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The International Society for Patent Information Professionals

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PIUG 2010 Annual Conference
An International Conference for Patent Information Professionals

Moving Targets: Current & Future Best Practices and Opportunities for Patent Information Professionals

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

Saturday, May 1 to Thursday, May 6, 2010

Hilton Baltimore Convention Center
401 West Pratt Street
Baltimore, MD 21201
Tel: +1 443-573-8700

Conference Events

Registration covers all these conference events:

  • Speakers Dinner (by invitation only) – Saturday evening, May 1, 7:00pm – Sponsored by LexisNexis®
  • PIUG Business Meeting – Sunday afternoon, May 2, 4:00-5:30pm
  • First-Time Attendees Reception – Sunday evening, May 2, 6:15-7:00pm
  • Welcome Reception – Sunday evening, May 2, 7:00-9:00pm – Sponsored by STN
  • IPI Award Ceremony and Dinner Celebration – Monday night, May 3
  • Conference breakfasts, lunches, and refreshments during meeting breaks – Monday-Wednesday, May 3-5
  • IFFI Players Production and dessert reception – Tuesday evening, May 4, 7:30pm
  • PIUG Committee Meetings – Wednesday May 4, time and locations to be determined by committee members

Early-bird registration closes March 31, 2010. The deadline for Advanced Registration closes Friday, April 28, 2010. The full registration fee is $550 and is not refundable after April 3, 2010. On-site registration may be possible if space is available. See full details on the Registration page.

Technical Session – Monday to Wednesday – Holiday 1-3

 Monday, May 3
Morning
7:30-8:30am Breakfast Location: Exhibits Hall – Holiday 4-6
8:30-8:50am Opening Session
Cynthia Barcelon Yang, PIUG Chair, Bristol-Myers Squibb
8:50-9:00am Brian Stockdale Award Presentation
Edlyn Simmons, PIUG Director-at-large
9:00-10:00am
Introduction of the Keynote Speaker by Ginger DeMille, USPTO
Keynote Address
Robert L. Stoll, Commissioner for Patents, USPTO
10:00-10:30am Break – Exhibits Hall – Holiday 4-6
Sponsored by Search Technology/VantagePoint
10:30-12:15pm Updates from Patent Offices
Chairperson – Stephen Adams, Magister Ltd.
10:30-10:35am Opening Remarks
Chairperson – Stephen Adams, Magister Ltd.
10:35-10:55am Update from the Brazilian Patent Office
Luci Mary Gonzalez Gullo, National Institute of Industrial Property (INPI), Brazil
10:55-11:15am Patent Protection in South Africa and Patent Information Available Online
Elena Zdravkova, CIPRO, South Africa
11:15-11:35am TBA
TBA
11:35-11:55am Updates from Other Patent Offices
Stephen Adams, Magister Ltd.
11:55am-12:15pm Q&A
Monday, May 3
Afternoon

12:15-1:30pm Lunch & Service Award Presentations
Sponsored by Questel
Location: Key Ballroom 9-12
1:30-3:00pm Moving Targets from Changes to Practices of USPTO
Chairperson – Martin Goffman, Sequence Base Corporation
1:30-1:35pm Opening Remarks
Chairperson – Martin Goffman, Sequence Base Corporation
1:35-2:00pm Updates on US Patent Law and Practice
Rick Neifeld, Neifeld IP Law PC
2:00-2:25pm Getting to the front of the line: The Patent Prosecution Highway
Rouget F (Ric) Henschel, Foley & Lardner
2:25-2:50pm Do You Own Your Genes? - The Future of Gene Patents
Martin Goffman, Sequence Base Corporation
2:50-3:00pm Q&A
3:00-3:15pm Product Reviews
3:15-3:45pm Break – Exhibits Hall – Holiday 4-6
Sponsored by Minesoft
3:45-5:30pm Other Moving Targets for Patent Professionals
Chairperson – Brian Bridgewater, The Dow Chemical Company
3:45-3:50pm Opening Remarks
Chairperson – Brian Bridgewater, The Dow Chemical Company
3:50-4:15pm A Status Update on the Development of Certification of Patent Information Professionals
Aalt van de Kuilen, Solvay
4:15-4:40pm PIUG Update on Certification Program - PETT Initiatives
Susanne Hantos, Davies Collison Cave
4:40-5:05pm Patent Information Retrieval Contest (PIRC) 2009 in Japan
Yoshiharu Nakade* and Tsutom Kiriyama, PIRC
5:05-5:30pm Evaluating the Effectiveness of Patent Search Systems
John Tait, IRF
6:30pm- IPI Award Dinner
Cocktails at 6:30pm (cash bar), dinner at 7:15pm
Sponsored by PIUG
Location: Key Ballroom 9-12
Tuesday, May 4
Morning

7:30-8:30am Breakfast Sponsored by Matrixware
Location: Exhibits Hall – Holiday 4-6
8:30-10:00am Patent Analysis in the World of Moving Targets
Chairperson – Tony Trippe, 3LP Advisors
8:30-8:35am Opening Remarks
Chairperson – Tony Trippe, 3LP Advisors
8:35p-9:05am Computer Curation of Intellectual Property & Scientific Content
Steve Boyer, IBM
9:05-9:20am A Patent Research Best Practice: Using Semantic Search Technology to Overcome Research Challenges
Mike Hudelson, LexisNexis
9:20-9:50am Statistical Analysis, a tool to evaluate many facets of a technology
Pierre Buffet, Questel
9:50-10:00am Q&A
10:00-10:15am Product Reviews
10:15-10:45am Break – Exhibits Hall – Holiday 4-6
Sponsored by INTELLIXIR
10:45-12:15pm Life Beyond Patent Information. to Dream the Impossible Dream .... or Not. Alternative Careers for the Patent Information Professional
Chairperson – Martin Goffman, Sequence Base Corporation
10:45-11:00pm Opening Remarks and Personal View
Martin Goffman, Sequence Base Corporation
11:00-11:15am Personal View of Life Beyond Patent Information
Connie Wu, Rutgers University
11:15-11:30am Personal View of Life Beyond Patent Information
Bob Stembridge, Thomson Reuters
11:30-11:45am Personal View of Life Beyond Patent Information
Ginger DeMille, USPTO
11:45am-noon Personal View of Life Beyond Patent Information
Stephan Adams, Magister Ltd.
noon-12:15pm Q&A
Tuesday, May 4
Afternoon

12:15-1:30pm Lunch Sponsored by Thomson Reuters
Location: Key Ballroom 9-12
1:30-3:45pm Moving Targets in Search Techniques and Tools
Chairperson – Kartar Singh Arora, BASF Corporation
1:30-1:35pm Opening Remarks
Chairperson – Kartar Singh Arora, BASF Corporation
1:35-2:00pm Product Reviews
2:00-2:15pm Defining Rules for Selecting Information in Multi-Database Patent Reports
Diane Webb, BizInt
2:15-2:35pm Natural Language v. Boolean: Sorting Out Natural Language, Semantic Search and Taxonomic Queries in Patent Searching
Kris Atkinson, Boston Scientific Corp
2:35-2:50pm Product Reviews
2:50-3:15pm Revisiting INPADOC - New Developments in Legal Status Information
Stephen Adams, Magister Ltd.
3:15-3:30pm Implementing the Innovation Cycle
Francisco E. De Sousa Webber, Matrixware
3:30-3:45pm Product Reviews
3:45-6:30pm Extended Break and Exhibit Room Open for Product Reviews
Break sponsored by SumoBrain
4:00-5:00pm Workshops
7:30pm- IFFI Play and Dessert Reception
Location: Peale A-C
Wednesday, May 5
Morning

7:15-8:15am Breakfast Sponsored by PIUG
Location: Exhibits Hall – Holiday 4-6
8:15-10:15am Moving Targets: Current & Future Best Practices in Searching, Reporting and Analyzing – Part 1
Chairperson – John Arenivar, The 3M Company
8:15-8:20am Opening Remarks
Chairperson – John Arenivar, The 3M Company
8:20-8:35am Product Reviews
8:35-9:05am Moving Beyond Patents - the Developing Role of the IP Information Specialist as an Integral Part of Business Success
Cindy Poulos, Thomson Reuters
9:05-9:30am SIMPLE: A Platform for Deriving Business Value from Patent Information
W. Scott Spangler, IBM
9:30-9:55am Objectively Assessing Patent Quality Using Sophisticated Statistical Models and Predictive Analytics Tools
Jonathan Barney, Ocean Tomo
9:55-10:15am Product Reviews
10:15-10:45am Break – Exhibits Hall – Holiday 4-6
Sponsored by Ocean Tomo
10:45am-12:30pm Patent Information in the Age of Outsourcing
Chairperson – Bruce Mason, CibaVision
10:45am-10:50am Opening Remarks
Chairperson – Bruce Mason, CibaVision
10:50-11:10am Outsourcing - Meeting Challenges and Generating Opportunities
Barbara Sue Faries and James Grant, SciMed Partners
11:10-11:30am Outsourcing Opportunities in the Patent Analytics: A Case Study on India
Srinivasan Parthiban, Patent Eagle
11:30-11:50am The 5 Things You Must Know Before Outsourcing to India
Charles Brumlik and David Gange, Nanobiz LLC
11:50am-12:10pm Eye on Asia
Brian Sweet, STN
12:10-12:20pm Q&A
12:20-12:30pm Product Reviews
Wednesday, May 5
Afternoon

12:30-1:30pm Lunch including Bingo Card drawing
Sponsored by TBA
Location: Key Ballroom 9-12
1:30-3:00pm Roundtable Discussion on Moving Targets
Chairperson – Lucy Akers, Bristol-Myers Squibb
1:30-1:40pm Opening Remarks
Chairperson – Lucy Akers, Bristol-Myers Squibb
1:40-2:20pm Roundtable Discussion on Moving Targets – Session 1
2:20-3:00pm Roundtable Discussion on Moving Targets – Session 2
3:00-3:30pm Break – Exhibits Hall – Holiday 4-6
Sponsored by Dialog
3:30-5:30pm Moving Targets: Current & Future Best Practices in Searching, Reporting and Analyzing – Part 2
Chairperson – Zhifu Shu, ExxonMobil
3:30-3:35pm Opening Remarks
Chairperson – Zhifu Shu, ExxonMobil
3:35-4:00pm Finding the Synergy Need to Create a Strategic Patent Portfolio
Fonda J. Daniels, SAS
4:00-4:25pm Mechanical Patent Searching: A Moving Target
Dominic DeMarco, DeMarco IP, and Andrea Davis NuVasive, Inc.
4:25-4:50pm Patent Information Services in China
Yongsheng Wang, IPPH
4:50-5:15pm Patents as a Moving Target
Chairperson – Ron Kaminecki, Dialog
5:15-5:25pm Q&A
5:25-5:30pm Closing Remarks
Doreen Alberts, PIUG Vice Chair, Theravance Inc.
Evening (time to be determined) Committee Meetings – sign-up and make arrangements at the Conference
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 - 2010 Conference Planning Committee. She is the BMS delegate to the Patent Documentation Group (PDG), and is a member of the STN Advisory Council, IRF IP Advisory Board, and the IPI Award Selection Board.

Brian Stockdale Award Presentation – Recognition of the 2010 Brian Stockdale Award Recipient

Edlyn Simmons
Director-at-large – PIUG
Simmons Patent Information Service, LLC

Biography

Edlyn formed Simmons Patent Information Service, LLC in 2009. She retired from Procter & Gamble where she was Section Manager, Patent Information, in the Intellectual Property & Business Information Services group. Edlyn is 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. Edlyn has spoken and written extensively on patents and chemical information.

Personal View of Life Beyond Patent Information

and Introduction to Keynote Address

Abstract

Ginger DeMille has over 20 years experience as an information professional. Her career began as a Patent Searcher for Derwent, Inc, which was based in the Search Room at the USPTO in Crystal City, VA. It was here that her love for searching began. However, her mentor, Richard Kurt, had other career plans for her that led to becoming an Online Training Executive, and eventually a Manager. In this role, she met many members past & present of the Patent Information Users Group, and Derwent users from special libraries, academia, the legal community, and the USPTO. Ginger will talk about how being a "generalist" rather than a "specialist" provided a range of career options and choices.

Ginger DeMille
USPTO

Biography

Ginger DeMille is a Supervisory Technical Information Specialist in Electronic Information Center (EIC) 3600 under the Scientific & Technical Information Center (STIC). STIC supports over 6,000 patent examiners with Prior Art Searching, Non-Patent Literature Resources, Automation Training & Support, Document Delivery and Translations, and Reference Assistance.

Ginger has a BS in Information Systems Management with a minor in Chemistry from the University of Maryland, and has graduate courses towards a MS/MBA. She is an active member of the Patent Information Users Group (PIUG). She has served as a Volunteer for PIUG Program & Planning Committees, Co-chaired the Session “The USPTO Goes Paperless” in 2005, and on the Board of PIUG as Secretary from 2006-2009.

Keynote Address

Abstract

Robert L. Stoll
Commissioner for Patents, USPTO

Biography

Robert L. Stoll was sworn in as Commissioner for Patents on October 5, 2009. Prior to that, Mr. Stoll was Dean of Training and Education. In that capacity he directed efforts to train foreign officials and the public on all aspects of intellectual property. Before his appointment as Dean in 2007, Mr. Stoll served as director of the Office of Enforcement for the United States Patent and Trademark Office (USPTO) for five years beginning in 2002.

In 1995, Mr. Stoll became the Administrator of the Office of Legislative and International Affairs for USPTO. In this capacity, he led development and analysis of legislation concerning intellectual property, as well as analysis of international issues related to intellectual property.

Mr. Stoll was appointed Executive Assistant to the USPTO Director in 1994 and was responsible for providing technical and policy assistance to the Director on a broad range of national and international intellectual property issues. He also helped develop and plan USPTO strategic goals, objectives, and priorities, and served as a liaison with patent and trademark bar groups and academic and scientific communities.

Mr. Stoll joined the Federal Service in 1979 as a Chemical Engineering Researcher in metallurgy at the United States Bureau of Mines, where he worked until 1982. He joined the USPTO in 1982 as a Patent Examiner, reviewing patents for metal containing complexes and compounds. In 1990, he became a Supervisory Patent Examiner, managing the examination of classified chemical applications, radioactive bio-treating compositions, and liquid crystals.

Mr. Stoll holds a bachelor of science in chemical engineering from the University of Maryland. While working at USPTO, he earned a juris doctor from Catholic University and became a member of the Maryland Bar.

Revisiting INPADOC - New Developments in Legal Status Information

and Updates from Patent Offices (Chairperson's Remarks)

Abstract

Many experienced searchers first encountered patent legal status information through the EPO's INPADOC Patent Register Service (PRS), or legal status module. For many years, it was the most readily available source of legal status for many countries. As more and more patent offices have started to load their own legal status information into a national web-based register, the PRS product has been challenged in the marketplace. This presentation will review the up-to-date content of the EPO's legal status collection, its strengths and weaknesses against national registers, and new developments in the documentation which will make this source more understandable and easy to use in the future.

Stephen Adams
Magister Ltd.

Biography

Stephen Adams is managing director of Magister Ltd, a UK-based consultancy in patent information founded in 1997. Stephen is a past Director-at-Large of PIUG Inc. (2002-2006) and has held positions in the UK's Patent and Trade Mark Group (PATMG). Magister Ltd has a wide range of clients for its consulting and training activities, including national patent offices, database producers and the user community in industry.

Update from the Brazilian Patent Office

Abstract

The Brazilian Industrial Property Office took the initiative in the mid 1990's to make their national patent documentation available on the internet. At that time bibliographic information was the only information available through the national patent database. Since then the office has been working hard to improve access to Brazilian patent documents and to provide additional information related to these documents at no cost to the public.

Our long term goal is to increase the availability of free patent document information not only for Brazilian citizens, but for foreigners as well. We hope to make Brazilian patent documents fully available, both nationally and internationally in the near future.

This presentation summarizes the performance goals achieved by our office up to the present and its polices encouraging the increased utilization of patent information throughout Brazil.

Luci Mary Gonzalez Gullo
Head of Studies and Programs Division, National Institute of Industrial Property (INPI), Brazil

Biography

Luci Mary G. Gullo has been working in the Dissemination, Documentation and Technological Information Center of INPI since 1982. She is a Civil Engineer and has worked as a patent examiner for many years. She has a graduate degree in "Competitive Intelligence" from Rio de Janeiro Federal University and a M.S. in "Advanced Studies in Scientific Information" from Aix-Marseille III University.

Since 2007 she has been heading the Studies and Programs Division of the INPI. One of the responsibilities of the Division is to encourage the usage of bibliographic and technical information contained in patent documents.

Patent Protection in South Africa and Patent Information Available Online

Abstract

The presentation includes a brief overview of the South African patent protection system and the sources of patent information available online. The first part describes the main features of the South African patent law and practice as well as the patent registration procedure. The second part deals with the South African patent information available online on the Companies and Intellectual Property Registration Office (CIPRO) website and on the World Intellectual Property Organization (WIPO) website under "The National Patent Collections" on PatentScope.

Elena Zdravkova
CIPRO, South Africa

Biography

Elena M. Zdravkova is working for the Companies and Intellectual Property Registration Office (CIPRO) since 2000. She is currently the Senior Manager (Registrar) of Patents & Designs. Ms. Zdravkova has over 25 years experience in the field of intellectual property. She holds a M Sc. degree in electrical engineering from the Technical University in Sofia and a LLB degree from UNISA. In the recent couple of years she is actively involved in the CIPRO -WIPO project for digitalization of the South African patent documents.

Update from the USPTOTBA


TBA

Do You Own Your Genes? - The Future of Gene Patents

and Moving Targets from Changes to Practices of USPTO (Chairperson's Remarks)

Abstract

Do we need a genetic "bill of rights"? Dr. Goffman will present a comprehensive case study examining all sides of the complex question "should genes be patentable?" Does the Government have the right to grant exclusive rights to one company over our genes?

The case study will examine in detail the sequences at the heart of the Myriad Genetics et. al. lawsuit and examine the other patents and companies potentially affected by the decision. The sequence search results will be combined with the results of text searching on multiple files on multiple systems and hosts. All of the results will be tied together to tell a complete story. The object is to show the absolute need to use not only multiple files but multiple systems in order to demonstrate complete objectivity and multiple viewpoints from multiple sources to tell the whole story.

Bullet points will be used throughout to show the contrasting results from different sources.

As time permits, we will examine and comment on the various arguments, both pro and con, on this topic. Data will include commentary from some of the thought leaders having opposing views as well as some of the legal points raised by attorneys on both sides. While illustrating the arguments on both sides of the issue, the focus of the paper will be to demonstrate the need for using not only multiple files on a single system but the necessity in some cases to resort to the use of multiple systems to show a complete and unbiased story. We will show why no one system is sufficient and what is missed by an incomplete search.

Martin Goffman, Ph.D.
Session Chairperson
President and CEO, Sequence Base Corporation

Biography

Martin Goffman is the owner and principal consultant of Martin Goffman Associates, a privately held research, development, and consulting organization. Prior to starting his consulting practive 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, a web based patent valuation service.

In 2006 he started the SequenceBase Corporation, producer of USGENE®, the USPTO Genetic Sequence Database currently hosted on STN and available on a subscription basis.

Updates on US Patent Law and Practice

Abstract

Dr. Neifeld will provide an update on changes to U.S. patent law and practice, including statute, case law, and regulatory law, and provide a vision where U.S. patent law and practice are heading in the years to come.

Rick Neifeld
Neifeld IP Law, PC

Biography

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, patent interferences, and trademark oppositions in the USPTO, and prosecution abroad.

Getting to the front of the line: The Patent Prosecution Highway

Abstract

The Patent Prosecution Highway ("PPH") is a worksharing program for patent offices. Essentially, the PPH is a program between two nations to exchange results and accelerate prosecution of patent applications. The applicant submits to the second office only those claims approved in the first office, and the applicant's application goes to the front of the line in the second office. A PPH pathway is now available between the patent offices of the United States and EPO, JPO, UK, Korea, and others.

Rouget F. (Ric) Henschel
Foley & Lardner LLP

Biography

Dr. Henschel is a partner with Foley & Lardner LLP. He is co-chair of the Life Sciences Industry Team and is also a member of the Chemical, Biotechnology & Pharmaceutical; Intellectual Property Litigation; and International Practices. He previously served as vice chair of the formerly named Chemical & Pharmaceutical Practice.

Before becoming a patent lawyer, he was with the American Petroleum Institute's Central Abstracting & Indexing Service (API-CAIS) and DIALOG Information Services.

Other Moving Targets for Patent Professionals (Chairperson Remarks)

Brian Bridgewater
The Dow Chemical Company

Biography

Brian Bridgewater is a Senior Information Analyst in the Technical Information Services Search & Analysis Group of the Dow Chemical Company. Prior to this Brian held positions with the Rohm & Haas Company in the Emerging Technology Department where he was the Nanotechnology Coordinator, and the Process Technology Group where he was a Senior Process Chemist supporting the Architectural and Functional Coatings business.

Brian holds a Ph.D. in synthetic organometallic chemistry and B.Sc. in chemistry from the University of Durham in the United Kingdom.

A Status Update on the Development of Certification of Patent Information Professionals

Abstract

In 2009 a framework for the certification of patent information professionals was laid done in a common document of the Patent Documentation Group (PDG) and the Confederacy of European Patent Information User Groups (CEPIUG). Since then these groups started working with joint efforts and significant progress has been made for instance in the development of mock examination papers. Over 30 volunteers are currently contributing, including some PIUG members. This presentation will describe what has happened so far, and give an update of the status at the time of the conference.

Aalt van de Kuilen
Solvay Pharmaceuticals B.V.

Biography

Aalt joined Solvay on 1st April 1980 as a chemist at the age of 23. At that time the company was known as Philips Duphar, part of the Philips Corporation. After several years, in 1989, he was given the opportunity by Solvay to work part-time (1.5 days a week) as Chemistry teacher and was awarded a teaching degree by completing a two-year course. In 1993 he moved into the Patent Department inside Solvay Pharmaceuticals and received training as a Patent Information Specialist.

During this period he became a member of WON (Dutch Patent Information User Group) and soon afterwards a Board Member of WON. He is a member of SACEPO (Standing Advisory Committee of the European Patent Office) and represents Solvay Pharmaceuticals in the Pharma Documentation Ring (PDR). Aalt is also teacher at the GO-Institute for the training course for Patent Information Specialists (PIS). In March 2008 he has been elected as President of the CEPIUG (Confederation of the EU-user groups)

From September 2002 onwards, when the Intellectual Property and Scientific Information Business Sectors at Solvay Pharmaceuticals were combined, he became responsible for all Patent and Chemical Information. Aalt is married and has a son (22) and a daughter (20).

PIUG Update on Certification Program - PETT Initiatives

Abstract

The PIUG has been working closely with the PDG and CEPIUG to establish a certification scheme that will recognize patent information professionals for their diverse set of skills and knowledge, as well as, introduce a formal manner in which to seek qualifications for new entrants to the profession. A high standard needs to be established to reflect the talent it takes to be a patent information professional. A tiered approach for evaluating competency in patent searching has been devised by the PIUG Certification Working Group, and the approach will be described during this presentation. The tiered approach has been designed to accommodate the needs of patent information users from diverse working environments.

Susanne Hantos
Davies Collison Cave

Biography

Susanne is the manager of the Patent Intelligence Services division of Davies Collison Cave, an Australian intellectual property law firm. Susanne is a trained chemist, a librarian and a registered Australian and New Zealand patent attorney and Canadian patent agent who specializes in conducting patent and scientific literature searches in order to advise on novelty, patent infringement/freedom to operate and patent validity issues related to chemical technology. Susanne is a member of PIUG, ACS, SLA as well as an associate member of the Institute of Patent and Trade Mark Attorneys of Australia, the Intellectual Property Institute of Canada, and the Australian Library and Information Association.

Patent Information Retrieval Contest (PIRC) 2009 in JAPAN

Abstract

In Japan the third online Patent Information Retrieval Contest (PIRC) was held in 2009. The results and administrative improvement in these three years are reported with an aim of Executive Committee for PIRC and an ideal image for Patent Information Specialists of PIRC. One of the successful results is the measuring the abilities of the patent information specialists in quantitative terms. Some future outline is also reported.

PIRC 2009 was held under the auspices of INPIT (the National Center for Industrial Property Information and Training) and AKPIC (Association for Kansai Patent Information Center). The INPIT, an Independent Administrative Institution, was established on April 1, 2001. The center provides comprehensive information on industrial property. In October 2004,the National Center for Industrial Property Information and Training started providing "information dissemination services" and "human resource development services."

AKPIC is an organization with a membership system which supports the Kansai Patent Information Center in acquiring and expanding domestic and foreign patent information and promoting it's use.

Biographies

Yoshiharu Nakade
PIRC

Mr.Yoshiharu Nakade is the chairman of the Executive Committee of PIRC. He was also former chairman of Intellectual Property Information Search Committee of Japan Intellectual Property Association (JIPA). He has retired from Mitsubishi Electric Corporation.

Tsutom Kiriyama
PIRC

Dr.Tsutom Kiriyama is the deputy chairman of the Executive Committee of PIRC. He is also a core-person of Patent Documentation Group of Information Science and Technology Association, Japan (INFOSTA). He has retired from Teijin Intellectual Property Center, Ltd.

Evaluating the Effectiveness of Patent Search Systems

Abstract

During 2009 the Information Retrieval Facility, a Vienna, Austria, based not-for-profit organization promoted two major evaluations of patent search systems.

The first, TREC CHEM, was run under the auspices of the US federal National Institute of Standards and Technology, and focused on chemistry searching using a collection of chemical patents (supplied by Matrixware) and academic papers supplied by the Royal Society of Chemistry.

The second, CLEF IP, was run under the auspices of the somewhat informal European Cross Language Evaluation Forum, and focused on searching patent data in English, French and German across all subject domains.

The presentation will review the results of evaluations and point out some preliminary conclusions and future directions. Very briefly, the primary conclusions is that knowledge of patents helps with effective retrieval, but it is difficult to integrate domain knowledge (e.g. of chemistry) into essentially text retrieval systems in a way which genuinely improves effectiveness. Both evaluation campaigns will run again in 2010 in improved form, learning from the lessons of the 2009 campaigns and trying to make the evaluations more relevant to the requirements of real patent searchers.

Disappointingly all the entrants were academic or research institutes and we at the IRF are hoping to either get engagement from commercial suppliers or to find other types of evaluation campaign with which they are willing to engage.

On a more positive note the campaigns have radically raised the profile of patent search as a problem and potential market for the technology providers, and hopefully this will lead to significant improvements in the tools available to patent searchers in the not-too-distant future.

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.

Patent Analysis in the World of Moving Targets (Chairperson Remarks)

Tony Trippe
3LP Advisors

Biography

Anthony (Tony) Trippe is currently Director of IP Analytics at 3LP Advisors. 3LP's approach bridges the traditional disciplines of intellectual property, business strategy, and investment advisory. 3LP applies proprietary tools, methods and know-how based on experience over many years to design and execute transactions involving IP assets. Before joining 3LP, Tony worked at CAS, helping to establish Science IP as the premier chemical patent searching firm for the IP Law Firm community. Also, at CAS, Tony was the lead requirements developer for STN Analyze Plus, STN AnaVist and SubScape for SciFinder. Tony has also worked at several pharmaceutical companies in a variety of roles.

Computer Curation of Intellectual Property & Scientific Content

Abstract

IBM Research working together with a team of collaborators derived from several pharmaceutical companies, universities and government agencies has successfully developed text analysis technology to identify chemical names and other entities in unstructured text. Once identified, we convert the chemical names into their chemical structures using [name=structure] programs. This produces SMILES strings representing the chemical structures that are subsequently used in computational calculations and as input for other applications. Using this technology, the IBM lead team has already analyzed millions of patents and Medline abstracts and generate a large database of molecular structures derived from the text of those documents. This work effectively renders the scientific and patent literature searchable by structure/substructure search applications. Additionally, bio-terms and other domain specific entities are identified and numerous attributes derived and associated with those terms and their respective documents. This derived meta data can significantly impact how these documents are searched as well as their relevance in association with related literature.

Recently, we started extending our investigations from text analysis to image analysis. This technology allows us to selectively identify chemical and other image entitles such as tables, graphs etc.. The chemical images are converted into chemical structures using software from NIH and others for the optical recognition of chemical structures.

This approach of computer based text + image analysis combined with the integration of manually curated content has allow us to build large databases of previously inaccessible literature - relevant in the areas such as patents, pharmaceuticals, publishing, health care, and environmental science.

In the course of this work, we developed novel tools for performing analysis and data mining operations to the data derived from the computer curation processes. This talk will present an overview and demonstration of these new and exciting technologies.

Steve Boyer
IBM

Biography

Stephen K. Boyer has over 30 years of experience in numerous capacities in corporate environments. During the 20 years at IBM's Research Division, Dr. Boyer was credited with being the "father" of the IBM Patent Server which was an attempt to aggregate the entire intellectual property of the world. This initiative has since been spun out of IBM as a separate company "Delphion" and was acquired by Thomson Publishers. Dr. Boyer served as an advisor to the World Intellectual Property Organization (WIPO) on their WIPO-Net initiative and as a lecturer to the WIPO international academy on technical issues and opportunities for improving international access to intellectual property.

Dr. Boyer also worked on IBM's Digital Library initiative. He initiated collaboration between IBM and Thomson Publishing which resulted in a successful effort to make scientific and technical journals available via the internet, currently marketed as the Web of Science by Thomson ISI Corp. Dr. Boyer has worked in numerous capacities (technical and management) for IBM including four years on overseas assignments to direct scientific and technical computing initiatives in Europe. He worked with numerous companies to foster new initiatives related to scientific and technical computing. Dr. Boyer has patents applying computer technology to developing tools for building scientific databases and several pending patents on internet metacrawling & searching technologies. Recently he has been working in the area of 'text analytics' applied to healthcare & life sciences, specifically on the automated annotation of large document repositories.

Prior to working for IBM research, Dr. Boyer worked for 10 years with Ciba-Geigy, a Swiss pharmaceutical company now called Novartis. While at Ciba-Geigy, he worked in Europe and in the US as a Senior Research Scientist where he played a critical role in the development and commercialization of two drugs, (a cephalosporin antibiotic (Oraspore) and an ACE inhibitor (Lotensin / Benazapril)). Dr. Boyer has numerous technical publications and has lectured extensively as an invited speaker. He holds several patents related to the discovery of new synthetic methods and production of medicinal compounds currently marketed by Novartis. Prior to working at Ciba-Geigy / Novartis, he worked as a lecturer in theTufts University chemistry department. He holds a Bachelor of Arts degree from Temple University in Philadelphia and a Ph.D. in synthetic organic chemistry from Tufts University in Massachusetts. He is married and has two children.

Statistical Analysis, a Tool to Evaluate Many Facets of a Technology

Abstract

As patent information repositories become more and more comprehensive both in terms of countries covered and of backlogs available, statistical analysis and vizualisation tools allow to identify trends over time in many ways such as fields covered, active companies, emerging countries or co-operations. An example on nano filtration will highlight these aspects.

Pierre Buffet
Questel

Biography

Pierre Buffet received a degree in Engineering in Informatics from the École Centrale de Lille (1969). After several positions in operational research and the information industry he co-founded Questel in 1978. Currently, he is Executive Vice President of Questel.Orbit, in charge of strategic issues. His major emphasis is on scitech and patent information, and he operates in close contacts with many patent-granting bodies worldwide as well as the patent information industry, such as Thomson-Derwent. Milestones in his career are the CNRS Pascal file, the Merged Markush Service, the EPOQUE system (co-operation with the EPO), and his close contacts with the Japanese patent community.

Pierre has been or still is an active member of many groups and associations such as CSA Trust, GFII, ICSTI, OLPI, PATCOM, PDG, PIUG, or WON. He has published numerous papers, is a programme committee member of the International Chemical Information Conference organised by Infonortics, has served for 10 years as Associate Editor of JCICS (ACS) and was President of EUSIDIC for three years. Pierre's professional achievement has been awarded with the EUSIDIC Personality of the Year Award (1987), the Online Silver Jubilee Lifetime Achievement Award (2001), and the International Patent Information Award (2006).

Life Beyond Patent Information
To Dream the Impossible Dream .... or Not. Alternative Careers for the Patent Information Professional

Abstract

Many of our members are losing or in danger of losing their jobs. Some are underemployed while others are left in limbo not knowing whether their job is in jeopardy of being outsourced overseas.

This "career panel" presents five individuals each with a different outlook on the opportunities our profession presents.

Each panelist will speak briefly about their career, what motivated them to choose this path, what pitfalls they encountered (earning power, family responsibility, travel commitments, etc) and what advice they were given or not given, and finally the big change or a new career followed by candid comments on how it worked out for each of them. The formal presentations will be followed by an "open mike" so that people in the audience can ask specific questions. This session is specifically designed for audience participation and ample time will be given for questions.

Our panel will consist of Connie Wu, a tenured faculty member and Engineering Resource Librarian at Rutgers University, Bob Stembridge, Customer Relationships Manager, Thomson Reuters, Ginger DeMille, Supervisory Technical Information Specialist at the USPTO, Stephen Adams, chief executive of Magister Ltd, and Martin Goffman, President and CEO, SequenceBase Corporation.

Biographies

Connie Wu
Rutgers University

Connie Wu, a former patent examiner at the State Intellectual Property Office of China (Patent Office of China). She has been working as an Engineering and Patent Information Librarian at Rutgers University since 1988. Her engineering background and years of training in the patent field have helped her tremendously for her professional growing and her current position in an academic setting. Her talk will share with audiences her 20 plus years of experience in the academic librarianship beyond the patent information retrieval and examination as well as her research involvement related to patents.

Bob Stembridge
Thomson Reuters

Bob Stembridge graduated 30 years ago from Sussex University with an honours degree in Chemistry. However, his time spent in the lab before going to University taught him he did not want to go back on the bench, so he chose publishing instead starting out as a chemical reaction editor at Derwent. His career has taken him to all sides of the information equation - producer, consumer and vendor - and his talk will share with the audience some of the key factors and decision drivers which led to the direction taken at different crossroads along the way.

Moving Targets in Search Techniques and Tools (Chairperson Remarks)

Kartar Singh Arora
BASF Corporation

Biography

Kartar works as a Technical Manager for BASF Corporation. His responsibilities include management of IP assets for the company.

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.

Defining Rules for Selecting Information in Multi-Database Patent Reports

Abstract

When creating patents reports combining search results from different databases, how do you choose between conflicting information from different sources? BizInt Smart Charts for Patents users were surveyed to determine the explicit and implicit rules they use in selecting information in multi-database reports. For example, do you select information from the most recently updated record or from your preferred database? Selected case studies will demonstrate the impact of using different types of rules.

Diane Webb
BizInt

Biography

Diane Webb is President and CEO of BizInt Solutions, Inc. Diane has almost 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.

Diane enjoys graphic design and publishing and has served as Production Editor for the PIUG newsletter and PIUG annual and northeast meeting books. She also spends much of her time outside work training and competing with her longhaired dachshunds.

Natural Language v. Boolean: Sorting Out Natural Language, Semantic Search and Taxonomic Queries in Patent Searching

Abstract

In the past decade the influence of natural language processing on information retrieval (IR) has been close to miraculous. For many with advanced training in Boolean processing for extracting patent data from structured databases, differences between the IR methods and their hybrids are sometimes unclear or unknown. We will explore how the two IR processes work, some of the advantages and hazards that can be encountered when using one or the other for patent purposes, and how the patent offices and internet sources provide answers to queries.

Kristine Atkinson
Boston Scientific Corp

Biography

Kristine H. Atkinson is a registered US patent agent employed as an IP searcher in medical devices, having earned an undergraduate degree in foreign languages and graduate degrees in cell biology and genetics. She has served as a laboratory director in tissue culture, vaccine development and in protein chemistry and chemical engineering. She has been a medical editor and regulatory reviewer, and belongs to the PIUG Newsletter, Education & Training, and Boston Biotech Meeting program committees. She has a special interest in the significance of semantic analysis on patent search design.

Patent Research Best Practice: Using Semantic Search Technology to Overcome Research Challenges

Abstract

Overview of some of the challenges encountered in patent research and how semantic technology can address and overcome those challenges for more effective and efficient 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.

Implementing the Innovation Cycle

Abstract

Efficient creation, utilization and management of Information-about-Information (the Aboutness) is key for succeeding in the global R&D race. Since 2005 Matrixware has been examining the field of Professional Information Retrieval. We have studied the scientific foundations, explored the necessary engineering and examined the surrounding business contexts. Based on our findings, we have developed the concept of the Matrixware-Innovation-Cycle. The aim of this concept is to systematically bring technical advances in Information Science to implementation, in order to help the industrial innovation engine leverage the increasing need for information in a world swamped with data.

By teaming up Information Science, Information Technology and Information Professional communities we initiate a process that is embedded in four frameworks: The Data Framework, The Technical Framework, The Skill Framework and The Community Framework.

These frameworks are fundamentally based on the Wikinomics principles of open source, open science and open business. This presentation will describe the nature and interaction of these 4 frameworks and how they can be applied in the context of patent information.

Francisco E. De Sousa Webber
Matrixware

Biography

Francisco founded Matrixware in 2005 and has served as CEO since the company's founding. He took an interest in information technology as a medical student specializing in genetics and serology at the University of Vienna. He participated in various research projects at the Vienna Serological Institute and was heavily involved in medical data processing. He took part in such projects as establishing and organizing Austria's dialysis register database and creating a patient documentation system for the university clinic.

In the mid-1990s, he worked with Konrad Becker to found Vienna's Institute for New Culture Technologies and Public Netbase - at that time Austria's only free public-access internet server - thus establishing an international competency platform for the critical use of information and communication technologies.

He also served as technical director and partner at Uptime, where he was responsible for information management, software development and UNIX / Linux hosting.

Moving Targets: Current & Future Best Practices in Searching, Reporting and Analyzing – Part 1(Chairperson Remarks)

John Arenivar
The 3M Company

Biography

John Arenivar started at 3M in 1997, after 10 years as a bench and scale-up chemist at Shepherd Chemical Co. in Cincinnati, and 1 1/2 years as a Knowledge Analyst at Teltech (now ORC Guideline) in Bloomington MN. John has a bachelor's degree in Chemistry from MIT and a Ph.D. in Inorganic Chemistry from the University of California, Berkeley, and has held postdoctoral appointments at the University of Alberta and the University of Cincinnati.

John's work at 3M has focused on delivering actionable studies of the patent and technical literature to 3M investigators around the world in numerous 3M division labs.

Moving Beyond Patents - the Developing Role of the IP Information Specialist as an Integral Part of Business Success

Abstract

The development of strong IP rights to protect products and processes, and a clear understanding of the competitive environment, are central to the commercial success of business today.

The IP information professional plays a key role in the innovation process and in creating this commercial success. These individuals address the decision support needs for setting an organization's strategic development direction. In this environment, there are challenges, and opportunities, for IP information specialists. Hear how real-world IP professionals are transforming their roles and identify reasons to be optimistic, whether you want to raise your profile in your organization or if you're looking for a new position in this moving target environment.

Cindy Poulos
Thomson Reuters

Biography

 

SIMPLE: A Platform for Deriving Business Value from Patent Information

Abstract

Intellectual Properties (IP), such as patents and trademarks, are one of the most critical assets in today's enterprises and research organizations. They represent the core innovation and differentiators of an organization. When leveraged effectively, they not only protect a business from its competition, but also generate significant opportunities in licensing, execution, long term research and innovation. In certain industries, such as Pharmaceuticals, patents lead to multi-billion dollar revenue each year. In this paper, we present a holistic information mining solution, called SIMPLE (Strategic Information Mining Platform for IP Excellence) which mines large corpus of patents and scientific literature for insights. Unlike much prior work that deal with specific aspects of analytics, SIMPLE is an integrated and end-to-end IP analytics solution which addresses a wide range of challenges in patent analytics such as the data complexity, scale, and nomenclature issues. It encompasses techniques and tools for patent data processing and modeling, analytics algorithms, and front-end web based interface and web services for analytics service delivery and end-user interaction. We use real-world case studies to demonstrate the effectiveness of SIMPLE.

W. Scott Spangler
IBM

Biography

Scott Spangler is a Senior Technical Staff Member and Master Inventor at the IBM Almaden Research Center. He has been doing knowledge base and data mining research for the past 20 years. Since coming to IBM in 1996, Scott has developed software components for data visualization and text mining, which are available through eClassifier, Business Insights Workbench, and COBRA service offerings. Scott holds a Bachelors in Math from MIT and a Master in Computer Science from the University of Texas. Scott holds 18 patents and numerous publications. Scott had recently co-authored a book entitled, Mining the Talk: Unlocking the Business Value in Unstructured Information. Scott presented related work recently at ICDM-2009 and KDD-2009 data mining conferences.

Objectively Assessing Patent Quality Using Sophisticated Statistical Models and Predictive Analytics Tools

Abstract

One of the foundational tenets of modern management theory is that you cannot effectively manage that which you cannot measure. Performance benchmarking (organizing and driving managed resources against goal-specific objectives) is a particularly effective tool for exerting management control over desired Performance objectives. However, identifying and maintaining accurate performance metrics appropriate to goal-specific objectives can present its own challenges.

The frequently encountered conundrum is that not all things that should be measured can be measured and, conversely, not all things that can be measured should be measured. In the context of patent portfolio management, this conundrum typically presents itself in the fact that patents are often and easily counted, but they can only be valued or appraised rarely and with great difficulty and expense.

The difficulty of measuring desired aspects of patent Performance leads to the natural inclination to focus attention on what is more easily and readily measured. Typically, this involves counting the number of patents in a portfolio or applicable portfolio segment. But focusing too much attention on patent counts and similar raw metrics (such as claim counts, citation counts and the like) can result in a myopic management process that tends to proliferate and maintain large quantities of patents (or claims, or citations), but without effective controls in place to manage the overall quality or effectiveness of those patents within each desired target market.

Fortunately, the advent of powerful computers and the widespread availability of vast quantities of relevant patent information have led to the recent development of several sophisticated statistical models and predictive analytics tools for objectively benchmarking and assessing patent performance. Our discussion at the conference will describe one such approach for comparatively rating and benchmarking patent performance using statistical modeling based on an analysis of reported abandonment rates of patents sharing statistically similar attributes.

Jonathan Barney
Ocean Tomo

Biography

Jonathan is the founder and CEO of PatentRatings LLC and a Managing Director of Ocean Tomo. As an inventor, lawyer and an entrepreneur with over 20 years experience working with patents and technology, Jonathan provides thought leadership in the areas of quantitative patent analysis, patent capital investment strategies and other strategic initiatives broadly aimed at creating and enhancing market liquidity in patents and related intellectual capital assets.

Jonathan is a frequent lecturer on these and other related topics, including, most recently, at the University of Notre Dame Mendoza College of Business and before various professional organizations, such as the Licensing Executives Society USA and Canada (LES), Licensing Executives Society International (LESI), the Life Science Industry Council (LINC), Whittier Law School , Wisconsin Bar Association (WBA), Orange County Bar Association (OCBA), Orange County Patent Law Association (OCPLA) and The Orange County Investment Forum (OCIF).

Prior to starting PatentRatings and joining Ocean Tomo, Jonathan was a partner in the Newport Beach, California offices of Knobbe, Martens, Olson & Bear, LLP, where he specialized in patent prosecution, patent licensing and strategic patent asset management. Jonathan is a registered patent lawyer and a graduate of Virginia Tech University (B.S.M.E. 1987, cum laude) and The University of Michigan Law School (J.D. 1993, cum laude).

Patent Information in the Age of Outsourcing (Chairperson Remarks)

Bruce Mason
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.

Outsourcing - Meeting Challenges and Generating Opportunities

Abstract

Economic challenges spur change. Cost analyses typically force decisions to maintain business activities within the corporation (in-house) or placing these roles outside the company (outsourcing, off-shoring, or advisory services). As many patent searchers or analysts work within the Library, IM (Information Management) or IT (Information Technology) corporate divisions, this talk is aimed to address positive results pertinent to the development of services, applications, or combination of these, which may result in cost savings, gaining expertise and knowledge, accessing talent, and opportunity for existing in-house staff to focus on core issues.

Biographies

Barbara Sue Faries*
SciMed Partners

Barbara Sue Faries, MBA, "Susie" is CEO of SciMed Partners, located in the San Francisco Bay Area/Silicon Valley area. SciMed serves established companies, investors, and entrepreneurs in multiple areas including market, technology and IP analyses. The firm focuses on medical devices, biotechnology, pharma, and emerging/disruptive technologies. She is the former Vice President of Marketing for American Medical Response, the largest provider of technologies and emergency services in the US.

James L. Grant
SciMed Partners

James L. Grant holds a Ph.D. in Chemistry and is a registered Patent Agent at the USPTO. James has worked previously as an IP Manager at Pfizer and as an Associate Director of Patent Analysis at Bristol Myers Squibb. James also worked as a Pharmaceutical Consultant at Thomson DIALOG. He is currently a Senior Consulting Partner, Biotechnology and Pharma with SciMed Partners, Inc., Silicon Valley.

Outsourcing Opportunities in the Patent Analytics: A Case Study on India

Abstract

India has emerged as a key international player in the IT services industry since the late eighties. Inspired by this successful a business model, pharmaceutical & biotech companies began outsourcing their R & D work to India, starting from the mid-nineties. The reasons for this global acclaim were the lower production costs yet the availability of young talented labor pool in abundance. Recently, India has emerged as a preferred global destination for patent analytics and information research services. The driving force of this outsourcing is the exponential growth of primary literature- patents and journal articles, during the last two decades. Scientists, engineers, lawyers and patent professionals need condensed information-the granulated, ready to refer literature and not the entire chunk. Overlooked information in the literature takes its toll in terms of time, money and effort. The knowledge processing companies, in their initial years witnessed their own trepidation on quality and delivery. These issues seem trivial in the current scenario due to the enhanced information exchange and the increasing numbers of trained professionals. These professionals are specifically trained to meet the project requirements and the client expectations. The paradox of marketing patent analytics service is promising a quality of service that can only be judged once consumed. This challenge makes the marketing of these services both different and more difficult than marketing of products. The opportunities, challenges and potential risks that this industry experiences would be focused in the talk. It would also encompass the various outsourcing models and their location selection criteria.

Srinivasan Parthiban
Patent Eagle

Biography

Parthiban is the founder of two knowledge processing companies, Patent Eagle and Reverse Informatics. Patent eagle focuses on patent analytics in life sciences and other high-tech sectors. Reverse Informatics offers informatics solutions to pharmaceutical research.

Parthi earned his PhD from the Indian Institute of Science, specializing in Computational Chemistry. He holds dual Masters Degree- one in Science and the other in Engineering. He has 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 headed Knowledge Engineering Business Units.

The 5 Things You Must Know Before Outsourcing to India

Abstract

You've heard about all of the usual outsourcing, quality and USPTO issues . Now what are the underlying legal, regulatory, business, and just-plain-common-sense issues? What are the real costs and the real cost savings? What does a cut-rate search really cost you? Do proper documentation, trust in the search results, experience level and understanding of U.S . and European business drivers have any effect on value? What are the short and long term risks and liabilities? Do the effect of very high annual turnover rates, rapidly escalating salaries, and little value given to confidentiality, have any effect on dissemination of proprietary information? Based on our years of IP experience as clients and partners of Indian IP firms, as well as teachers and consultants to Indian IP departments of major corporations, this presentation highlights examples and solutions of common mismatches between Western corporate expectations and the reality of outsourcing services.

Biographies

Charles Brumlik, J.D., Ph.D.
Nanobiz LLC

Dr. Charles Brumlik is a business attorney who advises international companies, investment groups and IP departments in leveraging the commercial overlap of IP, international law, business and technology. As an attorney with ExxonMobil, Honeywell and the Princeton IP law firm Mathews, Collins, Shepherd & McKay, he solved both patent and transactional issues. Commencing with international technology consulting and his chemistry Ph.D. at Texas A&M, Dr. Brumlik has over 20 years of experience working with advanced materials and nanotechnology. As a postdoc at Colorado State University, he published widely on creating and testing materials, devices and systems in the nano and meso scale. He also collaborated with the National Institute of Standards and Technology (NIST) and international academic, government, and corporate research groups.

David M. Gange, Ph.D.
Nanobiz LLC

For over twenty years David 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, and a member of American Chemical Society, Association of Independent Information Professionals, Patent Information Users Group, Chemical Consultants Network and National Association of Patent Practitioners.

Eye on Asia

Abstract

To do their jobs effectively, patent searchers and examiners need comprehensive access to prior art from patents and non-patent literature resources. Over the past several years, publication activities in Asian countries have grown dramatically, contributing more and more patents and scientific literature to the worldwide prior art. This talk will show how the major patent databases on STN are keeping up-to-date with the enormous published scientific output from Asia. It will also examine the Asian journal collections of some of the key bibliographic databases on STN.

Brian Sweet
STN

Biography

Brian Sweet has been a senior product manager at CAS for eight years, focusing on STN®'s patent and biomedical content and on services like STN® AnaVist™ and STN® Viewer™. With more than 30 years of experience in the information industry, Brian began his career at BIOSIS, then moved on to Elsevier, where he managed the product development and marketing of EMBASE and other databases. He also worked at Ovid before joining CAS in 2002. Brian is a former president of NFAIS and has been active in SLA. He is delighted to be attending his seventh PIUG Annual Meeting this year.

Roundtable Discussion on Moving Targets

Discussion Topics

There will be several concurrent round table discussions. Each session will last 40 minutes and each attendee will be able to participate in both discussion sessions.

Opening Remarks: 1:30pm - 1:40pm

Session one: 1:40pm - 2:20pm

Session two: 2:20pm - 3:00pm

The purpose is to provide time for our members to have a free and open discussion on issues of importance to them. No formal presentations will be permitted and no sign up in advance is necessary. There will be a facilitator at each table to ensure that no one monopolizes the conversations nor strays too far from the topic. Vendors are strongly encouraged to participate but are not to regard this as a "sales" opportunity. Our expectation is that this unconstrained exchange of ideas will provide a learning experience for everyone, vendors and customers. We are particularly interested in feedback from attendees on value of these discussions.

  1. Biotech tools and techniques
  2. Chemistry tools and techniques
  3. Engineering tools and techniques
  4. Freedom to operate searching
  5. What functionalities/capabilities must a good patent analysis/searching tool have?
  6. Applying web 2.0/3.0/social media to patent info
  7. Classification code vs. text-based search strategies
  8. Outsourcing
  9. Training and education
  10. Managing your management

Notice: Patent Information Users Group Incorporated (PIUG) is a non-profit organization whose primary purpose is to improve the business conditions for, maintain and improve the qualifications of, and promote a common business interest for patent information professionals. PIUG maintains a strong policy of strict compliance with federal and state antitrust laws. Antitrust laws prohibit unlawful combinations or agreements with competitors that are likely to injure competition. PIUG seeks to avoid even the appearance of impropriety as it relates to antitrust laws. In all PIUG activities, all members, including officers and directors, shall adhere to federal and state antitrust laws.

Roundtable Discussion on Moving Targets (Chairperson Remarks)

Lucy Akers
Bristol Myers Squibb

Biography

Lucy Teixeira Akers is a U.S. Patent Agent with over 25 years of experience in the information field. She has formerly held patent information positions at Shell and ExxonMobil, and is currently a senior patent analyst with Bristol-Myers Squibb. From 2000-2004, Ms. Akers was Chair of the Patent Information Users Group, whose membership grew over 20% during her term. Her leadership and work with the PIUG and connections with other professional organizations, such as with the Patent and Trademark Group in the UK, and with WON in the Netherlands, makes her a recognized international figure in the patent information world, particularly for her active role in patent information development, training and education. She is currently the Chair of the Selection Board for the International Patent Information Award.

Moving Targets: Current & Future Best Practices in Searching, Reporting and Analyzing – Part 2 (Chairperson Remarks)

Zhifu Shu
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.

Finding the Synergy Need to Create a Strategic Patent Portfolio

Abstract

Patenting technology at SAS is a key factor in growing business revenue. Companywide, the goal is to build a strategic patent portfolio that corresponds to all key product lines in an efficient and timely manner. Our homegrown patent tracking system integrates seamlessly several internal and external patent processes such as our New Idea Capture/Approval Process, Patent Application Preparation/Filing Process, Office Action Process, Appeals Process and Issued Patent Process. In building the patent tracking system, identifying all process drivers (inputs and outputs) was essential in creating a synchronized workflow of all internal and external patent processes. Our patent tracking system provides workflow process integration that incorporates workflow process rules, workflow tasks and reporting/measurement data that facilitates the shepherding of new ideas to filed patent applications and ultimately to issued patent applications.

Fonda J. Daniels, Ph.D.
SAS

Biography

Fonda Daniels is currently employed as a patent engineer at SAS, Institute in Cary, NC. In her role as a patent engineer she supports corporate council in filing patent applications throughout the company, its regional offices and subsidiaries.

Fonda Daniels received her Ph.D. in Computer Engineering from North Carolina State University in 1998. In addition to receiving her Ph.D. at North Carolina State she also received a Master of Science degree in Computer Engineering and a Bachelor of Science degree in Computer Science. While in graduate school, she participated in the NASA graduate student research fellowship program at the Jet Propulsion Laboratory in Pasadena, California. Her research interests include analysis and design of software systems, system architecture and performance and testing of software systems.

Upon completion of graduate school, Fonda Daniels worked at Bell Labs in Murray Hill, New Jersey in the Distributed Software Systems research area. At Bell Labs she worked on implementing object-oriented design and testing methodologies for optical networks.

Fonda Daniels returned to NC to work as an enterprise architect at IBM in the Tivoli Software Systems Group where she received the IBM Master Inventor award. Currently she holds seven US patents and has several patent applications pending. Fonda Daniels has authored several publications in the object-oriented design and testing area and has served as a reviewer for a book on design patterns. Presently she is a senior member of IEEE, a member of ACM, and Delta Sigma Theta Sorority Incorporated.

Mechanical Patent Searching: A Moving Target

Abstract

What is acceptable and what is not acceptable for a mechanical patent search is a rapidly moving target. Ten years ago, manually flipping through the paper files in the right subclass at the USPTO sufficed. Ten years from now, a computer will do most of it for us with the click of a button. Today, we have myriad options, various budgets, and differing deadlines. This presentation summarizes the best practices that two independent patent searchers have developed over a twelve year period of performing, requesting, and reviewing mechanical searches. The pros and cons of what must be done, what should be done, and what could be done will be outlined and examined with multiple samples provided.

Biographies

Dominic Demarco*
Demarco IP

Dominic DeMarco is the managing director of DeMarco IP, a patent search firm focused on serving the needs of patent attorneys in both prosecution and litigation. DeMarco IP performs searches across a full range of chemical, electrical and mechanical technologies. 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 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 patent researchers living in the Washington DC area.

Andrea Davis
NuVasive, Inc.

Andrea Davis is the Litigation Research Analyst at Nuvasive, a medical device company developing products for the surgical treatment of spine disorders. Andrea has received a M.Sc. in Engineering Physics from Lund Institute of Technology in Sweden and since then has gained over a decade of experience performing searches across a gamut of technologies with medical and mechanical being her specialties. She has experience working in a multitude of databases and reviewing searches performed by various providers. She is a registered patent agent.

Patent Information Services in China

Abstract

China is experiencing fast economic development; meanwhile its patent filings also increase in a soaring speed. There is an increasing need for Chinese patent information both at home and abroad. How to make effective utilization of Chinese patent information and what is current situation on patent information services? You may find answers here. At first part of presentation, patent filing in China and its developing trend will be introduced; The second part will deal with the patent information service network constructed by SIPO to fulfill its obligation - to make patent information more easily accessible to the public; And the third part mainly focuses on one component of SIPO service network, the services and products provided by IPPH.

Yongsheng Wang
IPPH

Biography

Mr. Yongsheng Wang got his M.A. from Beijing Institute of Technology. He joined the Research and Development Center of Intellectual Property Publishing House (IPPH) in the early 2006, and undertook the research and development work of C-E and E-C machine translation for the Chinese patent documents, and then he was engaged in the development of other products of IPPH. Later Mr. Wang serves as the business manager of Patent Information Service Department of IPPH, mainly responsible for the marketing strategy in America. He is well experienced in the comparison and research for both domestic and foreign patent data, collecting of market information as well as development of marketing plan. Mr. Wang has also been involved in planning and organizing several international seminars and workshops on patent information held by State Intellectual Property Office of China and IPPH.

Patents as a Moving Target

Abstract

Much has been said about the need for better search tools and strategies to keep up with the ever evolving patent. However, such products are actually reactive to the ever-changing body of patents which in turn are trying to keep up with evolving technology. From changes in patent law to the new interest countries have been paying to intellectual property to the constantly moving target of new technology, searching for patents has never been more challenging. Trends and anomalies in how patents have changed over time will be highlighted, especially as they affect how the art of searching intellectual property. This presentation will discuss these changes with an eye for resolution and how these changes affect patent professionals.

Ron Kaminecki
Dialog

Biography

Ron rejoined Dialog in 1999 after almost three years at a major pharmaceutical company. Prior to this, Ron held various jobs at Dialog for over nineteen years, including Regional Manager and Senior Staff Advisor. He got his start in searching technical information via manual, online and batch systems at the IIT Research Institute as an Associate Information Specialist.

His current responsibilities at Dialog LLC 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 ha a BS in Chemistry; an MS in Computer Science and Information Systems; and a JD with a Certificate in Patent Law.

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 also an inventor with an American and PCT, EP and US published patent applications.

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.

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

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

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