The PIUG is pleased to announce the program for the 2015 PIUG Annual conference. When planning your trip to the conference, please keep the following events in mind so that you do not miss out on a valuable opportunity.
PLEASE BE ADVISED that attendees and speakers who are not members of PIUG will not have post-conference access to the conference presentations posted on the PIUG wiki, which is a PIUG member benefit. To enable post-conference access to PIUG conference presentations, and to also save significantly on PIUG conference registration fees, BECOME A MEMBER of PIUG by going to the PIUG Membership page.
Pre-Conference CPC Event: The USPTO-EPO CPC Annual Meeting with Industry Users will be held on Friday 1 May at the PIUG Annual Conference hotel, the Westin Lombard Yorktown Center, from 9:00am to 5:00pm. Click here to learn more about this free event.
Conference Program at a Glance
In addition, your conference Registration includes conference breakfasts, lunches, and refreshments during meeting breaks for Monday, May 4 through Wednesday May 6, the Sunday Welcome Reception and the Gala Dinner on Monday night.
Early-bird registration closes March 6, 2015. Standard registration rates are from March 7 - April 17, 2015 and the onsite registration rate begins April 18, 2015 and continues through the Plenary Session for on-site registration. See full details on the Registration page.
Technical Session - Monday to Wednesday
The PIUG would like to inform all conference attendees that the use of photographic or recording devices of any kind to create recordings of the conference proceedings including the technical program and workshops is strictly prohibited. This includes recordings by the audience for personal use.
Please note that the speakers, dates and times listed in the program below may change if circumstances arise. Accordingly, please monitor this web page for updated information.
Conference Abstracts and Biographies
Keynote Presentation: Patent Trolls – The Myth and Reality
Government data proves that much of what we hear from Silicon Valley about patent trolls is simply propaganda implementing a plan to run individual inventors out of business. Non-Practicing Entities (NPEs) account for only 20% of all patent suits. So, Congress's plan only addresses 20% of the problem. Most patent litigation, until recently, involved software-related patents -- 89%. With the decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S.Ct. 2347 (2013) and now the near certainty of the grant of summary judgment of invalidity for any patent claim involving the implementation of ideas using a computer, there will soon be massive decreases in patent litigation. In 2014, new suits were down 40%. It will be worse in 2015 and beyond.
Winning any patent case for an individual inventor is a huge challenge -- accessing data on everything from jury profiles to witness admissions for use in cross-examination is critical to success at trial.
In sum, individual inventors are being given a diminished status, not because of what they did, but because of who they are and the companies they own. And this is so even though their rights are created by our Constitution. The special interest groups in Silicon Valley have staked out a position they perceive is best for them. But, is it best for America and is it best for innovation?
Raymond P. Niro
Raymond Niro is a nationally recognized trial attorney specializing in the enforcement of intellectual property rights. In 2013, he was named one of the 50 most influential lawyers in the world by The American Lawyer. In 1997, he was named by The National Law Journal as one of the top ten trial attorneys in the U.S. and, in 1999, one of the ten "heavy hitter" litigators in Illinois. Since 1996, he has won verdicts and settlements totaling more than $1 billion. In 2006, he tried 6% of all the patent cases that went to verdict and, in the first six months of 2007, recovered the 11th, 15th and 35th highest verdicts in that time, each resulting in a finding of willful infringement, an injunction and cumulative damages of more than $100 million. In May 2012, he won the 7th highest verdict in 2012: $124 million in a breach of an NDA lawsuit. In September 2012, he won another multi-million verdict, his tenth consecutive. He frequently represents inventors and small companies. As a consequence of a lawsuit one of his clients brought against Intel, the term "patent troll" was coined. Sandberg, B., The Recorder, "Trolling for Dollars", July 30, 2001.
Citational Relevance and Inter Partes Review
The Inter Partes review (IPR) was introduced with the America Invents Act as a procedure to challenge the validity of patent claims based on patents and printed publications. The Ocean Tomo Ratings system includes a citation-based relevance metric that provides a new method to find non-obvious prior art as well as insights into patents and technologies.
In this talk, we present the results of a study we conducted where we analyzed the conclusions of selected set of IPR results where a patent was found invalid and compared the prior art that was found by the IPR board with the results of the Ocean Tomo Patent Relevance results. We found that for a number of cases the patent relevance results included the publication that was used by the IPR board to invalidate the claims.
Matthew Beers, Ph.D., is the Chief Technical Officer for Ocean Tomo working from the San Francisco Office, and is responsible for the Ocean Tomo Ratings System and Patent Information and Data Networks businesses. Matthew has 20 years of experience leading software development across diverse industries, from e-commerce platforms to patent analytics. He specializes in system optimization, particularly focused on algorithms working on large data sets. Dr. Beers received his Ph.D. in Information and Computer Science from the University of California, Irvine with his dissertation focused on code optimization and portability in compiler development.
Lessons and Pitfalls in Freedom to Operate Searching: Always Ask, "Can the Client Get Sued Over This?"
Freedom to Operate (FTO) searches require the searcher to find the information of interest in Claims. Sounds simple, but for rigorous FTO searching, several key practices must be diligently upheld. As a searcher conducting FTO searches, you must always ask, "Can the client get sued over this?" Claims alone should never be searched absent other sections of the document. Independent claims should be primarily considered, but dependent claims must also be included. Filing and publication dates need to be taken into consideration. Categories for research findings should be constructed to include appropriately broad interpretations of your topic. Broader and narrower searching must be conducted. This talk will include examples of searches in a review of best practices for FTO searching including definitions of "Broad" and "Narrow" from different perspectives.
Irene Zajac holds a BA in Chemistry from Bucknell University and an MS in Biochemistry from UNC/Chapel Hill. She has been a Information Researcher/Analyst in the Life Sciences for over 12 years with Nerac and most recently a Patent Analyst with Global Patent Solutions. Her experience as a Laboratory Scientist spans 15 years in Enzymology, Protein Science, Assay Development and Immunology with NIEHS, Glaxo and Argonex Laboratories.
Training for the TPS* Marathon (*Thorough Patent Search)
Most patent searches are not as straightforward as receiving a request and a few keywords, plugging them into a database and returning the outcome. To deliver winning results consistently involves knowing the elements pivotal for the search and having practiced skills that will be called forth spontaneously. Being in training means exercise, being more fit than required, and avoiding injury. We will examine the benefits of cross-training, pacing and practice, and explore routines patent searchers can leverage for better efficiency and accuracy.
Kristine Atkinson holds a doctorate in genetics, master's degree in cell biology, and an undergraduate degree in foreign languages and linguistics. As principal of A/A Patent Investigations she presently does contract patent search and training for biotech and medical device projects.
Dr. Atkinson has supervised laboratories in electron microscopy, flow cytometry, immunology and protein purification, and has been a professor of legal writing, physiology, immunology, tissue culture and communicable disease. She has worked in both public and private sectors, and is a USPTO-registered patent agent.
The Derwent Markush Database and the Journey to a Unified Solution for Generic Chemical Structure Searching on STN
Searching generic chemical structures, so-called Markush structures, is a challenging endeavor due to its inherent complexity, and consequently the provision of modern software solutions is urgently needed. The upcoming implementation of DWPI Markush® (DWPIM, produced by Thomson Reuters) for the first time on new STN® together with MARPAT® (produced by Chemical Abstracts Service) will deliver a unified Markush search solution. Furthermore, the ability to search these databases along with CAS REGISTRYSM and the other key exemplified substance databases DCR® and ReaxysFileTM creates a true one-stop for chemical patent searching, covering both generic and specific structures. We will discuss and illustrate key benefits of the implementation of DWPIM such as an improved evaluation of Markush structures with hit structure display, highlighting features, and assembled display. Importantly, the integrated environment of Derwent files for search and display will allow for combined structure and text searches. Case studies in DWPIM and MARPAT will be presented demonstrating the significantly streamlined Markush search workflow. Overall the unified Markush solution on STN will allow information professionals to search generic chemical structures in an efficient and reliable way, thereby supporting business critical decision-making in the chemical and pharmaceutical industries.
Thomas Stengel (Ph.D., Chemistry) is Product Manager for Chemistry & Patents at FIZ-Karlsruhe. His main focus is currently on the DWPI Markush database development on STN. Prior to joining FIZ-Karlsruhe, he worked many years as a Scientist and Project Leader at Nycomed in the pharmaceutical industry.
A Case Study in Intellectual Property Landscape and Taxonomy Development
Identifying the component technologies underlying market trends is critical to making informed decisions in the development of a competitive licensing program. IP landscapes provide a construct for organizing and presenting this strategic information, especially when developed within a relevant technical taxonomy. Overlaying assignee business information and derived patent quality metrics can highlight patent investment opportunities.
In this presentation, the development of an IP landscape for a technical topic in the semiconductor space is reviewed. A technical taxonomy is proposed to guide the construction of the patent data set from keyword strings. Semantic searches against key industry design standards are also used to expand the relevant patent set. Conclusions are derived from the landscape in the context of competitive portfolio development, including identification of the key players, opportunities for acquisition of quality patents, and forecasting potential future defensive actions.
Kevin J. Hess
Kevin Hess is a patent analyst with Patent Technics, an intellectual property consulting practice specializing in the semiconductor and consumer electronics areas. Kevin has worked in IP licensing since 2007, focusing on valuation, acquisition, and evidence of use for semiconductor patents. His areas of interest are analytics, valuation, and prior art search strategy.
Prior to consulting, Kevin Hess was a technical expert in semiconductors for Intellectual Ventures where he supported patent valuation, acquisition, and licensing. Before joining Intellectual Ventures, Kevin served as Licensing Technical Expert at Freescale Semiconductor, after rotating through several other positions at Motorola and Freescale, including packaging development and device design rule engineering.
Kevin is an inventor with 44 US and foreign patents granted in the areas of semiconductors and polymer materials. He also has published several papers on the topics of semiconductor design and reliability. Kevin holds a Ph.D. in Chemical Engineering from the University of Texas at Austin. His interests include guitar collecting and amateur auto racing.
Using Patent Analysis to Trace Knowledge and Inform Federal Funding: A Case Study of Additive Manufacturing
Patent analysis is a common ways to trace the knowledge flows from scientific discoveries to the development and commercialization of technologies. In this study, researchers from the Science and Technology Policy Institute (STPI) traced the impact of funding from the National Science Foundation the development of the additive manufacturing (AM) field and industry. Researchers used a database of 4,368 AM patents from 1975 to 2012. Patent citation analysis allowed researchers to identify the knowledge flows of both publications and patents in the development of fundamental AM patents as well as the influence of the fundamental patents in the development of historically-important AM patents that have led to currently multi-billion dollar AM industry. Patent citation network maps revealed connections of historically-important AM patents to early work funded by the Federal Government. However, there are various considerations and limitations to the use of patent analysis that may under-represent the Federal Government role in technology development.
Vanessa I. Peña
Vanessa I. Peña is a Research Associate at the Science and Technology Policy Institute (STPI). She holds dual master's degrees from Columbia University and the London School of Economics and a bachelor's degree from the Massachusetts Institute of Technology. Most recently, her work focuses on efficiencies and effectiveness of the Federal research and development laboratories and policies to support public and private sector innovation. Since joining STPI in 2009, she has also worked heavily on program evaluations, emphasizing data-driven approaches and bibliometrics to analyze National Science Foundation and National Institutes of Health research portfolios. Prior to joining STPI, advised on international climate and energy policies.
Adding Value to Information with Creative, Customized Search Reports
Obtaining valuable insights from vast collections of scientific and patent information can be a daunting task. By applying simple techniques with readily available tools, information intermediaries can add value to online information. Unique report formats can deliver precisely the information needed to evaluate database search results. High-quality, easy-to-use information helps the organization make better decisions and provides a competitive edge. A small investment of time to learn how to increase productivity and add value to online information can pay significant long-term dividends.
David S. Saari
Dr. Saari joined Science IP as a Senior Scientist in 2005. His 40 years of experience includes acquisition, distribution, organization, and use of scientific and patent information and management of research information services. Prior to joining CAS, he worked for American Cyanamid Company, American Home Products, BASF, Miles Laboratories, Schering-Plough, and the U.S. Environmental Protection Agency. David holds a doctorate in synthetic organic chemistry from the University of California, Davis. He is registered to practice before the U.S. Patent and Trademark Office as a Patent Agent (Reg. No. 29,239). He has held academic appointments at the University of California, Davis and the University of Notre Dame. David has been a member of PIUG since the organization was formed.
Strategies for Creating a Technology Landscape
This talk will explore techniques to unlock the value of patent portfolio information. Beyond the various technologies a company is working on, and who their most prolific inventors are, you can uncover a wealth of additional information. This includes indications of the financial health of the company, as well as relationships with other companies and suppliers. Other competitive intelligence techniques which supplement patent information will also be covered.
Diana Koppang is Neal, Gerber & Eisenberg's Manager of Reference Services. She provides reference support across all of the firm's practice groups and is also the embedded librarian for the firm's Intellectual Property Practice Group. Ms. Koppang joined Neal Gerber Eisenberg in August 2012. Prior to that, she was the Information Resources Coordinator at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a boutique trademark firm in Chicago. Ms. Koppang is active in the American Association of Law Libraries and the Private Law Libraries (PLL) Special Interest Section. She is currently the Chair-Elect for PLL's Intellectual Property Caucus.
Moderated Q&A Panel with End-Users of Patent Information
How do attorneys at patent-intensive firms use scientific and technical information to address business needs? With new media like blogs and even Twitter dominating current awareness, how do legal endusers cope with the vast amount of information available on the Web? Questions to the panel can be submitted prior to the conference to Ron Kaminecki at ron at kaminecki dot com to be taken up by the moderator or posed directly to the panel during the event.
Moderator: Tom Wolff, Wolff Information Consulting LLC
Strategies & Tactics for Using Patents in Competitive Intelligence
Who are the major players in a particular industry or in the production of a specific technology? Rank the companies by number of filings and the countries they operate in. Evaluate current players' litigation history to predict the financial risks of entering into a new industry. This program will show you how to evaluate your client's competitors when considering expansion in new technologies. Learn how these techniques and analysis can be used to evaluate investments in companies within an industry by determining that industry's volatility.
Heather J. E. Simmons is an Assistant Professor of Library Service at the University of Illinois Urbana-Champaign. Previously she worked at General Motors for 17 years, and before that she was the Assistant Director of Wayne State University Law Library. She has a BA in Classical Archaeology and an MA in Library Science from the University of Michigan, and a JD from Wayne State. Heather was admitted to the State Bar of Michigan in 1985. She is active in the American Association of Law Libraries, serving on its executive board from 1997 to 2000. She is a member of PIUG's Member Relations Committee. Research interests include access to patent information, patent searching and patent classification. Her most recent article is: Categorizing the Useful Arts: Past, Present, and Future Development of Patent Classification in the United States, forthcoming in Law Library Journal, vol. 106 no. 4, Fall 2014.
Keeping R&D Up to Date on Competitive IP Activity
The scientific community is often overwhelmed with IP information. In order to minimize confusion and maximize understanding, we have developed 'best practices' for the amount and focus of competitive IP information we provide. Our work includes creative ways to search, analyze, and present competitive information for our various product platforms, to keep them informed without drowning in data.
Sara Peters and Susan Jacobson
Susan began her chemical engineering career with 5 years at The Dow Chemical Co., as a production and research engineer. She then joined Pillsbury/General Mills for a 23 year stint, with 12 years in new product/process development and 10 issued patents. In 2003, she transitioned to creating and building an IP Strategy group in R&D. In this role, Sue led the invention review process, and developed methodologies for know-how identification and protection, competitive mapping and patent portfolio strategy. She is currently looking for her next interesting opportunity.
Sara started her professional career as a formulation chemist at Ecolab before transitioning to the information center in 2007. Sara joined General Mills in 2013 as a Patent Research Scientist. Currently, Sara supports several R&D platforms, the legal team, and coordinates workload with the General Mills GSIA (Global Science, Information, & Analysis) patent team in Mumbai, India.
Current Developments in the Future Certification of Patent Information Professionals
Searching and understanding patent publications in an effective manner requires substantive knowledge and a variety of skills. Since 2008, volunteers from the PDG, CEPIUG and PIUG have been collaboratively working together to create an international certification scheme for the patent information professional. This presentation will provide an overview of the major milestones achieved to date and the current developments underway in establishing certification for the patent information profession.
Susanne Hantos is a Senior Associate and the Manager of the Patent Intelligence Services group at Davies Collison Cave, an intellectual property law firm in Australia. She is a registered Australian and New Zealand patent attorney, a Canadian patent agent and a qualified librarian. Susanne specializes in searching and analysing patent and non-patent information to provide advice on patentability, infringement, FTO, invalidity, oppositions and revocation proceedings. In June 2014, she was appointed as the Co-Editor-in-Chief of World Patent Information. She is also the current Immediate Past President of the PIUG.
Can I Buy, License, or Acquire It?
These are the final three questions in the technology scouting process. When a match has been found between, typically a large company technology need, and a smaller player who can supply the missing piece of innovation. But in this talk we will primarily look at the first part of the process. This involves searching, of which patent searching usually plays an important role. In this presentation I will look at the searching and analysis of patent information to identify small to medium companies, universities, and inventors working in emerging technologies, examples will be taken from life sciences. We will look at finding company names, locations and contact details, and finding key inventors. The commercial databases pay most attention to getting the large companies right, so what does the picture look like when we need to find small companies? Often the enquiry comes with a specific geographical need, so examples of using priority countries will also be provided, together with using scientific literature and company information to complete the picture.
After many years in the information industry working on both sides of the fence, as an Information Analyst in industry and also on the commercial information provider side; in January 2013 Jane took the bold step to set up her own company, Extract Information Limited. Extract Information, based near Cambridge in the UK, provides search services, training and consultancy on IP and commercialisation matters. Jane has degrees in Chemistry and Information Science, and a certificate in Intellectual Property Law. She plays an active role in the patent information community, and is currently on the management committee of the UK PATMG, and is co-Editor in Chief of World Patent Information.
Valuation of IP from Cradle to Grave - Guidelines for Patent Search Professionals
Valuation of intellectual property (IP) is a critical part of IP management. A variety of ideas have been proposed for valuation of IP. Patents are a very important part of IP and a number of ideas exist for valuation of patents. Searching and analysis of patent information typically performed by patent search professional is needed for all types of IP management. However management of IP needs value added information and being aware of these value adds increases the importance of work performed by patent search professionals. This presentation will provide guidelines for patent search professionals taken from the author's experience in the area of IP management. The purpose of these guidelines is to provide an in-depth understanding of goals of IP management and to help patent search professionals focus their efforts in meeting these goals. This presentation will also discuss ideas for a comprehensive system for valuation of IP that can be applied from ideation to various events during the lifetime of a patent.
Kartar is an intellectual property professional with technical knowledge, expertise and skills in intellectual property management, patent law, innovation, commercialization, licensing and business development. He is presently working as a Patent Analyst at Landon IP on searching, analyzing and reporting patent, technical and business information. Kartar also advises on development and protection of intellectual property from his vast experience in this area.
Kartar is a Registered Patent Agent with experience in patent prosecution, drafting of patent applications, monitoring and coordination of patenting activities and patent management systems. Kartar holds a Ph.D. in Polymer Science and Chemistry from the University of Michigan. He has industrial experience in development and improvement of products and more than twenty five years of successful career in R & D functions of major chemical companies including BASF and Henkel. His work has resulted in several patents and technical publications.
How to Effectively Monitor Your Competition
This discussion focuses on best practices for identifying competitors and their IP portfolio. It also explores methods for delivering this information to clients in ways that allow them to make decisions regarding future products/services rollouts, patent monetization, litigation, and R&D. Lastly, the presentation covers setting up periodic updates for ongoing tracking.
As Director of Litigation Services, Nathan leads all IP Valuation, Patent Monetization, and E-Discovery projects. In addition, Nathan is involved in Cardinal's Due Diligence, Assertion Studies, and SCORE service offerings. He also authored the procedure for Cardinal's redbird invalidity searches. Prior to his current role, Nathan was a project manager at Cardinal specializing in electrical, computer science and communication technologies. Nathan's industry experience includes work at two major international law firms where he gained significant experience in patent litigation and prosecution. His practice focused on the following technologies: cellular phones (2G, 3G, and 4G), vehicle navigation systems, lithium-ion batteries, microprocessors, and emergency notification systems. In addition, he was a software programmer and tester at a Fortune 500 company. Nathan earned a law degree from the University Of Iowa College Of Law, where he graduated with high distinction, was an Order of the Coif recipient, and won the ABA/BNA Award for Excellence in the Study of Intellectual Property Law. He graduated magna cum laude, earning a bachelor's degree in electrical engineering and a minor in mathematics from Valparaiso University.
The Use of Patent Analytics for Informing Public Policy Decisions in Australia
This paper will describe the interactions between analysts in the National Patent Analytics Hub at IP Australia and both government and non-government organisations. The Patent Analytics Hub has collaborated with these organisations to undertake a number of studies highlighting the patent landscape and identifying key firms operating in a number of technologies, including food manufacturing, water technologies and medical devices. In particular, the paper will highlight the unique challenges and lessons learnt by the Patent Analytics Hub through these collaborations. The paper will also discuss methodologies used to analyse and value-add to search results to deliver useful insights and robust evidence for policy makers and management within these organisations. Further to the above, this paper will provide insight into new methodologies being developed through linking administrative data in all IP rights with firm-level business characteristics which have been published as the Intellectual Property Government Open Data (IPGOD). The integration of the firm-level dataset with existing methodologies within the Patent Analytics Hub will allow us to address industry level questions, provide alternative means to define technology boundaries around industries, identify growth sectors and link an entity's IP rights from invention disclosure through to trademark protection.
Alica Daly is currently the Head of the National Patent Analytics Hub at IP Australia. The Patent Analytics Hub delivers patent analytics studies and technology assessment reports to external organisations. Alica holds a PhD in organic chemistry. She joined IP Australia as a patent examiner in 2007 and since then has examined patents in many technology areas, including applied chemistry, polymers, biochemistry, chemical engineering, biotechnology and pharmaceuticals. Alica also trains new examiners in prior art searching techniques. In 2013 Alica joined the National Patent Analytics Hub as a Senior Patent Analyst. In that role Alica completed patent analytics reports for Australian medical research institutes and the federal government Department of Industry.
Intellectual Property (IP) Analytics and "Product Adjacency" Assisted Strategic Invention Planning Towards Technology Solution Development
Dr. Quaisher Alam is a Lead Scientist (Legal Affairs - IP Analytics Team) in SABIC Technology Centre, Bangalore, with 14+ years of post-Ph.D. work experiences in Chemical, Polymeric and Nano-structured Materials Technology and Strategic IP. Alam has Ph. D. in Chemistry from I.I.T. Bombay, India - and globally 19th person for the total synthesis of an anti-tumor bio-molecule, (+/-) Coriolin (as part of his doctoral dissertation). After post-doctoral studies in Cornell University, Ithaca, NY, and UMASS Amherst, MA he joined General Electric's John F. Welch Technology Centre, Bangalore in 2003 as an Intellectual Property Analyst. He is GE certified Six Sigma Green Belt, and an excellent trainer for Six Sigma DMAIC/DFSS and 'Everyone Is Creative' Innovation courses. Alam is most recently responsible for Competitive IP/ Technology Analysis, and Intellectual Property Strategy/ Management of Innovative Plastics business and Corporate Programs of SABIC. Alam has won several Management and Service awards in GE/ SABIC over the years, and a National Merit Scholar (Govt. of India). Besides Chemical, Polymeric and Nano-structured Materials Technology & Strategic IP, Alam enjoys spending times with his family, reading books, watching selected news channels, and occasional Indian cooking.
Moderated Q&A Panel on Challenges in Patent Information from an Academic Point of View
How do the various schools, mostly at the graduate level, address the issues of information retrieval in an age of simple but effective Google interfaces and students who believe that technical and patent information should be free? What steps are schools taking to address the need for more high level workers who understand technical information and especially patent information? This moderated panel will cover the aspects of how information affects their courses and what this means for professionals in intellectual property work.
Moderator: John Marlin, ExxonMobil
What's Behind China's Recent Patent Explosion?
In recent years, China has created initiatives that encourage filing of patents by domestic applicants, subsequently, there has been an explosion in China patent filing. For example, in 2014, over 2.3 million total patent applications were filed in China's State Intellectual Property Office ("SIPO") from domestic and foreign applicants, compared to about 578K applications in the USPTO, almost four times the US numbers. However, unlike the US, the total application numbers for China are a combination of three application types: Invention, Utility and Design. The Invention type application in China is the most similar to the US utility application. A breakdown of the patent filing in China (2000-2014) shows a high number of domestic application for Invention type (75%) and overwhelming domestic numbers for Utility model (99%) and Design (96%). The speaker will provide some context behind the numbers, and the possible impact on global filing strategies for corporations.
Dilip P. Pandya
Dilip P. Pandya is a patent researcher with over twenty years of experience. In his current role, he is responsible for complex patent search and analysis for key strategy groups at Qualcomm Incorporated. Dilip often incorporates business and competitive intelligence information with patent analysis to create high value reports for Qualcomm's internal clients. Initially as a bench researcher in immunodiagnostics, Dilip transitioned into a new role as a Patent Examiner with the United States Patent & Trademark office (USPTO). Dilip progressed to the Chief of Information Branch, USPTO Chemical/Biotechnology Division. Dilip's team of fourteen staff were responsible for prior art searching for over three hundred Patent Examiners. His team also handled bulk of the biosequence searching coming out of the human genome project. Dilip has also worked in similar roles at Dow Chemical, Johnson & Johnson, Novartis and AstraZeneca. Dilip joined Qualcomm in October 2011. Dilip received a B.Sc. Honours Degree in Biochemistry from The University of Salford, UK.
Lost in Translation - the Language Regime for Obtaining Patent Protection in Europe
The strategy which an R&D company adopts for its filing and maintenance of IP rights around the world has a direct bearing upon the work of the information specialist. A good information specialist needs an advanced knowledge of both patent procedure and dynamic patent database records, which record stages of progress through application, grant and post-grant events. In relation to Europe, it is well known that one of the largest costs - and some of the most complicated procedures - is that of providing translations of patents granted by the EPO, into all of the appropriate national languages of the designated states. The number and content of these translations has varied over the years, as countries have changed their requirements unilaterally or under the arrangements of the London Agreement. The rules will change yet again if unitary protection comes into effect. This session will provide a review of the patentee's responsibilities, and how these are reflected in bibliographic and legal status databases as the translation regime has changed over the years of operation of the EPO.
Stephen Adams is the Managing Director of Magister Ltd., a UK consultancy specialising in patents information. Mr. Adams has a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London. He has worked in a variety of government, private research and industrial information departments, specialising in patent information since 1988 when he joined ICI Agrochemicals (later Zeneca Agrochemicals). He formed Magister Ltd. in 1997. He is the author of two editions of "Information Sources in Patents", currently published by de Gruyter, and serves on the Editorial Advisory Board of the Elsevier journal "World Patent Information". He is currently Vice-Chair of the PIUG.
Different Hats - Divergences in Patent Information Perspectives Between Patent Attorneys and Examiners
Addressing the question of whether an invention is novel, inventive and patentable is straightforward:- identify the invention, search and locate the relevant prior art, and then a simple comparison will give you your answer. But then how and why does searching, interpreting and using patent information differ between the roles of patent applicant, patent attorney and patent examiner? This presentation will look at the similarities and significant differences as to how inventions are considered and approached, how patent information is searched, retrieved and interpreted between these roles and the implications that follow. Within this, we will look at the three-person search team (3-PST) best practice approach taken by the Australian Patent Office in their agency as an International Searching and Preliminary Examining Authority under the PCT and the quality assurance procedures in place.
Ross Heisey has been working in intellectual property for 25 years - as a researcher consuming and generating intellectual property; in the University system identifying, assessing and capturing intellectual property; in private practice as a patent attorney advising, drafting, protecting and litigating intellectual property; and now as a patent examiner searching, examining and granting intellectual property rights. Ross holds a PhD in Chemistry from The University of Melbourne; is a Registered Patent Attorney in Australia and New Zealand; lectures in intellectual property law at the University of Technology, Sydney; searches and examines pharmaceutical patent applications at IP Australia; and assesses extension of term applications for pharmaceutical patents.
Current Situation and Progress of the Patent Search Grand Prix (PSGp) in Japan
The Patent Search Grand Prix (PSGp), which was formerly called PIRC (Patent Information Retrieval Contest) in Japan, has been held annually since 2007.
The participants use online databases via PCs at the examination venues to find answers to specific patent search questions. At first, there were around 40 participants and the event was held in one city. There were about 200 participants at the event held in two cities in 2013, and 240 participants in 2014. We have been trying to improve our methods to prepare the questions and discussing what is the most effective way to evaluate each participant's search ability. Previously, one level was prepared as an individual contest. From the 2013 event, we prepared 2 levels, basic and advanced, and a team competition. At the 2014 event, the participants were allowed to take the question sheets with them. The feedback / orientation seminars were held at three cities. Next time, PSGp will be held in these cities. In addition, IPCC, the organizer, is planning a special event for its 30th anniversary in 2015. Guest participants from overseas will be invited.
As two of the vice chairpersons of the committee for many years, we introduce our activities of PSGp.
Izumi Tsuzuki worked for Maruzen for more than 10 years as an instructor of Dialog Information System and patent databases. After leaving that company, she joined a patent office in Osaka. After some years, she joined KMK Digitex and G-Search, which were providing information systems and agents of Dialog. From April 2005 to March 2014, she was an associate professor at the Graduate School of Intellectual Property of Osaka Institute (OIT) in Japan. She is one of the vice chairpersons of the committee of the Patent Search Grand Prix (PSGp) organized by IPCC in cooperation with OIT and JAPIO. She holds a Ph.D. in physical chemistry from Kyoto University in Japan.
Sakae Nakamura joined in Asahi Kasei Corp. in 1985. In 1989, she was transferred to the intellectual property department and was responsible for the patent acquisition and licensing business concerning health care and fiber. Later, she held a post in the technical information search division under the intellectual property department of Asahi Kasei Group that was established in 1998, and was promoted to a director for the division in 2006. In this role, she was in charge of providing training on information searching and utilization for researchers in addition to specific searching. She also headed a division supplying consulting services on information searches and information analysis in diverse industries.
She is also a frequent speaker at other universities concerning search and patent information analysis. In April of this year, she became the Head Chairperson of the Committee of the Patent Search Grand Prix (PSGp) organized by IPCC in cooperation with OIT and JAPIO.
How to Educate Distributed Audiences
What does the European Patent Office offer to educate individuals and staff from different types of organisations to make efficient use of the EPO's patent information products and services. Based on regular training needs surveys the portfolio contains a mix of formats to reach the inhomogeneous and geographically wide-spread target audience. We will present the recent training needs survey and elaborate on the best practice and experience of the EPO's distance learning programme, including webinars and self-paced training.
Roland Feinäugle is managing the unit for external user training on patent information at the European Patent Office. Since joining the EPO in 2002, he has been responsible for training programmes with a special focus on development and implementation of digital learning technologies such as web-based training and the online webinar service.
Roland Feinäugle graduated in physics at the Technical University of Berlin, Germany. He holds a doctoral degree in physics from the TU Berlin in the area of space sensor technologies acquired during his occupation as a researcher at the German Aerospace Centre. Before joining the EPO, Dr Feinäugle worked more than three years in system training at the European Space Agency's astronaut training centre in Cologne, Germany. He also holds a post-graduate degree in law.
WIPO's Portal to Authoritative Patent Register Sources
National patent registers are and will always remain the authoritative primary source for legal status and ownership of patent rights, despite secondary sources like INPADOC which gather information from primary sources. A new WIPO portal to such registers aims at facilitating the verification of legal status of patents and SPCs. It contains information on accessing, searching and navigating online registers, availability of file inspection, browsing of online gazettes, and types and access to patent publications. The use of the portal for instigating examination or protection status will be demonstrated by short case studies, and compared to researches in secondary sources.
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).
Building Better Search Queries with the New STN Term Explorer
In new STN, the Term Explorer helps you build better, more comprehensive search strategies that generate superior search results in less time. Within the Term Explorer, the Explore Thesaurus feature provides easy access to the key thesauri for new STN databases, and offers comprehensive, up-to-date terminology collections for chemistry and the life sciences searches. This case study will examine how to leverage new STN's thesauri to build better NPL searches. It will highlight a number of databases recently added to new STN, including BIOSIS, Embase, MEDLINE, FSTA (Food Science & Technology Abstracts) and the CAB Abstracts agricultural information database, as well as CAplus and the CAS Lexicon.
Brian Sweet has been a senior product manager at CAS for over twelve years, focusing on STN®'s patent and biomedical content and on STN® AnaVist™. 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. Brian is a former president of NFAIS and has been active in SLA.
LifeQuest: A Novel Keyword Search Application for Life Science IP Analysis
Biotech patent searchers are masters in the art of knowing which tools to use and when to use them to accomplish a wide range of research tasks. Searching text in the life sciences is fraught with challenges such as the overloaded use of words to name biological concepts (for example, the "slingshot" gene), and the complexity of biological concepts which forces biotech searchers to build and manage large lists of synonyms. We present here a unified framework for the comprehensive searching of both life science text and biological sequences in a single environment. The framework utilizes life science ontologies to aid the user in developing conceptual queries that avoid the typical challenges in biotech patent text. A case study will be presented highlighting the efficiencies of this model.
Richard Resnick was appointed CEO in 2010 and has solidified the company's leadership position in the intellectual property and agriculture markets and led its expansion into healthcare. He has extensive experience building and growing innovative technology companies in life sciences. Resnick led GenomeQuest products and services operations from 2008-2010. He was previously CEO of Mosaic Bioinformatics, which was sold to NetGenics. Prior to Mosaic, Resnick was global bioinformatics software head for Wyeth, and, before that, a member of the Human Genome Project under Eric Lander at MIT. Resnick holds an M.B.A. from the Sloan School at MIT, an M.S. in Computer Science from WPI, and a B.S. in Computer Science from UMass Amherst.
Enhancing Patent Family Display in BizInt Smart Charts in Patents
Recently one of our customers presented us with a challenge to improve the display of patent family information in reports that integrate data from several sources. We discuss these challenges and new approaches to filtering, sorting and integrating family information to create more concise, useful reports.
John Willmore is Vice President, Product Development, for BizInt Solutions, Inc. and manages the development of all aspects of the BizInt Solutions product line. John has over 20 years of experience in processing, analyzing and integrating drug pipeline, patent and clinical trial information, and has worked closely with information publishers over that period. He was the head of the TRW Smart Charts team at TRW, Inc. and along with Diane Webb, founded BizInt Solutions in 1996. John has a B.S. in Electrical Engineering from Rice University and over 20 years experience in software development. He plays recreational ice hockey and competes with his dachshunds in agility and field events.
"Meet the Trackers" and Learn More About the Updated PatBase™ Analytics and FTO Filtered View
Grow your knowledge on Minesoft’s ‘Tracker’ suite of products: PatentTracker™ and our two latest monitoring services: CiteTracker™ and Legal Status Tracker™. Each ‘Tracker’ offers unique features and benefits to help automate your monitoring needs. In addition, you will hear about two major enhancements with our flagship service, PatBase™. Developed in-house by Minesoft’s patent information specialists, an integrated powerful patent analytics software has been added. Additionally Minesoft has created new filtered view options for searching and reviewing results in our patent family database, offering an ideal tool to quickly and efficient narrow your search and results.
Doug van der Zee
Doug van der Zee who is the Minesoft, Director of Business Development leads the North American team of Business Development Executives, as well as the training and support team. Doug has spent his entire career in publishing and information aggregation having worked for companies including Thomson Learning, Wolters Kluwer Health, OCLC and EBSCO Publishing. He knows the importance of premium research and analytics databases and tools to better discover and manage the information a user needs to do their job. Doug is based in Cincinnati and travels throughout the US and Canada meeting with clients and working with his team of professionals.
Tracing the Evolution of Innovation: How Predictive Analytics are being used within Cognitive Intelligence Research to Drive Business Decisions
Wouldn't it be valuable to know what the stock market will do tomorrow? Or perhaps, predict the cost to your company if management made the wrong business decision? When data scientists ask the right questions using predictive analytics, they're often able to address identifiable business challenges, and perhaps more importantly, discover the unknown.
Predictive analytics provide insight to patterns worth understanding - which can now be available to you. You just have to know how to ask the right question which can lead to your findings making a strategic difference to your company. Learn how Data Scientists and Applied Linguistic professionals have analyzed the evolution of industry terminology and related concepts to view patent results over the past decade.
IP.com's proprietary cognitive intelligence technology drives the InnovationQ Patent and Non-Patent Literature search platform. InnovationQ is quickly gaining acceptance as the core resource organizations make complex business decisions around their current and future innovations. The IP.com big data solution will extend your contribution across the enterprise.
Brian McGlynn and Jeffrey Cozzo
As Vice President, Brian McGlynn, is responsible for product strategy, global sales, and marketing for IP.com. He is also a seasoned entrepreneur, having started several technology and media companies. Prior to his role at IP.com, Brian was Vice President of Global Accounts with Hewlett Packard's Autonomy division and a management consultant with Deloitte.
As Account Executive, Jeffrey Cozzo is responsible for business development, managing strategic accounts, and enhancing customer relationships for IP.com. Prior to IP.com, Jeffrey has over 15 years of consulting experience, most recently in transfer pricing where he has performed various services for multinational companies including tangible and intangible asset analyses. He was also the founding Managing Director at ktMINE and is currently the Licensing Executive Society (LES) Chicago Chapter Chair and a Certified Patent Valuation Analyst.
Finding Correct Prior Art
There are many procedures and strategies to locate information that will have an effect on the patentability of an invention and much has been published on advanced work with elegant tools to enable workers to find the most elusive prior art. All of us accept information as valid and almost never challenge the worth of it, let alone the correctness of it. How do you challenge the authenticity of references? This presentation will cover several strategies for determining if a reference really is truthful and means what it says, plus how to find the correct information.
Ron Kaminecki has worked with technical, scientific, and legal researchers in various capacities, as Manager, Advisor, and Director, mostly at Dialog, working with industry specialists, consultants, analysts, attorneys, technical researchers and patent examiners worldwide. Currently he consults in the area of patent searching and is an Adjunct Professor in various patent searching and analysis courses including at the MS in Patent Law program at Notre Dame University, DePaul Law School and the University of New Hampshire Law School. He is a co-inventor in a published patent application entitled, "Document-centric workflow systems, methods, and software based on document contents, metadata, and content." Earlier, he worked as an Information Specialist at IIT Research Institute and as Manager of Patent Information at Abbott Laboratories and co-authored NISO Standard Z-39.58, "Common Command Language for Online Information Retrieval." With a BS in Chemistry, MS in Computer Science and a JD with a Certificate in Patent Law, he focuses on enlightening researchers on the technical aspects of information retrieval. He is a US Patent Attorney and is a member of the Illinois Bar and the Bar of the Northern District Court of Illinois.