PIUG 2013 Annual Conference
|Monday, April 29
|7:30am - 8:30am||Breakfast
Sponsored by Minesoft
|8:30am - 8:45am||Welcome
Susanne Hantos, PIUG Chair, Davies Collison Cave
|8:45am - 8:55am||Brian Stockdale Award Presentation
Edlyn Simmons, Simmons Patent Information Service, LLC
|8:55am - 9:00am||Introduction
Susanne Hantos, PIUG Chair, Davies Collison Cave
|9:00am - 10:00am||Keynote Presentation: "The USPTO: Transformation and Engagement"
Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the USPTO
|10:00am - 10:10am||Product Updates|
|10:10am - 10:40am||Break - Exhibition Hall
Sponsored by GenomeQuest
|10:40am - 12:30pm||Session A: Case Studies in Patent Informatics – Opening Remarks
Chairperson – Martha Yates, Monsanto
|10:40am - 11:15am||Case Study: Using Multiple Online and Single Country Legal Status Databases to Resolve Licensing Fee Issues
Carol E. Bachmann, 3M
|11:15am - 11:50am||Patent Informatics in a Filter Bubble Age
Kristine Atkinson, A-A Patent Investigations
|11:50am - 12:20pm||Into the Future Together: The Challenges for Providers and Users of Patent Information in Today's Fast-moving World and How to Meet Them.
Cynthia Murphy, Thomson Reuters
|12:20pm - 12:30pm||Product Updates|
|Monday, April 29
|12:30pm - 1:30pm||Lunch
Sponsored by Thomson Reuters
|1:30pm - 1:45 pm||Presentation of Service Awards|
|1:45pm - 3:10pm||Session B: The Future of Communications in Patents - Opening Remarks
Chairperson – Jim Brown, FIZ Karlsruhe
|1:45pm - 2:20pm||Overcoming the language barrier - The EPO's Patent Translate service
Richard Flammer, EPO
|2:20pm - 2:55pm||Understanding Machine Translation and the Challenge of Patents
John Tinsley, IP Translator
|2:55pm - 3:10pm||Product Updates|
|3:10pm - 3:40pm||Break - Exhibition Hall
Sponsored by LexisNexis®
|3:40pm - 5:00pm||Session C: Case Studies in Patent Analysis - Opening Remarks
Chairperson – Richard Williams, Zoetis
|3:40pm - 4:15pm||Debabelizing the Portfolio: Embedding Patent Analysis in Your Patent Portfolio Processes
Mark Stignani, Schwegman, Lundberg & Woessner, P.A.
|4:15pm - 4:50pm||Updating our Patent Search and Analysis Tools: a Multi-year, Cross-divisional Endeavor at Corning Incorporated
David Weber, Corning Incorporated
|4:50pm - 5:00pm||Product Updates|
|Tuesday, April 30
|7:15am - 8:00am||Breakfast
Sponsored by STN
|8:00am - 8:10am||Introduction
|8:10am - 9:45am||Session D: Chemical Patent Information - Opening Remarks
Chairperson – A.J. D'Ambra, Novartis Pharmaceutical Corporation
|8:10am - 8:20am||Product Updates|
|8:20am - 8:55am||Historical Impact of Major Patent Authorities on Chemical Information in CAS REGISTRY and CAplus - A 20-Year Examination
Matt McBride, Science IP
|8:55am - 9:30am||Understanding And Locating Extended Patent Terms For Pharmaceuticals
Natalie Pilote, Novartis
|9:30am - 9:45am||Product Updates|
|9:45am - 10:15am||Break - Exhibition Hall
Sponsored by INTELLIXIR
|10:15am - 12:15pm||Session E: Case Studies in Chemical/Biological Patents - Opening Remarks
Chairperson – Lucy Akers, Bristol-Myers Squibb
|10:15am - 10:50am||Global Pharmaceutical Innovation: Using Patents to Track the Past and Predict the Future
Yali Friedman, ThinkBiotech
|10:50am - 11:25am||Leveraging Text Analytics Tool in Patent Analysis to Empower Business Decisions – A Patent Landscape Project Using I2E for Kinase Assay Technology Platform Analysis
Yun Yun Yang, Bristol-Myers Squibb
|11:25am - 12:00pm||Duck Season. Rabbit Season. Chemistry Search. Biology Search.
Kim Miller, Novartis
|12:00pm - 12:15pm||Product Updates|
|Tuesday, April 30
|12:15pm - 1:30pm||Lunch
Sponsored by PIUG
|1:30pm - 2:50pm||Session F: Specialized Patent Information - Opening Remarks
Chairperson – Kristin Whitman, Landon IP
|1:30pm - 2:05pm||Applications of Data Cleaning in Patent Analytics
Matthew Luby, Landon IP
|2:05pm - 2:40pm||What to Look for When Using US Public PAIR
Anthony Trippe, Patinformatics LLC
|2:40pm - 3:15pm||There's a New U.S. Patent and Trademark Data Host in Town!
Dave Abbott, Reed Technology and Information Services Inc.
|3:15pm - 5:30pm||Extended break and Exhibit Room open for Product Reviews/Showcase
Sponsored by VantagePoint
|3:00pm - 5:30pm||
Guided tour of the USPTO Llmited seats; $20 transportation fee; (Sold out)
|Wednesday, May 1
|7:15am - 8:00am||Breakfast
Sponsored by Questel
|8:00am - 8:10am||Introduction
|8:10am - 10:00am||Session G: The Cooperative Patent Classification - A View from the Primary Authorities - Opening Remarks
Chairperson – Kartar Arora, Landon IP
|8:10am - 8:45am||Improving the Use of Patent Information – KIPO's IP Information Services
Hee-tae Kim, Korean Intellectual Property Office (KIPO)
|8:45am - 10:00am||The CPC Browser in Espacenet and USPTO's Experience
Nigel Clarke and Pierre Held, European Patent Office, and Christopher Kim, USPTO
|10:00am - 10:30am||Break - Exhibition Hall
Sponsored by Article One Partners
|10:30am - 11:30pm||Session H: Applied Technology - Opening Remarks
Chairperson – Zhifu Shu, Exxonmobil Research and Engineering
|10:30am - 10:45am||Summarizing Sequence Results by Patent Family
|10:45am - 11:00am||PatBase: Adding Value And Preserving Quality In A Global Patent Database
|11:00am - 11:15am||Applying Landscaping Tools to Determine Competitive Opportunities
Miguel Iglesias and Joe Terlizzi, Questel
|11:15am - 11:30am||The New STN Platform: Revolutionizing Patent Searching for Professionals
TJ Bowen, STN
|Wednesday, May 1
|11:30am - 12:30pm||Lunch
Sponsored by PIUG
|12:30pm - 2:20pm||Session J: The Dynamics of Patent Searching - Opening Remarks
Chairperson – Kimberly Miller, Novartis Institutes for Biomedical Research
|12:30pm - 1:45pm||WIPO's Patent Landscape Project and Patentscope
Lutz Mailänder, WIPO and Iustin Diaconescu, WIPO
|1:45pm - 2:20pm||Patent Searching: A Game of Imperfect Information
Dominic DeMarco, DeMarco IP
|2:20pm - 2:50pm||Break - Exhibition Hall
Sponsored by WIPS
|2:50pm - 4:35pm||Session K: Legal Overview of Intellectual Property - Opening Remarks
Chairperson – Edlyn Simmons, Simmons Patent Information Service L.L.C.
|2:50pm - 3:25pm||Update on US Patent Law and Practice – Focus on Board Proceedings
Richard Neifeld, Neifeld IP Law, PC
|3:25pm - 4:00pm||US Patent Office Information Technology Developments
Marla Grossman, Coalition for Patent and Trademark Information Dissemination
|4:00pm - 4:35pm||Advances in Non-Patent Literature Searching: 25 Years of Information Distilled to 140 Characters
|4:35pm - 4:45pm||Closing Remarks
Susanne Hantos, PIUG Chair, Davies Collison Cave
As the United States Patent and Trademark Office (USPTO) implements the America Invents Act (AIA) and establishes satellite offices nationwide, the agency remains actively engaged with its user community. This presentation will discuss what the AIA means for inventors and practitioners, while providing an overview of ongoing USPTO operations and initiatives. Topics will include recently implemented provisions, latest application and examination numbers, and special projects.
Teresa Stanek Rea
As Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, Teresa Stanek Rea provides leadership and oversight to one of the largest intellectual property offices in the world. She has served as Deputy Under Secretary and Deputy Director since March 2011, and she became Acting Under Secretary and Acting Director in February 2013. She currently performs the duties of both positions. A recognized expert in intellectual property law with more than 25 years of experience, Ms. Rea serves as a principal advisor to the Secretary of Commerce on both domestic and international intellectual property matters. Ms. Rea provides leadership and oversight of the day-to-day management of the policy, budget, and operations of an agency with over 11,000 employees. She also promotes innovation domestically and drives international harmonization efforts, in support of the administration's top economic priorities to increase economic growth.
Ms. Rea is a past president of the American Intellectual Property Law Association (known as AIPLA), a past president of the National Inventors Hall of Fame, and has served in leadership roles for a variety of technical and legal associations. Ms. Rea has spoken and published frequently on patent topics including biotechnology, nanotechnology, licensing, technology transfer, patent practice, and export control. Before joining the USPTO, Ms. Rea was a partner in Crowell and Moring LLP's Washington, D.C., office where she focused on intellectual property and dispute resolution related to pharmaceutical, biotechnology, and other life science issues. Ms. Rea worked for Ethyl Corporation from 1980 through 1984 and for patent boutique firm Burns, Doane, Swecker and Mathis in Alexandria, Va.
A native of Michigan, Ms. Rea earned a Juris Doctor degree from Wayne State University and a Bachelor of Science degree in pharmacy from the University of Michigan. She also maintains an active pharmacy license.
In the past, a legal status search meant searching Inpadoc on an online host such as Dialog or STN. Although Inpadoc covered publications for a large number of countries, it didn't show all of a country's publications, only a portion of these had any legal status information and, of those that did, it often did not list the current status of a granted patent. As information professionals we could only send the information to the client, explain what was there, give the caveats of what was missing, and direct them to contact the specific patent offices for the definitive answer.
Since the proliferation of internet hosted patent information, many of those online providers have enhanced the Inpadoc/DOCDB legal status database with their own data. At the same time, patent offices around the world are allowing increased public access to their legal status information. The results of these changes is that we're able to provide a more complete assessment of the status of patent family members allowing us to answer more complicated questions.
Recently I used various legal status databases to address the question of licensing fees paid to a patent licensor. Accurate and up-to-date information was needed to determine patents in force. The patent family in question contained over 100 members, which included several EP simple patent families. I used Inpadoc, EP Register, Orbit and many single country legal status databases to determine which family members were still in force in order to calculate licensing fees.
The resulting map of patents in force allowed my client to re-negotiate substantially more advantageous licensing fees.
Carol Bachmann is an Advanced Patent Information Specialist with 3M's Information Research & Solutions department in St. Paul, MN. In this position she is responsible for providing in-depth intellectual property information searches and patent current awareness to 3M's researchers and IP attorneys. Carol is a member of PIUG, the IPO Patent Search committee and the editorial advisory board for the Elsevier journal "World Patent Information". She is published in the Journal of Chemistry and Computational Science and World Patent Information. Carol received a B.S. in Chemical Engineering from Iowa State University. She joined 3M in 1985 as a product development researcher working on film extrusion and nonwoven thermal insulations. As a result of this work she is an inventor on four patents. She has worked in patent information since 1995, receiving a patent on her work on patent databases.
We think when we search a database with modern tools that we have unprecedented power to find information for our arcane uses. Some of that power may come at a price, and we may be making assumptions of data integrity and completeness that lack foundation. We will explore negative filtration and positive expansion of content in a data corpus via such procedures as indexing, local shared objects (flash cookies) and machine translation. Tracing an invention from the idea through the legal patent to the search results list, the impact of information coding and intuitive data management on our findings comes alive as we struggle with page rank, privacy, parasitic code, program obsolescence and regulatory parameters. We'll consider surprises from unfiltered retrieval and directed information management, and consequences of ever-changing IT technology on patent searching.
A-A Patent Investigations
An early adopter and beta tester of many hardware and software innovations in electronic data retrieval, Kristine Atkinson's doctoral thesis in genetics was a treatise on genetic speciation driven by continental drift and host/parasite coevolution. She also holds an M.S. degree in cell biology, a bachelor's in foreign languages, and has enjoyed postings as a protein chemistry laboratory director, electron microscopist, biomanufacturing trainer, business analyst, medical editor, medical device and vaccine inventor, and discovery paralegal. She is a registered U.S. patent agent specializing in patentability, freedom-to-operate and medical device technology landscape searches. She cochaired the Training Working Group of the PIUG Education task force from 2008 to 2012, and was a trainer for the WIPO patent search session held in Zambia in July 2012.
As PIUG celebrates its 25th Anniversary, so this year sees also the 50th Anniversary of DWPI. The patent landscape has changed immeasurably in that time. From dusty pieces of paper locked away in library vaults, today patents and associated IP rights represent multi -billion dollar business opportunities and risks.
Supporting the decisions and assessments behind those business opportunities and risks requires the best tools and intelligence possible. In today's environment, what are the challenges of scaling the ever-increasing global information mountain? How do we as information providers continue to create solutions into the future to help patent information users achieve the summit and exploit the uninterrupted view?
This presentation will review the process of driving innovation and creating maximum value from ideas across the IP lifecycle. We will discuss the requirements of the IP researcher for aggregated, normalised, standardised and corrected information. You will learn about how value-add information providers create intellectually enhanced information and tools that help you successfully harness the innovation of your organization and realize its full value now and into the future.
Cynthia Murphy is Senior Vice President and General Manager for Thomson Reuters IP Solutions. She is responsible for overall management of the Innovation & Asset Management business, including commercial strategy and operations. Cynthia is a more than 20 year veteran of Thomson Reuters in a variety of roles of increasing responsibility. Prior to joining IP Solutions, she was Senior Vice President, Strategic Marketing for Dialog, responsible for world-wide planning and implementation of product development, marketing, communications and customer service programs. Previously, Cynthia served as Commercial Director at Sweet & Maxwell, where she was accountable for all aspects of the launch and the subsequent commercial success of Westlaw UK; and she held several positions at West in the sales organization. Cynthia started her professional career as a law librarian in Boston. She is a graduate of the University of Maine and holds a Master's degree in library and information sciences from Simmons College.
Reducing the cost of protecting inventions and removing the language barrier that has impeded access to information on the state-of-the-art are the main goals of the EPO's machine translation programme, developed in partnership with Google. For patent information from Asian countries, and also in multilingual Europe, the language barrier used to cause many difficulties for patent searchers.
Patent Translate now makes it easy for English speakers worldwide to access full-text documentation from many EPO member states as well as the large and rapidly increasing volume of Chinese-language patent documents. More languages and features are about to be added and will change the way we look at patent information from some rapidly developing regions of the world.
European Patent Office
Dr. Richard Flammer
1992: Law degree from Vienna University
1994: Austrian Patent Office, Member of legal department, Member of appeal and nullity department
2000: Austrian Patent Office, Deputy head of international trademark department
2003: Austrian Patent Office, Head of department for international relations
2004: Austrian Patent Office, Vice president
2008: European Patent Office, Principal Director Patent Information
2010: European Patent Office, Principal Director Patent Information and European Co-operation
2011: European Patent Office, Principal Director Patent Information and European Patent Academy
The need for on-demand machine translation of patent documentation is ever increasing yet many users feel that the existing technology does not adequately meet their requirements. While machine translation quality is not perfect, it is a maturing technology that has some very real practical applications within the patent community. In order to better understand the capabilities (and limitations) of machine translation, it would be useful to know exactly how this technology works. In this talk we will provide such an insight into the technology behind machine translation. We will present some of the basic concepts of translation automation and describe how it has evolved over time. We will also discuss the current state-of-the-art in machine translation, what some of the more recent advances have been, and what the R&D roadmap for the future looks like. Following on from this exposition, we will use this background information to discuss the unique challenge of patent translation and the difficulties it presents to machine translation system developers. Finally, we will talk briefly on the evaluation of machine translation systems and the need for task-based extrinsic evaluations to ensure that they are actually fit for purpose. It is intended that this talk will provide patent information specialists with a better understanding of how the technology works and, consequently, provide some explanation of the results they see. This will help to explain phenomena such as why translation quality varies between languages, text types/domains, and competing systems, as well as how they can make the most of the machine translation as it exists for their particular needs.
John Tinsley (Ph.D., Computing) founded IPTranslator as a high-tech spin-out from Dublin City University in Ireland where he previously lead a European Union-supported project, PLuTO, which focused on developing state-of-the-art solutions for patent translation. Prior to this, Dr. Tinsley worked as a Commercial Development Engineer and a postdoctoral researcher at the Centre for Next Generation Localisation. He received his Ph.D. in Computing (Machine Translation) from DCU in 2009.
One of the hardest tasks in understanding patents is finding a common language for non-patent professionals to understand patents across portfolios and the inherent value contained in their claims. Once this language is found, then business, finance and technical disciplines can discuss a patent or portfolio in its lifecycle on an even footing with the patent professionals. This presentation will cover some of the emerging tools and best practice available to the patent research and analysis community to level the patent playing field for your company in the areas of:
Schwegman, Lundberg & Woessner, P.A.
Mark Stignani is a registered patent attorney and serves as Of Counsel at Schwegman, Lundberg & Woessner, P.A. Mark has patent experience in various technology areas, including software, information systems, mobile devices, computer hardware and design, telecommunications, and mechanical. His practice includes prosecution, reexamination, patent and portfolio analysis, freedom to operate, patent strategy and planning and strategic counseling. Prior to joining SLW, Mark served as an Assistant General Counsel for Thomson Reuters for over ten years. While at Thomson Reuters, Mark's responsibilities included the harvesting and protection of intellectual property associated with software and high value content as well as providing primary intellectual property legal support for business development, contracts, editorial, technology area in the legal, healthcare, and financial services information market groups. As an integrated team member, Mark also served on various executive committees that drove investment in acquisitions, emerging business development and new product development across a multiple set of marketplaces. Mark received his Juris Doctorate from William Mitchell College of Law while working for Alliant Techsystems. He had previously done post graduate work in robotics and control systems at the University of Minnesota and National Technological University while working at Honeywell, Inc.
Corning Incorporated invests heavily in research and development to create intellectual property that sustains the company's global leadership position in specialty glass, glass- ceramics, and materials. Recently, Corning has updated patent search and analysis tools to better enable IP creation and protection. Here we present the process used in a company-wide initiative to identify, evaluate, select, and recommend new patent search and analysis tools.
David Weber has been an Information Specialist at Corning Incorporated since 2010. He supports projects, businesses, and attorneys by providing patent and literature search and analysis expertise. Previously, David was a Senior Development Scientist within the Life Sciences Division of Corning Incorporated from 2006 to 2010. He is an inventor on 3 US granted patents and 4 pending US applications.
Chemical information professionals rely on a variety of commercial databases containing disclosed substances for IP-related searching, The CAS REGISTRY system plays a key role in comprehensive retrieval of both patent and non-patent chemical literature through the CAplus database, as well as other disclosures in reactions and chemical catalogs. Recent reports on the growth of patents from emerging markets, particularly China, have resulted in a strong interest in timeliness and indexing of foreign language patents. However the impact of major patenting authorities on substance disclosures and registrations has not been widely reported.
This review focuses on providing a unique historical perspective on the CAS Registry System and CAplus, providing insight into the substance disclosures by authority, the technology areas of chemical patent research, and trends facing the future of chemical information retrieval.
Chemical Abstracts Service, Science IP
Matt McBride is the manager of Science IP, the professional search service of Chemical Abstracts Service (CAS). CAS, the world's authority for chemical information, is a division of the American Chemical Society. Prior to joining Science IP in 2010, Matt worked at CAS as a Senior Applications Specialist for six years. In that role he was responsible for customer training on STN and SciFinder. Before CAS, Matt was an independent information consultant, a consultant at Thomson Dialog and a fungicide scientist at Rohm and Haas. Matt has an MSc in Plant Pathology and a BSc in Molecular Biology.
Patent protection is of outmost importance to pharmaceutical companies to offset R&D and regulatory approval costs of new drugs, and to delay the loss of market share due to generic entry. In addition to general patent legislation, many countries have introduced measures to compensate patent owners for delays occurring between the filing of a pharmaceutical patent and the grant of the marketing authorization, and to ensure a critical balance between innovation and generic competition. Understanding and locating market and regulatory exclusivity information is crucial for patent searchers but can prove quite challenging. We will attempt to summarize the different legislations used to expand the intellectual property rights beyond 20 years and most importantly, how and where to locate this type of information in databases we consider being the industry standard.
Natalie Pilote is an IP Information Analyst working for Novartis in Basel, Switzerland. She supports attorneys by identifying and analyzing the prior art necessary to establish patentability, freedom to operate, and detect infringement of IP rights. Prior to joining Novartis, Natalie held several positions as an information professional, namely at Wyeth (Pearl River, New York), Duracell (Bethel, Connecticut) and Biochem Pharma (Quebec, Canada). Natalie has almost 20 years of active involvement in the pharmaceutical industry and has cumulated a diverse work experience in chemical and patent searching.
Natalie received her Master's in Chemistry from University of Montreal (Quebec, Canada) and her Masters in Library and Information Science from Southern Connecticut State University (New Haven, Connecticut, USA).
Globalization has changed many industries, impacting employment in developed nations, increasing prosperity and influence of emerging economies, and -- importantly -- influencing the nature of products which are developed. For pharmaceuticals a shift in innovation has the potential to reach beyond simple economic effects to public health and national security. For example, a shift in innovation to emerging economies could result in increased development of drugs serving the needs of these economies and a decrease in the number of drugs serving Western diseases. By looking at locations of patent inventors and patent filings it is possible to observe trends in pharmaceutical globalization and to prepare for the changes they may bring. The first part of this study, an examination of the countries of residence of drug patent inventors from 2000 through the present elucidates trends in globalization of pharmaceutical innovation. The findings of this study have implications for future innovation directions, as increased innovation in emerging economies may result in more products being developed to suit their domestic needs. The second part of this study looks forward and examines trends in global drug patent filings. Because the suite of international patents must be filed within a short period from initial filing, the process of selecting countries in which to seek patent protection represents the patent applicant's sentiments regarding the future market potential in a given country. Accordingly, the forward-looking patent protection trends complement the historical trends in projecting the future of pharmaceutical globalization.
Yali Friedman, Ph.D., is founder of thinkBiotech and chief editor and publisher of the Journal of Commercial Biotechnology. His book, Building Biotechnology, is used as a course text in dozens of biotechnology programs. His other books include Best Practices in Biotechnology Education and Best Practices in Biotechnology Business Development. He is also a member of the board of directors of AmericasHealth, serves on the science advisory board of Chakra Biotech, is an associate of the World Technology Network, and also serves as a judge for the Biotech Humanitarian Award and the Maryland Incubator Company of the Year Award.
Dr. Friedman has strong exposure to leading issues in international biotechnology. He is lead editorial consultant for Scientific American's worldVIEW, a global biotechnology perspective profiling biotechnology industries and innovation capacity in dozens of countries, and has been invited to participate in biotechnology industry development forums for international groups such as APEC and for individual countries such as Japan, Canada, Germany, the Philippines, and Turkey.
Dr. Friedman teaches biotechnology management at the National Institutes of Health and regularly guest-lectures for other biotechnology education programs. He writes and speaks on diverse topics such as biotechnology entrepreneurship, strategies to cope with a lack of management talent and capital when developing companies outside of established hubs, and new paradigms in technology-based economic development.
Dr. Friedman has a long history in biotechnology media. He created the first blog on the business of biotechnology for a NY Times company, which was named to Forbes "Best of the Web" list. His other projects include the Student Guide to DNA Based Computers, sponsored by FUJI Television, BiotechBlog.com, and DrugPatentWatch.com, a pharmaceutical industry competitive intelligence service based on a business plan that was awarded second place in the Panasci Entrepreneurial Awards Competition.
It has becoming increasingly important in analyzing the wealth of knowledge hidden in full text patents to provide competitive patent landscape to aid the drug discovery. However, the tools that are used for such analysis are very limited. The presentation is focused on a novel approach using Linguamatics I2E text mining tool in combination with Spotfire Visualization to extract, analyze, and deliver the assay technology platform trending information in kinase selectivity screening to support fast and effective business decision making.
Yun Yun Yang
Yun Yun Yang is currently a Senior Patent Analyst in the Information & Patent Analysis group at Bristol-Myers Squibb (BMS). Yun Yun received her PhD degree in Organic Chemistry from Beijing Normal University and conducted her postdoctoral training in the School of Medicine, University of Pennsylvania. Yun Yun worked as chemistry editor at the Institute for Scientific Information (ISI, currently Thompson Reuters) and as senior information scientist at DuPont and DuPont Pharmaceutical (acquired by BMS in 2000). In addition to her operational function as senior patent analyst responsible for providing legally significantly patent analyses, Yun Yun also works extensively in full text patent mining using automated text analytics tools. Yun Yun has been actively involved in Patent Information Users Group (PIUG) and contributed many volunteering hours to PIUG community.
Much like the famous cartoon, the debate between chemical searchers and sequence searchers is growing. The appearance of "non-natural" or "uncommon" amino acids and modified peptides, for example, has given rise to the questions: Is it a structure? Is it a sequence? Could it be both? The line between non-text chemistry and biology searching has become blurred in recent years. This presentation will help to clarify the line and present guidance when beginning a search. Consider the size of the molecule, how many amino acids are present, of those, how many are glycine, in order to best cover all bases and create a more comprehensive search report.
Novartis Institutes for BioMedical Research
Kim Miller has a degree in chemistry from Western New England University. She began her chemistry searching career in 1997 and has been a patent analyst with Novartis since 2007. She has performed numerous patentability, FTO and (in)validity searches for patent attorneys and research scientists as well as lead project teams. In addition to these duties, Kim is currently involved in development and presentation of patent information classes for chemical scientist and leads the interdivisional Chemistry Discussion Group at Novartis.
Patent analysis projects are complex studies that answer IP business related questions. Due to the breadth and complexity of the questions answered by such studies, there is a naturally higher burden on the patent information professional to clean and organize the patent data in a way that leads to accurate visuals. It is impossible to be confident about the accuracy of any visuals generated from patent data without a careful inspection, manipulation, and standardization of the underlying dataset. In this talk, the speaker will share examples of the ways data cleaning can be applied to patent analysis projects to ensure quality results.
Matthew Luby has been the Director of Landon IP's Patent Analysis Group for 5 years. Previously, he worked as an Examiner at the USPTO. His interests in the field include patent analysis studies such as patent landscape and patent portfolio studies to support R&D and Intellectual Asset Management divisions.
PAIR (Patent Application Information Retrieval) is the US Patent and Trademark Office's Registry system for sharing information on the prosecution of patent applications. The information contained in the system can be used to research patent documents to determine their value. In this presentation a tab by tab walk-through of the site will be provided. Specific sections and pieces of data provided on the site will be highlighted and their role in determining the potential value of a patent document will be explained. In addition a means for collecting, organizing and presenting a summary of Public PAIR data, provided by Google, will be discussed.
Anthony (Tony) Trippe is Managing Director of Patinformatics, LLC. Tony has been a patent information professional for more than eighteen years and has spent the last fifteen specializing in technical intelligence and patent analytics. He was Technical Intelligence Manager at P&G where he was responsible for evangelizing the use of patent analytics for business decision making at the company. Tony was Practice Director at Aurigin Systems where he traveled the world working with companies of all sizes use patent analytics for competitive advantage. While at Chemical Abstracts Service Tony was the principle architect behind the development of Analyze Plus, STN AnaVist and SubScape for SciFinder. As Director, IP Analytics at 3LP Advisors Tony developed methods for analyzing and validating individual patent documents and portfolios by measuring indicators associated with the examination of patents during prosecution.
For several years the USPTO has worked with Google to provide public access to patent and trademark bulk data, information from Public PAIR, Maintenance info, Assignments, etc. That arrangement will end soon and those activities will transfer to Reed Technology and Information Services. Having served the USPTO for 43 years as their patent data capture contractor, Reed Tech now will use their intimate knowledge of patent data (and to a lesser degree their knowledge of trademark data) to provide the world with improved access to the vast repository, approximately 100 terabytes, of patent and trademark data located within the USPTO. Dave Abbott, Reed Tech VP - Government Solutions and a 34 year veteran in the patent information arena, will give the Who, What, When, Where and Why of the new patent and trademark data hosting service.
Reed Technology and Information Services Inc.
Dave Abbott has worked for Reed Technology and Information Services Inc. under consecutive contracts with the United States Patent and Trademark Office (USPTO) since August, 1979. All of these contracts focused on capturing for publication and dissemination of all granted patents including all applications published since March, 2001. This totals about 5 million grants and 3 million applications having varying degrees of complexity.
With a background in software development, Dave was responsible for the IT staff and led the implementation of advanced information capture solutions for use under these contracts. These include: introduction of personal computer technology (1981); large scale OCR (1983); clustered microcomputers (1984); local area networks (1987); Service Oriented Architecture (1988); capture of searchable chemistry (1994); SGML data encoding (1999); application publication & XML (2001); etc.
Most recently, Dave has been integral in the implemented process changes related to the America Invents Act (AIA) and Cooperative Patent Classification (CPC) in his role as the primary interface between Reed Tech and the USPTO.
KIPO (Korean Intellectual Property Office) has been providing a variety of information services in order to improve the use of patent information. The main public services are KIPRIS and KIPRIS Plus.
KIPRIS (Korea Intellectual Property Rights Information Service), the most widely used intellectual property search service in Korea, recently went through a significant upgrade for even safer, faster and standardized services. Major improvements include an increased stability of the search system with reduced web vulnerability, faster search speed and better cross-browser compatibility by meeting web standards. KIPRIS continues to change to meet the increasing IP needs.
There's another option. If you need some raw data available at KIPRIS, It's KIPRIS Plus.
KIPRIS Plus is a web-based service which enables users to easily utilize components of IP data grouped by its function. KIPRIS Plus has provided Korean Patents, utility models, designs, trademarks, trial records, registrations, cited document information, KPA, and procedural data (event history).
Korean Intellectual Property Office (KIPO)
Hee-tae Kim joined the Korean Intellectual Property Office (KIPO) in 1992 where he is now a director at the Information Planning Division.
He is responsible for KIPO to disseminate a variety of patent information to the public and establish policies to utilize patent information more efficiently.
He has a professional expertise regarding patent system through his working experience as a patent examiner, patent judge, and patent lawsuit executive. He has also cultivated a lot of knowledge of International Cooperation when he worked as a team manager of International Treaty and director of international organization.
The CPC has replaced ECLA at the EPO and USClass at the USPTO. Examiners in both offices have access to internal CPC systems for their work, but what of the general public? At the EPO, the decision was taken to locate the public CPC browser in Espacenet, and nowhere else.
The design of the CPC browser has been influenced by a number of considerations; the CPC scheme itself, the requirement to display CPC metadata (notices references etc) and useability requirements (in consultation with external users), whilst retaining familiar basic search principles.
The resultant user interface is thus highly informative, customisable and user friendly.
This presentation describes the development and current implementation of the CPC browser in Espacenet.
Nigel Clarke and Pierre Held
European Patent Office
Dr. Nigel Clarke specialised in physical chemistry, (with mathematics and physics) as an undergraduate. His PhD was in neutron science, studying the dynamics of water at oxide surfaces. His postgraduate research was on the surface chemistry of carbon fibres. He joined the UK Scientific Civil Service and as Research Scientist, he worked on new laser based techniques for the analysis of solid materials. Later he became Project Leader for physical vapour deposition of refractory metals. He joined the European Patent Office in The Hague in 1991 as an Examiner, and then moved into IT project management. After that he moved to the EPO in Vienna where for 9 years he managed cooperation projects with the member states under the PATLIB programme. In 2002 he became the manager of the Espacenet service and simultaneously responsible for market research studies. In 2006 he became manager also of the European Patent Register service. During the last 12 months Nigel's technical projects have included CPC, CCD and Machine Translation, He has wide experience of interfacing between research scientists and the intellectual property world. Lately he has been involved with the intellectual property aspects of the SLING EU Bioinformatics initiative, and graphene research and commercialisation, Nigel is a Member of the Royal Society of Chemistry, a Chartered Chemist, a Member of the Institute of Physics and a Chartered Physicist. He has been appointed Chartered Scientist by the UK Science Council.
Dr. Pierre HELD is the Service Manager International Cooperation Support in Directorate Classification Services at the European Patent Office (EPO). In this function, he coordinates all international cooperation activities of EPO's Directorate Classification Services. He is also EPO's Project Manager for the IP5 Working Group on Classification (IP5 WG1) as well as a member of the EPO-USPTO bilateral CPC Implementation Group and of the EPO's internal CPC project management team. He represents the EPO in meetings of the IPC Committee of Experts in Geneva. Dr. Held regularly speaks at Conferences and Events on the topic of patent classification and lectures at various training seminars. Before joining Directorate Classification in 2004 as EPO's Trilateral Harmony Project Manager, Dr. Held had been working at the EPO since 1997 as a patent examiner in various fields in organic and industrial chemistry (phenols, carboxylic acids and esters, carbohydrates and oligonucleotides) and was responsible for the technical input leading to the creation of a new IPC subclass for combinatorial chemistry. Dr. Held holds a PhD from the Louis Pasteur University in Strasbourg, France, a "Diplôme d'Etudes Approfondies" in organic molecular and supramolecular chemistry from the same University. He graduated as an "Ingénieur" in 1992.
Christopher Kim is currently the CPC Program Coordinator at the USPTO, where he is responsible for the implementation of CPC within USPTO. Christopher has over 15 years of experience working on international projects, including Trilateral and IP5 harmonization projects. He was involved in the reform of the IPC at the outset from 1999 to 2005, as well as the Trilateral Classification Working Group, and the IP5 WG1 Working Group on Classification. His areas of expertise include patent information, documentation, standards, data exchange and classification.
A successful sequence search can return a large number of hits for each family. Presenting this information in a meaningful way can be challenging. Using BizInt Smart Charts for Patents to create a report from a sample search from GenomeQuest, this talk identifies some of the difficult features of sequence reports. We then investigate ways to improve these reports, such as adding information from other family databases, and creating summaries of sequence results using BizInt Smart Charts Reference Rows.
John Willmore is co-founder of BizInt Solutions Inc., and manages the development of all aspects of the BizInt Solutions product line. John has a B.S. in Electrical Engineering from Rice University and over 20 years experience in software development. Outside of work, John plays ice hockey and enjoys training and competing with his longhaired dachshunds.
As the volume of patent data available from all corners of the globe increases, database providers are presented with the challenges of adding value to and maintaining the quality of vast collections of worldwide patent data.
PatBase - the global patent family database - is constantly growing, and currently covers 101 patent-issuing authorities with 23 full-text collections including Japan, Korea and Russia.
This talk gives you insight into some of the essential work that Minesoft and RWS Group carry out behind-the-scenes in PatBase to meet these challenges - from human quality checks of source data to a rolling machine translation and re-translation program.
Elan Raday joined Minesoft to strengthen the North American team and is based in New York. His legal background and experience provide an excellent framework to understand the needs of intellectual property professionals. Minesoft is a highly successful, privately owned UK company specialised in providing software solutions, searchable databases and competitive intelligence alerting and archiving systems in the field of patent information. Winning the prestigious Queen's Award for outstanding and sustained growth in International Trade, Minesoft works internationally with some of the largest corporations in the world, developing customised solutions for in-house patent search and investigation teams. Elan is part of the team liaising closely with international corporate patent and R&D departments to develop bespoke solutions.
There are now many new patent landscaping tools available. Once results are graphed, how does an organization interpret the results and draw conclusions? Should they invest in a technology, license, or go in another direction.
This presentation will use a "real life" example to show how landscaping tools can be successfully applied for patent research and decision making. Using Questel’s Orbit.Com analytics with a topical example, we will show how to determine the key players in a technology, the rate of investment that has already taken place, new scientific aspects and trends being explored, licensing opportunities, if there is litigation, and whether there is freedom to operate. New workflow management tools for archiving, classification, and collaboration of results will also be discussed.
Miguel Iglesias started his career with Questel ten years ago as a Sales Executive based in Paris, France. Prior to that, after obtaining a Master’s Degree in Technical and Economical Translation from the Sorbonne University, Miguel worked as a technical translator specialized in patents. In 2008, Miguel relocated to the United States and was promoted Questel’s Sales Manager for the Americas, his current position.
Joe Terlizzi has been involved with chemical search and retrieval systems since 1975, when he joined the Central Abstracting and Indexing Service (CAIS) of the American Petroleum Institute. At CAIS, Joe worked until 1999 as an indexer, product manager, editor of the API Thesaurus, and chief trainer, and helped develop their machine-aided indexing system. Joe joined Questel in 2000 as an IP specialist and sales representative and became their head trainer for the Merged Markush Service. Joe holds a Bachelor of Science degree from Stevens Institute of Technology in Hoboken, NJ.
STN, the choice of patent experts, has been serving patent searchers and information professionals for more than 30 years as a precise IP search tool built on a powerful query language. STN partners, CAS and FIZ Karlsruhe, have released Version One of the new STN platform, the first major milestone in a multi-year initiative to create the next generation of STN. The new STN platform retains the core content, search precision and service that have defined STN while enhancing the search power, speed and functionality. The system is designed to meet the future challenges of growing data volumes and users’ increased need for analysis and efficiency. Version One of new STN demonstrates how new technologies are being used to enhance speed and optimize search power for STN’s unique blend of content. This presentation will use some “then and now” examples to show the impact these technologies are already making in Version One and discuss how they will enhance users IP search experience in the future.
T.J. Bowen is the Manager of STN Marketing and Product Development at CAS, a division of the American Chemical Society and the world's authority for chemical information. He has worked for CAS on STN products and services for the past five years and has been a leader in the development effort of the new STN platform. T.J. holds a Ph.D. in Biomedical Sciences from the University of California, San Diego.
WIPO's patent landscape project aims at preparing patent landscape reports in collaboration with partner institutions, such as international or non-governmental organizations, on topics that are of particular interest for these partners. Each collaboration serves as a vehicle for these partners to familiarize themselves with the exploitation of patent information and other aspects of the patent system. Selected collaborations and the respective reports will be presented, such as a report on patents claiming inventions related to Ritonavir.
Lutz Mailänder, national of Germany, is head of WIPO's Patent Information Section. As such he is in charge of which WIPO's International Cooperation on Examination (ICE) which provides support for substantive examination to IPOs in developing countries, and WIPO's Patent Information Service for developing countries (WPIS) which provides state of the art search reports to institutions and the private sector of developing countries, NGOs and IGOs. He coordinates WIPO's activities related to patent landscape reports, and a study on availability and reliability of patent legal status information. Prior to this, he was the head of the International Patent Classification (IPC) section. Before joining WIPO, he worked for almost ten years as a patent examiner at the German IPO (DPMA), and spent almost two years as a visiting scientist at Cornell University, New York. He holds a PhD in solid state physics from the Ludwig-Maximilians Universität, Munich, and a certificate in Management of International Organisations of the University of Geneva (IOMBA).
Over the last 12 months, the World Intellectual Property Organization has significantly increased its range of electronic patent information and management services.
PATENTSCOPE is the public face of patents. Search national, regional and international patent collections simultaneously in different languages using the unique cross-lingual expansion tool. Use sophisticated analytical tools to find and process the information which you need.
ePCT offers secure real time access to PCT applications for applicants and Offices, with data driven services eliminating delays and transcription errors. ePCT filing (currently in pilot) links to the International Bureau's internal rules database to ensure that international applications are checked thoroughly according to the latest requirements before they are filed. PATENTSCOPE links to ePCT to also permit third parties to make observations on novelty and inventive step of international applications centrally before they enter the national phase.
The WIPO Digital Access Service for Priority documents (DAS) offers secure exchange of unpublished priority documents between patent Offices. New developments bring easier use and greater integration into ePCT systems.
Learn how these and other services from WIPO work together to help applicants, Offices and third parties monitor, manage and learn from both PCT and national patent applications.
Iustin Diaconescu is a software engineer working for WIPO in Geneva as the head of the Patent Database Section. He has been involved with document management and retrieval systems since 2000, he architectured and engineered complex web systems for several international organizations as WTO and WHO and since 2008 he has been actively involved in the design, implementation and management of PATENTSCOPE, which is the WIPO's authoritative source of information on published PCT applications.
Iustin holds a bachelor in Mathematics and he received his Master's in Computers Science from the Ecole Polytechnique Federale de Lausanne, Switzerland.
Searching patents for novelty, clearance, freedom-to-operate, or validity purposes is a real world example of an extensive game with imperfect information. In this talk, we will examine what this subset of game theory means and how it can shape significant aspects of our work. These aspects include recruiting and hiring of employees, training of patent information professionals, and development of search strategy. By utilizing knowledge developed within this academic space, we hope to improve our real world space.
DeMarco Intellectual Property, LLC
Dominic DeMarco is the Managing Director of DeMarco Intellectual Property, LLC, a patent search firm focused on serving the needs of patent attorneys in the areas of prosecution, litigation, and product clearance. The firm currently employs six full time professional patent researchers and performs searches across a full range of technologies with a focus on the engineering arts. As Managing Director, Dominic is responsible for all facets of company operation including training and work product.
Dominic was originally taught to search the infamous shoes at the USPTO's Public Search Room during the 1990's and was of the lucky generation able to transition their skills to the computerized systems used today by patent information professionals. He is a registered US patent agent (#49,015) with a degree in chemical engineering from the University of Virginia.
As a result of the AIA, the Patent Trial and Appeal Board (PTAB) came into existence this year, as did the new PTAB proceedings to challenge validity of patent claims. I will show you how to examine the online files of PTAB proceedings so you can make sense of them; explain what we have learned to date from actual PTAB proceedings; and discuss where PTAB proceedings fit in to the options to challenge patents.
Neifeld Law IP, PC
Rick is a patent attorney with physics and mathematics degrees from University of Rochester, a Ph.D. in Physics from Rutgers University, and a law degree from George Washington University. He focuses on USPTO Board proceedings, administers the "PatentInterPartes" yahoo! group list, and is the founder and principal of Neifeld IP Law, PC.
Information Technology (IT) developments at the Patent Office that will affect patent information users.
Executive Director of the Coalition for Patent and Trademark Information Dissemination
Marla Grossman is Executive Director of the Coalition for Patent and Trademark Information Dissemination - a coalition of information services and workflow solution providers that offer value-added patent and trademark information services. Coalition member company services enable patent and trademark applicants to find and make available the most relevant information related to their claimed inventions and marks through data enhancements and state of the art search tools.
Having worked on patent issues for two decades, Ms. Grossman serves as a Partner at the American Continental Group (ACG) where she represents the Coalition and other clients before the federal government. She has been called "The Influencer" by I AM Modern Magazine and one of the DC area's "Most Influential Business Women" by the Washington Business Journal. She was selected as one of the Superlawyers of Washington DC for 2013.
Ms. Grossman graduated cum laude from Harvard Law School and summa cum laude from Yale University.
The transition from the printed word to electronic media, passing through bibliographic and full text databases and onto PDF images has now reached a surprising new level. Along the way, changes to the way Non-Patent Information (NPL) is made available have resulted in the availability of free information in easy to use interfaces, some harmonization between major publishing authorities, and a very confused picture of what can be considered prior art. What is available now and what are the trends that bear watching so that patent searchers can stay relevant for at least another quarter century?
Ron Kaminecki has worked at numerous information-intensive companies, including IIT Research Institute, Dialog Information Services, Knight-Ridder Information, Abbott Laboratories, Thomson Reuters, and ProQuest. He has always worked with scientific, technical and patent information and has helped technical researchers in industry; government and academia around the world find the technical information that they need. He has written many articles, chapters, columns and papers and has delivered many presentations to help individuals understand how to locate key information. He has also taught specific classes on patent searching and analysis at several universities and law schools. He is a co-author of a computer search language, a co-inventor on a patent application and has a BS in Chemistry, MS in Computer Science, and a JD with a certificate in patent law. He is a US Patent Attorney and is a member of the Bar of the Supreme Court of Illinois and the Bar of the Northern District Court of Illinois.