Program Co-chair of the 2008 PIUG Annual Conference.

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