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Patent Information Users Group, Inc.

The International Society for Patent Information Professionals

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PIUG 2020 Annual Conference
An International Conference for Patent Information Professionals

Taking Patent Information to the Next Level

Monday, October 12 - Friday, October 16, 2020
Caribe Royale Orlando
8101 World Center Drive
Orlando, Florida 32821
+1-407-238-8000

Twitter: #PIUG20

Preliminary Program

The PIUG is pleased to announce the preliminary list of presenters at the Plenary Sessions for the PIUG 2020 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.

Schedule at a Glance

See the Schedule at a Glance table on the Conference Overview page.

Registration

The deadline for Early-bird registration is September 6, after which rates will increase. Register soon. Rates are available by clicking details under the PIUG 2020 Annual Conference on the PIUG Calendar Page.

Preliminary List of Presenters

Please note that the speakers listed below will be updated and session details published as the Program Committee and likely participants work out the remaining commitments. Accordingly, please monitor this web page for updated information.

European Patent Law Update for Patent Information Professionals
Noel Akers, European Patent Attorney, NJ Akers & Co.

To Search or Not to Search? A More Interesting Question Following Halo
Tom Otterlee, Siemens Energy

Patent Information 4.0: The Future of the Information Professional
Vasheharan (Vashe) Kanesarajah, Director of Client Advocacy for Derwent

High Precision Search Techniques in STNext for Formulation Searches
Matthew J. McBride, CAS

Is it Prior Art? Establishing the Publicly Accessible Date
Heather Simmons, University of Georgia School of Law Library

Market Research Tools to Evaluate University IP
Steven Andrzejewski, Wisconsin Alumni Research Foundation (WARF)

2020 Vigilance: Understanding IP Originating from China
Jane List, Extract Information Ltd.

Searching for Changes in Technology and Patent Law
Ron Kaminecki

Workshop: There May be Trouble Ahead; Understanding IP Procedures, the Musical Way
Stephen Adams, Magister Ltd., UK

IPL de Connect – Provide Insight to Top Management
Sakae Nakamura and Yasushi Miyagi, Asahi Kasei Corp.

Moving Beyond White Space
Debra L. Banville, DuPont

Patent Statistics and Analysis for Competition Monitoring
Johannes Schaaf, EPO

Not Just Duplicates – Challenges in Identifying Non-patent Literature Articles Across Databases
John Willmore, BizInt Solutions

How to Identify Key Inventions and Industry Innovators
Skye McClain, Mc2 Research Group LLC

The Impact of Industrial Context on the Patenting Activity of Technology-based Small Businesses
Youngbok Ryu, New Mexico Tech

Patent Trends Disrupted – Increasing Confidence in your Patenting Trends Analysis and Visualizations
Yateen Pargaonkar and Edlyn Simmons

The New WIPO INSPIRE Platform
Mussadiq Hussain, WIPO

Framework of Technical Competencies for Search and Examination of Patents
Dr. Lutz Mailänder, PCT International Cooperation Division, WIPO

Workshop: From Patent Information to Patent Knowledge
Johannes Schaaf and Nigel Clarke, EPO

PATENTSCOPE, a Comprehensive Prior Art Search Tool
Iustin Diaconescu-WIPO

AI Implemented Inventions as Prior Art
Susanne Hantos, Davies Collison Cave Pty Ltd

Overview of AI Innovation in Academia: Recent Development and Collaborations Patterns
Lisha Li, Georgia Institute of Technology

Artificial Intelligence: You Complete Me
Doreen P. Alberts, Theravance Biopharma US, Inc.

Considerations for Utilizing Artificial Intelligence in Patent Searching
Barbara Miller, Amgen

Interactive Web Application for Depth and Breadth Analysis of Patents
Davit Khachatryan, Babson College

Ocean Tomo Gold Book: An AI Approach to Product Specific Patent Portfolio Optimization
James E. Malackowski, Ocean Tomo, LLC

Forensic Linguistics to Complement AI and Traditional Search Solutions
Peter Fischer, Elute Intelligence

AI and Machine Learning in Patent Search Systems: Friend or Foe?
Brad Buehler and Jonathan Skovholt, Ensemble IP

Evaluation & Best Practice of Semantic AI Based Prior Art Search Tools; Insights, Pitfalls and Tricks
Linus Wretblad, Uppdragshuset


Conference Abstracts and Biographies

Tuesday, October 13, 2020

European Patent Law Update for Patent Information Professionals

Noel Akers, European Patent Attorney, NJ Akers & Co.

Abstract

This talk will provide an update on recent developments in Europe, as they relate to users of patent information. The talk will include an update regarding the Unitary patent system, as well as the developments and potential impact of Brexit on European patenting systems.

Biography

Noël Akers is a Chartered Patent Attorney and European Patent Attorney. He is also a Registered Trade Mark Agent in the UK and admitted to practise before the European Intellectual Property Office. He graduated from the University of Nottingham with a degree in Chemical Engineering before qualifying in the patent and trade mark profession.

Noël has worked with a number of international corporations and law firms and spent a considerable length of time practising European patent law in the United States. Noël has developed a specialty in coordinating patent procurement and litigation in cases involving actions in the US and Europe. He has assisted clients with patent litigation in a range of countries in Europe and elsewhere, including India, Australia, Singapore, New Zealand and Malaysia. Noël has acted as an expert witness in patent litigation in India and Malaysia.

Noël has extensive experience in all aspects of the procurement, enforcement and exploitation of intellectual property relating to a wide range of industries, including the chemical and medical device sectors. He has published widely on intellectual property rights.

To Search or Not to Search? A More Interesting Question Following Halo

Tom Otterlee, Siemens Energy

Abstract

Prior to the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. an alleged infringer of a patent could avoid willful infringement, and the possibility of treble damages by simply showing a reasonable defense (non-infringement or invalidity) during a trial, or immediately prior to the trial. In Halo, the Supreme Court changed several aspects of the existing law including the time at which the alleged infringer should establish its non-infringement or invalidity position. This shift has potentially created an additional burden on entities that do periodic technology or competitor searches as well as patentability searches.

Biography

Thomas Otterlee is a Senior IP Counsel at Siemens Energy, Inc. located in Orlando, FL. Prior to joining Siemens, Mr. Otterlee practiced for seventeen years with Michael Best & Friedrich in Milwaukee, WI. Mr. Otterlee's practice includes all aspects of patent preparation and prosecution as well as patentability, clearance, and invalidity analysis. In addition, Mr. Otterlee's practice includes periodic patent searching and monitoring of clients and their competitors as well as the preparation of legal opinions.

Patent Information 4.0: The Future of the Information Professional

Vasheharan (Vashe) Kanesarajah, Director of Client Advocacy for Derwent

Abstract

As the global innovation landscape changes at a marked rate, multiple forces are reshaping the consumption and use cases for patent information. New technologies, changing business needs, and evolving talent markets continue to affect the nature and shape of patent data, along with its transformative value. A notable emerging factor is the increasing accessibility and self-service nature of patent research which is redefining the role of the Patent information professional.

This presentation discusses the risks and benefits of self-service patent research and evolving role of the Patent information professional. To ensure a well-rounded and collective perspective, information professionals, patent attorneys, and R&D professionals representing several IP-centric industries were interviewed. Specifically, the presentation will cover the following areas

  1. The growing importance of conducting patent search and analysis (hereafter patent research)
  2. The benefits and risks involved in self-service patent research amongst end-users
  3. How to overcome the challenges in working in the new ecosystem
  4. Focus areas to adapt and evolve the traditional model of the patent information department.
  5. The attributes of the modern information professional

Further, this presentation will also outline focus areas that should be considered to ensure that the value of patent research is embedded within the fabric of the organization.

Biography

Vasheharan (Vashe) Kanesarajah is Director of Client Advocacy for Derwent, based in London, UK. He is an experienced patent and technology analyst and has previously managed the Derwent European patent analytics practice and has been a principal consultant for Asia. He has worked globally with technology-focused corporations, governments and research institutions to deliver actionable intelligence to support R&D, IP and innovation strategies. His clients have included Fortune 500 board members, government agency heads, CTOs and General Counsels.

Vashe's responsibilities include providing expert insight and best practice knowledge on patent intelligence. He has represented Derwent in the IP, R&D and academic communities by performing various speaking engagements, including as a guest lecturer at universities across Europe and Asia.

Vashe has been with Derwent for 14 years. He holds a Bachelor of Mechanical Engineering (Hons) and a postgraduate degree in the Management of Intellectual Property from the University of London.

High Precision Search Techniques in STNext for Formulation Searches

Matthew J. McBride, CAS

Abstract

IP searching for formulations is challenging for patent analysts and IP searchers due to the time required to review the high number of documents and the risk of false positives. See how starting your formulations search with CAS FORMULATIONS in STNext can save you time and enable you to be efficient and precise in your novelty, patentability, infringement and FTO searches.

Biography

Matt McBride manages the Science IP team, as well as conducting research on behalf of Science IP clients. He became a member of the team in 2010, after spending six years as a Senior Application Specialist providing STN and SciFinder technical training to CAS customers. He holds a Master of Science degree in plant pathology from the University of Minnesota and a Bachelor of Science degree in molecular biology from Purdue University. In addition to his research experience at CAS, Matt was an information consultant with Thomson Reuters and a biologist at Rohm and Haas. Matt is a member of the Patent Information Users Group (PIUG) and the American Chemical Society (ACS).

Is it Prior Art? Establishing the Publicly Accessible Date

Heather Simmons, University of Georgia School of Law Library

Abstract

This presentation will explore the definition of prior art in U.S. law, and examine the use of non-patent literature to meet this requirement. One of the challenges in admitting prior art to a court is establishing the "publicly available" date. Introducing this information as evidence can be harder than it sounds. Libraries and librarians often play an important role in determining when a particular publication becomes accessible. The record keeping and standard operating procedures that are the hallmarks of any library can win or lose the case.

Biography

Heather J.E. Simmons joined the University of Georgia School of Law Alexander Campbell King Law Library in 2019 as its Associate Director for Instruction and Access Services. She previously worked at the University of Illinois College of Law's Albert E. Jenner, Jr. Memorial Law Library, as the Law and Business Reference Librarian. She spent 17 years at General Motors, where she was Senior Law Librarian, and a Group Leader in the Research & Development Library. She also served as the Assistant Director of the Arthur Neff Law Library at Wayne State University. Simmons earned her bachelor's degree from the University of Michigan, her Juris Doctor from Wayne State University and her Master of Arts in Library Science from the University of Michigan. She is a member of the State Bar of Michigan, and is active in PIUG and the American Association of Law Libraries.

Market Research Tools to Evaluate University IP

Steven Andrzejewski, Wisconsin Alumni Research Foundation (WARF)

Abstract

Universities, government labs, and other research institutes are in the difficult position of evaluating early-stage technologies in order to allocate resources and direct commercialization efforts. Most of these institutions do not develop or release products themselves, but are limited to out-licensing, startup formation, and patent enforcement for commercialization. Invention disclosures may arrive from faculty, researchers, and students working in all fields and at all levels of sophistication. In this paper, I will classify and discuss different market research tools available to information professionals when evaluating early-stage technologies. I will draw upon my experience with both stand-alone tools and add-ons to major patent tools.

Biography

Steven Andrzejewski is a Venture Analyst at the Wisconsin Alumni Research Foundation (WARF), the technology transfer organization for the University of Wisconsin-Madison. He has worked for the organization for 5 years and works mostly in strategic initiatives and evaluation of early-stage technologies.

Steven holds a Bachelor of Science in Chemical Engineering from University of Wisconsin-Madison, a minor in Computer Science from The University of Wisconsin-Milwaukee., and a J.D. from the University of Wisconsin-Madison.

2020 Vigilance: Understanding IP Originating from China

Jane List, Extract Information Ltd.

Abstract

In 2018 1.5 million patent applications were published in Chinese as CN national or WO international patents. This talk will review the options for searching Chinese patents applications, and how to monitor those of potential interest. China applicants lead by quantity in fields such as electrical, energy, digital communications and ICT. Should a search include or exclude China language patents? Can a prior art, patentability, freedom to operate, or patent landscape search be carried out without including Chinese patent literature? What are the risks? How best can we search and analyse Chinese documents - we will review options such as full Text, IPC, CPC, added-value abstracts, drawings, citations, search reports. . When we find relevant Chinese patents, what tools are available to determine scope of claims. Utility models should also be considered in some technical fields. What about validity? And working out who the applicant is using transliterations or normalised assignees. Beyond the applications the are now 2.4 million patents in force in China, the talk will finish with a review of sources for checking the legal status of Chinese patents and utility models.

Biography

Jane List founded Extract Information Limited in 2013 following a career in the information industry where she held product development roles at Lighthouse IP, ProQuest, and DataStar. She has also previously held IP and Information analyst roles at The Technology Partnership plc, Xaar plc and the European Molecular Biology Laboratory. Jane has provided training in the retrieval and analysis of scientific, technical, medical, commercial and patent information. Jane continues to provide training and meetings on IP and commercialisation matters through the Cambridge Information and IP Meeting, which she co-founded in 2015. She has expertise in providing IP and market assessments for companies seeking to commercialise early stage technologies. Jane is Editor in Chief of World Patent Information Journal since 2014, a Board member of CEPIUG and a member of the Royal Society of Chemistry. Jane has qualifications in Chemistry, Information Science, and IP Law.

Searching for Changes in Technology and Patent Law

Ron Kaminecki

Abstract

A conundrum involved with searching for prior art is that by definition, a novel invention has not been made public. So, if the invention is novel, then a patent search will not locate any public records. This is exacerbated by the paucity of search terms such as nomenclature, classification codes and even citations. Because a patent applicant can create new terminology, finding such terms can be problematic, and even class codes may well lag behind what was disclosed.

This is further complicated by changes in the law which make the fuzzy target of prior art also a moving one. This presentation will cover some of the problems brought by new technology and new court decisions and will suggest some strategies for identifying these changes in the art.

Biography

Ron Kaminecki got his start with information retrieval systems and technical databases at IIT Research Institute and has continued his work at different information-intensive companies including Lockheed Missiles and Space, Dialog, Knight Ridder Information, Thomson Reuters, Abbott Laboratories, ProQuest, Questel, and now Kaminecki IP LLC. He currently helps individual inventors and teaches intellectual property searching at the University of New Hampshire Law School and DePaul Law School, both online and in-person. He is a patent attorney with a BS in Chemistry, an MS in Computer Science and a JD with a Certificate in Patent Law and is a Qualified Patent Information Professional. He is an inventor, a co-author of a NISO standard on information search systems, is a Director-at-Large of PIUG, is involved with the ISBQPIP at several levels and has worked as an expert witness.

Workshop: There May be Trouble Ahead; Understanding IP Procedures, the Musical Way

Stephen Adams, Magister Ltd., UK

Biography

Stephen Adams is the managing director of Magister Ltd., a UK-based consultancy specialising in patents information. Mr. Adams is a Qualified Patent Information Professional (number 20190044100092) and holds a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London, as well as professional membership of the UK's Chartered Institute of Library and Information Professionals (CILIP). He has been the representative for UK user groups on the information sub-committee of the Standing Advisory Committee to the EPO (SACEPO/PDI) for many years, as well as contributing to the work of the Committee on WIPO Standards (CWS) on behalf of the PIUG. He is the author of two editions of "Information Sources in Patents", published by Walter de Gruyter KG. He received the IPI Award in 2012 for outstanding contribution to patent information.

Wednesday, October 14, 2020

IPL de Connect – Provide Insight to Top Management

Sakae Nakamura and Yasushi Miyagi, Asahi Kasei Corp.

Abstract

In Japan, IP landscape (IPL) activities have been in the IP industry for several years. IP landscape here is not only an overview of intellectual property information, but also a new concept activity that contributes strategic IP information to management.

Asahi Kasei (a chemical conglomerate with sales of approximately US $ 20 billion and operating profit of approximately US $ 1.8 billion), in 2018, the IP Strategic Planning Group, the organization established in the IP department that professionally carries out IPL. We are promoting IPL through three approaches: strengthening current business, creating new businesses, and determining M & A.

In this presentation, we will introduce our IPL initiatives and case examples.

In our IPL initiative, we will explain our IPL introducing activities that we approached the top management and explain our unique IPL flow between the business division and the IP department.

Furthermore, we will introduce the examples of analysis using IP information for our specific polymer business expansion.

Biographies

Sakae Nakamura, Asahi Kasei Corp., Senior General Manager of Corporate IP

Sakae joined Asahi Kasei Corporation in 1985. After working at the research laboratory, she was transferred to Intellectual Property Department in 1989. She held a post in Technical Information Search Division of the Asahi Kasei Group established in 1998 and was promoted to director for the division in 2006.

She was appointed as Principal Expert of Asahi Kasei Group in October 2017. She holds current position since October 2018. In 2016 she received Japan Patent Office Commissioner's award "Patent Information Human Resources Development Award" for her achievement in nurturing patent professionals and promoting patent information.

Yasushi Miyagi, Asahi Kasei Corp., Assistant Manager, IP Strategic Planning Group of Corporate IP

Yasushi is an intellectual property analyst certified by the Association of Intellectual Property Education in Japan. He engaged in strategic studies at a research division belonging to one of the biggest investment companies in Japan. Prior to that, he had worked as a patent attorney for 7 years at a law and patent firm, mainly dealing with patent applications by major German Companies including Bosch and Siemens. He joined Asahi Kasei in 2018 and has been engaged in research and analysis of technical information at the IP Strategic Planning Group

Moving Beyond White Space

Debra L. Banville, DuPont

Abstract

When discussing a patent landscape, have you ever been asked: "So, where is the white space? Where are the opportunities for us to innovate?". Identifying White Space Innovation is like asking someone to "tell me something I don't know." Tackling these questions requires a multifaceted approach that starts with the patent landscape but requires a way to explore and reveal new perspectives. This talk will guide you through a framework and examples of how you can move beyond white space questions to identify emerging trends and high-value opportunities.

Biography

Debra L. Banville is in DuPont's Science & Innovation group supporting multiple businesses as a technology consultant. More specifically, she has a keen interest in rapidly identifying and developing new business opportunities through the awareness of emerging technologies and market trends. Before her technology role at DuPont, Debra was a Principal Investigator at AstraZeneca Pharmaceuticals, where she led the NMR research laboratory in identifying and optimizing lead compounds using NMR. She also led several successful academic collaborations that included an MRI Stroke study with Duke University and research on Interleukin-5 (IL-5) with the University of Maryland at Baltimore. Eventually, Debra gravitated to the emerging area of text data mining to discover new opportunities. She edited a book on chemical information mining (CRC Press), has spoken at various conferences and has authored many peer-reviewed articles.

Debra has a Ph.D. in Chemistry, is certified as a Project Manager Professional (PMP) with a Green Belt in Lean Six Sigma (from DEMEP), and certified as a Competitive Intelligence Professional (CIP).

Patent Statistics and Analysis for Competition Monitoring

Johannes Schaaf, EPO

Abstract

The patent portfolio of the competition can be examined with the help of patent information as basis for strategic decisions in technology and product management. It will be explained how key patents can be examined in detail with a publicly available tool such as the new Espacenet and how the technological orientation and filing strategy of competitors can be analysed using filter functions. It will also be shown how more complex patent analyses can be carried out by other means, e.g. looking at the opposition rate and age distribution of the active patent portfolio and how global statistical analyses with automatic ranking of the most important actors or the most cited technologies can be carried out.

Biography

Johannes Schaaf holds an MBA and a master's degree in physics. He worked as an engineer and innovation consultant in the corporate technology unit at Siemens and led the community of practice innovation management. He was an examiner in the area of laser technology at the German Patent and Trade Mark Office. In 2005, he joined the European Patent Office in Vienna and now works in the directorate Patent Knowledge Promotion, PATLIB.

Not Just Duplicates – Challenges in Identifying Non-patent Literature Articles Across Databases

John Willmore, BizInt Solutions

Abstract

Non-patent literature can be a key component of patent searches and analyses. Just as with patents (as discussed in our presentation at the 2019 annual meeting), there are a variety of techniques and challenges involved in matching citations to literature from different sources.

When analyzing literature results combining data from searches on multiple systems (e.g. STN, Innovation, Dialog, EMBASE, etc.), how do you know if you've retrieved the same original article multiple times? And having identified "duplicates", do you just keep one record, and if so how do you decide which to keep? Or are there cases in which it is better to mix content from multiple citations into a single entity?

Biography

John Willmore is co-founder of BizInt Solutions Inc., and manages the development of all aspects of the BizInt Smart Charts product line. John has a B.S. in Electrical Engineering from Rice University and over 20 years of experience developing software to work with patent and IP sequence data. Outside of work, John plays ice hockey and enjoys training and competing with his longhaired dachshunds.

How to Identify Key Inventions and Industry Innovators

Skye McClain, Mc2 Research Group LLC

Abstract

Would you like to know which companies are truly innovating? The right type of search and analysis can make this very clear. In each area of technology, innovators are those conducting cutting-edge research and developing potentially game-changing new technologies. The followers are forced to react to these new technologies and are working to just keep up with the leaders. The question is… how do you differentiate the two? One method is to use various metrics to analyze a set of patents. Using the right metrics to rank a large set of patents from a patent landscape analysis can identify those key inventions and innovative companies you need to be aware of. This type of analysis and corresponding visualizations can help identify the following:

  • "innovators" and "followers" among your competitors
  • high value patents which may be available to license
  • awareness of potentially disruptive technologies (giving you the ability to modify your R&D efforts)
  • start-ups or smaller research groups with which to partner or acquire
  • experts at the cutting-edge of new technologies

This presentation will provide examples of some of the most useful metrics and visualizations for conducting these analyses.

Biography

Skye McClain, Ph.D., is the founder & principal of Mc2 Research Group, a patent and technical literature research company. As graduate of the U.S. Coast Guard Academy, and after a career as an officer in the USCG, he left active service to obtain his doctorate in chemistry from the University of Connecticut. After nearly 25 years as a scientific research analyst and conducting patent and technical research for companies across the globe, he established Mc2 Research Group. In addition to managing his business and working closely with his clients, Skye also enjoys inspiring and encouraging students as an adjunct professor of chemistry at Goodwin University.

The Impact of Industrial Context on the Patenting Activity of Technology-based Small Businesses

Youngbok Ryu, New Mexico Tech

Abstract

This study seeks to explore how industrial context influences the patenting activity of technology-based small businesses. To figure out the industrial context, I employ the concept of technology life cycle or S-curve where technology evolves from emerging to growth to maturity to saturation. To draw the S-curves of each industry, I fit logistic functions to the data of cumulative patent applications across patent classes. From the identified logistic functions, I determine three parameters: inflection point, maximum growth rate, and saturation level. To identify technology-based small businesses, I use the awardees of the U.S. Department of Defense (DoD) Small Business Innovation Research (SBIR) program. With the funding from the DoD, the SBIR awardees explore the technical feasibility of their ideas, conduct R&D, and file patents to protect their R&D outcomes. I collect the demographic data of SBIR awardees from the SBIR awards database and keep track of their patents from the USPTO patent database. Using the company-level and industry-level data, I apply hierarchical linear modeling to examine how company demographics and industry characteristics affect the patenting activities of companies.

Biography

Dr. Ryu joined the management faculty at New Mexico Tech in 2017. While at NMT, he is teaching economics, management, and policy courses. He is also taking an active role in promoting entrepreneurship on campus by championing the state-wide Studio G program and advising the student entrepreneurship club. Before coming to NMT, he was an assistant policy researcher at RAND Corporation and a Christine Mirzayan Science and Technology Policy Fellow at the National Academies of Sciences, Engineering, and Medicine. He was also the winner of the Brian Stockdale Memorial Award in 2017.

Education: Ph.D. in Policy Analysis (Technology and Innovation Policy) from Pardee RAND Graduate School; M.S. in Management from Georgia Institute of Technology; M.S. in Science, Technology, and Environmental Policy from the University of Minnesota; and B.S. in Civil and Environmental Engineering from Korea University.

Research Interests: Technology Transition/Transfer/Commercialization; Small Business Innovation Research (SBIR); Emerging Technologies; Innovation Ecosystem; Regional Economic Development; and Innovative Use of Patent Data

Patent Trends Disrupted – Increasing Confidence in your Patenting Trends Analysis and Visualizations

Yateen Pargaonkar and Edlyn Simmons



Abstract

It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness, it was the epoch of belief, it was the epoch of incredulity, it was the season of Light, it was the season of Darkness, it was the spring of hope, it was the winter of despair …Charles Dickens (1859)

It is the best of times for patenting trends search, analysis, and visualizations. Newer patent analytics tools that stress "instant" intelligence and insights dominate discussions at global patent meetings.

It is the worse of times for patenting trends search, analysis, and visualizations. Democratization of patent search and analysis tools (without training of the constraints and limitations of the tools) has led to a false notion that patent landscape analysis can be done "instantly" by any end user without any need for in-depth or expert analysis. End users or inexperienced patent searchers generally do not have a grasp of the intricacies of patent data, source documentation, or advanced patent analytics tools, which may lead to misleading conclusions and flawed decision-making.

Which is the true scenario? It is the best of times and the worst of times depending on process, tools, and people generating the patent analysis. With malice towards none, the presentation evaluates and takes an uncompromising look at the common "instant" patenting trend charts depicted in the industry, as well as the mistakes during interpretation. Coming after more than 20 years, it is a reiteration of a prophetic early warning from Edlyn Simmons and Nancy Lambert to take caution comparing "Watermelons" and a "Bunch of Grapes" when it comes to benchmarking patents and plotting patenting trends.

Biographies

Yateen Pargaonkar is the CEO and President of Riser IP LLC, a specialized patent search, analysis, and IP competitive intelligence service provider. Yateen's experience includes roles of increasing responsibility in the Energy sector (Chevron), Consumer Goods (P&G) as well as legal supporting Biotechnology, and Pharmaceuticals (top-tier IP law firms). He has taught a course at UCSD on Patent Searching & Internet Research. Yateen has degrees in chemistry, biochemistry, and molecular biology, as well as three years of research experience at Columbia University. He is a registered U.S. Patent Agent, a reviewer for World Patent Information, and an active member of PIUG.

Edlyn S. Simmons founded Simmons Patent Information Service, LLC, in 2009 after retiring from her positions as Principal Information Scientist in The Procter & Gamble Co.'s Infolytics group and Manager of the Patent Information Group in the Patent Department of Hoechst Marion Roussel, Inc. She received BS and MS degrees in chemistry from the University of Cincinnati and is a registered U. S. patent agent.

Ms. Simmons is a founding member of PIUG and served as Chair in 1990-1992 and Director-at-Large in 2000-2004 and 2005-10. She has been a member of the American Chemical Society Joint Board-Council Committee on Patents and Related Matters, in 2001-2011 and 2013-present. She received the International Patent Information Award in 2005.

The New WIPO INSPIRE Platform

Mussadiq Hussain, WIPO

Abstract

WIPO INSPIRE (Index of Specialized Patent Information Reports) is an online platform to assist patent information users and professionals, including national patent offices and Technology and Innovation Support Centers (TISCs), by providing reports and analysis of patent search databases, tools and systems from around the world. WIPO collaborates with patent information service providers and user groups to publish reports on free-of-charge and commercial patent and non-patent databases reviewing their features, functionalities and coverage in a structured format.

The WIPO INSPIRE platform has been designed to include up-to-date, user-friendly and interactive features and functionalities, such as comparison of up to four databases or search systems at a glance and an interactive world map allowing the user to click and see the data coverage of a specific jurisdiction. Further development is envisaged in the future to include more resources and services, as well as integrating other relevant tools and platforms, including WIPO's eTISC knowledge and experience sharing platform, the Patent Register Portal and a new technology transfer forum.

Biography

Mr. Mussadiq Hussain joined World Intellectual Property Organization (WIPO) in 1997 and has been engaged in its different areas of activities and services since then. Currently, he is positioned as Program Officer in the Innovation and Knowledge Infrastructure Department of WIPO. He is responsible for developing and managing platforms, systems and tools (i.e. WIPO INSPIRE, eTISC, Patent Register Portal etc.) to support patent information users and professionals, including national patent offices and Technology and Innovation Support Centers (TISCs) in the WIPO member states. He coordinates with patent information service providers and user groups to publish reports on free-of-charge and commercial patent and non-patent databases. Moreover, he manages the development and maintenance of the TISC project support systems and platforms and coordinates with Research4Life partners on behalf of WIPO's Access to Research for Development and Innovation (ARDI) program.

Framework of Technical Competencies for Search and Examination of Patents

Dr. Lutz Mailänder, PCT International Cooperation Division, WIPO

Abstract

A comprehensive framework of technical competencies for substantive patent examination is developed as part of a pilot project of WIPO's ASPAC Bureau for improving management and coordination of patent examiner training. It currently comprises some 450 entries which are organized in a hierarchical manner in 13 different fields of learning (Patent Information; Patent Classification; Generic Substantive Examination; Technology Specific Substantive Examination; Generic Search Methodologies; Technology Specific Search Methodologies; Databases and Tools for Prior Art Search; ..). On the lowest hierarchical level, the CF includes specific skills and knowledge elements which are defined in a manner to facilitate assessments or describe learning outcomes of training activities. As far as possible, competencies have been linked to official guidelines, such as the Guide to the IPC or the PCT International Search and Preliminary Examination Guidelines. Many competencies are applicable as well to patent information professionals. The presentation will address the philosophy behind the framework and its potential uses.

Biography

Mr. Lutz Mailänder, national of Germany, is the Head of the Cooperation on Examination and Training Section in the PCT International Cooperation Division of WIPO. He manages WIPO's International Cooperation for Examination (ICE) service that provides support for substantive patent examination to patent offices in developing countries, and coordinates WIPO activities related to the training of substantive patent examiners.

He was previously the Head of the Patent Information Section, where he coordinated WIPO's patent information services for developing countries and WIPO activities related to patent analytics and legal status; prior to this he was the Head of the International Patent Classification (IPC) Section, where he managed the revision of the IPC. Before joining WIPO, he worked for almost ten years as a patent examiner at the German Intellectual Property Office (DPMA) in the field of physics, 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 Organizations of the University of Geneva (IOMBA).

Workshop: From Patent Information to Patent Knowledge

Johannes Schaaf and Nigel Clarke, EPO

Abstract

Following from our plenary presentation, participants in this hands-on workshop will use EPO products such as GPI and PATSTAT Online to examine the patent portfolio of their competitors. Participants will be able to identify the most important actors, their filing strategy and technology orientation.

Taking it to the next level, participants will be able to perform more complex analyses using EPO data sets and methodology in order to obtain deeper insights such as spotting future and emerging technologies.

Participants should bring their own laptops. EPO will provide a free trial license for EPO products.

Thursday, October 15, 2020

PATENTSCOPE, a Comprehensive Prior Art Search Tool

Iustin Diaconescu-WIPO

Abstract

PATENTSCOPE has become a comprehensive patent search tool used by the general public, patent search professionals, and IP offices. The system, which is the WIPO's authoritative platform of information on published PCT applications, features a couple of unique functionalities, such as CLIR, WIPO translate, and Chemical Search. Recently, a modern UI, the PCT simple patent families, the CPC search capabilities, truly global coverage, and the new Markush search made it an essential asset in the prior art search domain.

The presentation will focus on the new features: the UI interface, the patent families, the CPC searches, and the Markush search implementation.

Biography

Iustin Diaconescu is a software engineer working for WIPO in Geneva as the head of the Patent Database Section. He has worked with document management and retrieval systems since 2000. He architectured and engineered complex web systems for several international organizations as WTO and WHO. 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.

Adrian holds a bachelor's degree in mathematics, and he received his master's degree in computer science from the Ecole Polytechnique Federale de Lausanne, Switzerland.

AI Implemented Inventions as Prior Art

Susanne Hantos, Davies Collison Cave Pty Ltd

Abstract

A key legal requirement in patent law is that an invention must be disclosed in a patent application in enough detail to enable a hypothetical person skilled in the art to understand and carry out the invention. With inventions that rely on AI, the specific details of how exactly the invention arose may not be available for a variety of reasons. This poses a challenge to both the patent drafter and the prior art searcher in all fields of technology where AI is applied. How does one describe or search for technical details that are difficult to explain or that are simply unavailable? Add to this the ever-expanding public domain repositories of computer generated data and the search for prior art indeed becomes an arduous task. In this presentation, I will explore these issues and suggest some ways in which to cope with the inevitable concerns.

Biography

Susanne Hantos is a Senior Associate and the Manager of the Patent Intelligence Services division of Davies Collison Cave Pty Ltd, an Asia-Pacific intellectual property law firm. Susanne is a registered Australian and New Zealand patent attorney and a Canadian patent agent who specializes in searching and analysing patent and other technical information in order to provide intellectual property advice. Susanne served on the PIUG Board of Directors from 2012 to 2014 as the PIUG Chair. In 2014, she was appointed as the Co-Editor-in-Chief of World Patent Information and since 2016 she has been a member of the editorial advisory board for the journal. Susanne also volunteered as a co-ordinator of the international certification initiative for Qualified Patent Information Professionals (QPIP). In 2018, she became the Vice Chair of the Supervisory Council of the International Standards Board for QPIPs.

Overview of AI Innovation in Academia: Recent Development and Collaborations Patterns

Lisha Li, Georgia Institute of Technology

Abstract

Innovations in artificial intelligence (AI) showed a notable growth within the last few years. Research universities have played an important role in breakthrough research in AI and related fields. This presentation will explore innovations by top research universities, focusing on AI and key fields. Discussions will be on types of innovation and their development in recent years based on patent statistics, extracted patent data and published information. Patenting trends and collaboration patterns among universities and with industries will also be identified based on results. Patent search and analysis tools used include Derwent Innovation Index, InnovationQ Plus and others. Methods and strategies used in patent searching and analysis will be summarized. The presentation will also highlight AI innovation examples from academia and efforts in technology transfer and commercialization when applicable.

Biography

Lisha Li works as a Patents Coordinator, Patent and Trademark Resource Center (PTRC) Representative at Georgia Tech. In this role, Lisha provides patent information consultation and training to inventors and entrepreneurs. She also teaches intellectual property introductory courses and patent search classes. Collaborating with the USPTO and other stakeholders, she organizes IP training programs for the university and the community. Her former experience includes working as a PTRC Fellow at the USPTO, and as a Science Librarian at a DOE research lab. She holds a BS in electronic engineering and a MA in library and information science.

Artificial Intelligence: You Complete Me

Doreen P. Alberts, Theravance Biopharma US, Inc.

Abstract

Despite the increased investment in drug development, the number of drug approvals remains flat. The availability of machine-readable data, improved computer capabilities and sophisticated algorithms make artificial intelligence (AI) an attractive tool to speed up the drug development process. A number of collaborations between pharmaceutical companies and AI vendors have shown the power of AI in generating unbiased insights which might help improve the quality of our research projects, shorten drug development times and increase the probability of drug approvals.

As the amount of published literature increases, AI technologies can transform our role as information professionals. We are uniquely positioned to be liaisons between our researchers and data scientists. We can help translate scientific questions to enable data scientists to build mathematical models that can analyze huge amounts of information in a short time. AI is not here to eliminate jobs. Instead, we need to be proactive in identifying how we can optimize AI for our benefit and leverage these technologies to help us stay relevant and be better as information professionals.

Biography

Doreen Alberts is Director of Product Strategy and Commercial Planning Department at Theravance Biopharma US, Inc. (TBPH). TBPH is a pharmaceutical company focused in the areas of inflammation and immunology, with a pipeline of internally discovered programs targeted to address significant patient needs. Doreen is responsible for managing the following functions at TBPH: Patent and Literature searching, Library Services, Document Delivery, Competitive Intelligence, Medical Information and End-user education and training.

Doreen has a BA in Chemistry, minor in Economics from the University of California, San Diego. Prior to working for Theravance, Doreen worked for SmithKline Beecham (now GSK) as a medicinal chemist for 11 years, and as an information analyst for 2 years. In September 2019, she earned her Artificial Intelligence Strategy Certificate from the University of California Berkeley School of Information.

Considerations for Utilizing Artificial Intelligence in Patent Searching

Barbara Miller, Amgen

Abstract

Artificial Intelligence (AI) is currently a hot topic in patent searching, resulting in high expectations and broad deliverables. Leaders in the business seem to think that entering a two to three word query into an AI search engine will result in the rapid identification of critical business opportunities while saving colleagues time and effort. In-house IT groups, having developed robust search engines for internal, structured data, might believe that they can easily repurpose these tools for the manipulation of vendor provided patent data in an API format. However, the reality is somewhat different. Patent data is largely unstructured, and the data that is structured is not the type of data that will result in the identification of "white space" within a particular patenting area. While the API format contains a wealth of data on the origin and patent office status of a particular document, it contains little information on the document's content. This talk will not focus on the technical aspects of creating an AI patent search engine, but rather will discuss the considerations involved in mediating between IT and the business in the evaluation of vendor tools and/or the creation of in-house AI systems.

Biography

Barbara Miller is currently a Patent and Scientific Analyst in the Amgen IP Law group. Prior to joining Amgen, she was a Patent and Scientific Analyst at the Novartis Institutes for Biomedical Research (NIBR) in Cambridge, MA, and an Information Scientist at Pfizer in Groton, CT. She has a PhD in Biological Sciences from Emory University in Atlanta, GA, a MS in Regulatory Affairs and Quality Assurance from Temple University, and a BS in Chemistry from Rhodes College in Memphis, TN. In her free time, she enjoys reading, traveling, and finding interesting and unusual restaurants and shops.

Interactive Web Application for Depth and Breadth Analysis of Patents

Davit Khachatryan, Babson College

Abstract

In this talk I demonstrate a novel, interactive web application ("app") that I have recently designed for technological depth and breadth analysis of patents. Technological breadth is used to measure the diversity of the overarching technological domains underlying the inventive claims of a patent, while depth measures the extent of utilization of technological sub-domains. Those measures have recently been proposed by the author (and colleagues) using various components of Cooperative Patent Classification (CPC). During the talk, I will first outline the measures of breadth and depth, and then proceed to the interactive web application. The primary stakeholders of the tool are entrepreneurs and inventors. Those stakeholders may use the interface during the ideation of their planned ventures to understand the competitive landscape in terms of the breadth and depth of their competitors' patents. During competitor analysis, an entrepreneur/inventor can map the competitors along the measures of depth and breadth. The web application allows not only a bird's eye view of the competitive landscape, but also a deeper dive into individual inventions patented by the competitors. The interface was designed using RShiny and is free of charge.

Biography

Dr. Davit Khachatryan is an applied statistician with research interests in analyzing patent data. Davit's current and former research has produced publications in academic, peer-reviewed journals such as Journal of the Royal Statistical Society (Series C), The American Statistician, IEEE Transactions on Engineering Management, Scientometrics, and Journal of Quality Technology. Prior to joining Babson College, Davit was a Senior Associate at the National Economics and Statistics practice of PricewaterhouseCoopers (PwC). In the latter role he consulted in the area of predictive modeling and advanced data analytics, helping clients from financial, healthcare, and government sectors with building automatic predictive models and enhancing business intelligence solutions. Davit has earned his B.S. in Applied Mathematics and Informatics from Yerevan State University, M.S. in Statistics and Ph.D. in Management Science from the University of Massachusetts, Amherst.

Ocean Tomo Gold Book: An AI Approach to Product Specific Patent Portfolio Optimization

James E. Malackowski, Ocean Tomo, LLC

Abstract

Ocean Tomo has created a simple framework to assist companies in focusing their patent estates on a product-by-product basis, recognizing that a core set of diversified patent assets is optimal.

The Ocean Tomo Gold Book™ (Gold Book™) was developed by Ocean Tomo to recognize the strength of a patent portfolio based on the number of patents covering key technologies. It allows for an assessment of patents to assist managers in optimizing their holdings. Using the Gold Book as a platform, a company can easily identify technologies requiring further protection as well as determine patents that can be sold or otherwise monetized without undue risk.

The Ocean Tomo Gold Book is an objective review of patent portfolio holdings by product by company. For each Portfolio / Product Match (PPM), a 6 X 6 grid is generated to assess patent coverage. The six rows on the grid reflect key technology areas for the product at issue. The technologies are selected from the 4th level main group of the CPC classification system. The top 6 (or 12) technologies are identified based on the volume of published applications and issued patents within a classification code in a particular product category.

Biography

James E. Malackowski is the Chairman and Chief Executive Officer of Ocean Tomo, LLC, the Intellectual Capital Merchant Banc™ firm providing industry leading financial products and services related to intellectual property including financial expert testimony, valuation, strategy consulting, patent analytics, investment management and transaction brokerage. Ocean Tomo assists clients - corporations, law firms, governments and institutional investors - in realizing Intellectual Capital Equity® value broadly defined. Subsidiaries of Ocean Tomo include Ocean Tomo Investments Group, LLC, a registered broker dealer, and Ocean Tomo International (HK) Ltd.

As an inventor, Mr. Malackowski has more than twenty issued U.S. patents. He is a frequent instructor for graduate studies on IP management and markets and a Summa Cum Laude graduate of the University of Notre Dame majoring in accountancy and philosophy. Mr. Malackowski is Certified/Accredited in Financial Forensics, Business Valuation and Blockchain Fundamentals. He is a Certified Licensing Professional and a Registered Certified Public Accountant in the State of Illinois.

Forensic Linguistics to Complement AI and Traditional Search Solutions

Peter Fischer, Elute Intelligence

Abstract

Finding without searching speeds up IP related search and analysis. We will describe how forensic linguistic principles allow the computer to read patents like a human - focused on the content. Beginning with an invention disclosure, a website, a patent or any problem description, the system can read and compare the source text linguistically with all patents in our dataset. This full comparison identifies and ranks all documents that match or overlap with the source and shows the most relevant ones, online and interactively.

Although designed to offer a full alternative, the output dataset provides a highly focused training set for Machine learning systems, offering a much better signal to noise ratio. And by providing a list of matching terms it supports using some of those terms in traditional search using databases, NPL collections and full Web browsers.

Biography

Peter Fischer is director of Elute Intelligence, a company that is developing novel software tools based on computational forensic linguistics, which compares and analyses documents to identify similarities between them by mimicking the way people read. Peter has more than 20 years' experience in knowledge-intensive software solutions and since the early 2000s, he worked in different roles in the IP industry. Peter studied Business Informatics at Munich University of Applied Sciences.

Co-author David Woolls is the founder of CFL Software, now Elute Intelligence. He is the author of the plagiarism detection program CopyCatch Investigator, widely used in education since the late 1990s. In parallel he has overseen the development of bespoke linguistically based solutions for government departments, professional bodies and the commercial sector, as well as in the field of patent search and comparison.

AI and Machine Learning in Patent Search Systems: Friend or Foe?

Brad Buehler and Jonathan Skovholt, Ensemble IP

Abstract

The use of Artificial Intelligence (AI) and Machine Learning (ML) tools has become an important consideration in the selection and use of patent search systems. It can be difficult to determine how and when these tools are used, what specifically they are doing, and if they are simply using semantic or other algorithms or true Artificial Intelligence and/or Machine Learning. The knowledge of how a search system delivers results is important to the searcher because different techniques are necessary based upon the algorithms and methodologies the software provides. With appropriate knowledge, these tools can make the searcher more efficient and effective; likewise, a reliance on these tools without an understanding of how they work can lead to missed art, poor results and loss of time. We will investigate how search systems are incorporating artificial intelligence (AI) and machine learning (ML) tools into their systems. We will discuss how to better distinguish if machine learning is being used in the search system or the database and provide tips and techniques on making effectiveness of these tools using real world conditions.

Biographies

Brad Buehler is the Chief Operating Officer and a founding shareholder of Ensemble IP. Prior to starting Ensemble IP, he was Managing Director of the global Patent Search and Innovation Intelligence Unit at CPA Global. He started his Intellectual Property career with Landon IP in 1999, ultimately serving as the President of the company until its acquisition by CPA Global in 2014.

Brad holds a BS in Biology from Mount St. Mary's University, an MBA from University of Maryland University College, and is a Registered Patent Agent.

Jonathan Skovholt is the Head of Learning & Development. Prior to joining Ensemble IP, he managed, designed, and delivered training for Landon IP and CPA Global where he taught analysts the finer points of searching, examining, and classifying. He is a faculty member at the NIH Foundation for Advanced Education in the Sciences and former faculty member of Patent Resources Group (PRG). Jonathan has taught individuals on the art of prior art searching to audiences on four continents. He is also a former patent examiner.

Jonathan has a BA in Physics from Gustavus Adolphus College, a MS in Physics from the University of Delaware, and a graduate certificate in Instructional Systems Development from the University of Maryland, Baltimore County.

Evaluation & Best Practice of Semantic AI Based Prior Art Search Tools; Insights, Pitfalls and Tricks

Linus Wretblad, Uppdragshuset

Abstract

The semantic AI-text-based search methodologies adds a new option to the searcher's toolbox for helping to explore the prior art. However, opening up the nice wrapping of promises and having this new AI tool at my hands, what do I do then? What is the difference to a regular Boolean search? Seeming, we don't have much of instruction manuals teaching us how to use it efficiently.

This presentation will take a glimpse under the hood and look into best practices. It will include a review of performance statistics, quality measurements and, last but not least, usage challenges. Finally, some personal thoughts on the future; what to expect next in the field of information retrieval and how the searcher's role might evolve onwards.

Biography

Linus Wretblad has 20 years of experience supporting IPR and innovation processes, starting as an examiner at the Swedish Patent office, now focusing on prior art searches methodologies and supportive tools. He has a Master of Science in Physics & Electronics and a French DEA degree in microelectronics, and additional MBA studies on Innovation and Entrepreneurship. He was the president of the Confederacy of European Patent Information User Groups (CEPIUG) 2015-2017 and currently one of the board members of the ISBQPIP for certification of Patent Information Professionals. Linus is the co-founder of Uppdragshuset, providing high-end patent information search services. He is recently involved in a EUROSTAR project with the Technical University of Vienna on AI supported information retrieval, resulting in IPscreener offering a platform for semantic AI text based screening of patent prior art.

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