PIUG 2006 Northeast Conference
12:00 Noon -1:30 PM Sponsor TBA
Speaker: Henry H. Murray, III, ExxonMobil Research & Engineering Co.
Title: File Wrappers - A Patent Searcher's Perspective
Although file wrappers have long been considered the province of lawyers and paralegals, their timely publication and accessibility make them a source of prior art and competitive intelligence with which the patent searcher should be acquainted. The topic will be presented from a patent searcher's perspective beginning with the anatomy of US and EP file wrappers. This will be followed by a discussion of when, during the course of the patent process, a searcher can make the most use of these documents. Examples will be given to illustrate the principles described.
Hal Murray was formally trained as a synthetic inorganic chemist then broadened his background with postdoctoral studies at the University of Bayreuth, Germany, and Texas A&M University. After a year at Engelhard, Hal joined EMRE (then Exxon Research and Engineering Co.) in 1989 as a researcher. In 1996 Hal joined the Information Research and Analysis (IR&A) group as a technical searcher. Hal is a member of the EI EnCompass vocabulary task force and Encompass Advisory Board. In addition to patent searching, Hal’s other professional interests include technical disclosures and competitive intelligence.
Contact Details: Henry H. Murray, III, Ph.D.
Research Associate, IR&A
ExxonMobil Research & Engineering Co.
1545 US Highway 22
Annandale, NJ 08801 USA
Tel: +1 908 730 2714
Fax: +1 262 313 5686
Speaker: Jim Brown, IFI Patent Intelligence
Title: What Can Happen to a Patent After It Grants?
Possible post-issuance actions that affect patent term, validity, and ownership will be discussed. Actions that affect patent term to be covered in this talk include expiration due to non-payment of maintenance fees, reinstatement of expired patents, patent extensions, and disclaimers. Possible actions that affect validity to be covered include patent reexaminations, adverse decisions in interference actions. Reassignment information will also be demonstrated to illustrate changes in patent ownership.
Jim Brown has been working with patent information at IFI Patent Intelligence for over 20 years. He presently holds the title of Customer Services Manager. His duties at IFI cover all aspects of customer service, including conducting in-depth training of IFI’s databases and related products, authoring database manuals, presentations, and promotional materials, and instructing new IFI employees in the chemical indexing system. Jim graduated from the University of Delaware with a bachelor’s degree in Chemistry in 1982.
Contact Details: Jim Brown
Customer Services Manager
IFI Patent Intelligence
3202 Kirkwood Highway, Suite 203
Wilmington, DE 19808 USA
Tel: 800 331 4955 (US/CA only) or +1 302 633 7201
Fax: +1 302 998 0733
Product Review: Thomson Scientific
Donald Walter, Ph.D.
Manager, Customer Training, Pharma-Chem
1725 Duke Street, Suite 250
Alexandria VA 22314 USA
Tel: +1 703 706 4220, ext. 4820
Fax: +1 703 519 5838
Speaker: Ron Kaminecki, Director, Dialog Intellectual Property Market Segment, Thomson Scientific
Title: In Search of the Always Elusive Patent Assignee
Chasing down the name of the owner of the rights of a patent can be challenging, in light of the fact that not only are names of companies changing, but there are many patent publications in which the assignees are not even listed.
This presentation will cover the various techniques that can be used to sleuth the actual or probable assignees of patent documents, including various patent assignee codes, “statistical” assignees, the use of alternate fields to find missing data, and the use of multiple sources to locate the proper data. The approach will cover the general manner to find such information and will work for any vendor system.
Ron Kaminecki rejoined Dialog in 1999 after almost three years at a major pharmaceutical company. Prior to this, Ron held various jobs at Dialog for over nineteen years, including Regional Manager and Senior Staff Advisor. He got his start in searching technical and patent information via manual, online and batch systems at the Illinois Institute of Technology Research Institute as an Associate Information Specialist. Ron has a BS in Chemistry; an MS in Computer Science and Information Systems; and a JD with a Certificate in Patent Law.
Ron has written over thirty articles, presentations and papers on various aspects of online searching and information retrieval since 1975. He has worked with searchers in the Fortune 500 and in major law firms and patent offices around the world. He has also worked as an expert witness in patent cases. Ron is also a U.S. patent attorney, and he has worked as an expert witness in patent cases.
Contact Details: Ron Kaminecki
Director, Intellectual Property Market
One North Dearborn Street
Chicago, IL 60602 USA
Tel: +1 312 469 1707 (voicemail)
Fax: +1 312 469 1720
Speaker: James Ryley, President, FreePatentsOnline.com
Title: A Better Patent Search Engine: Latent Semantic Analysis for Patent Searching
Traditional search engines require the searcher to enter, with minor exceptions like word stemming and wildcard characters, the exact words present in the documents they wish to find. Consequently, unless the searcher can perfectly anticipate the language used by the author, documents will be missed. One solution to this problem is Latent Semantic Analysis (LSA). LSA uses sophisticated statistics to associate keywords with concepts. In essence, a search engine using LSA “understands” the concepts behind a search, rather than only the words. The result is a search engine that can find relevant documents even if those documents do not have a single word in common with the search terms entered. Consequently, using LSA, guessing at the terminology which might have been used by authors becomes less of an issue, and retrieval of relevant documents is enhanced. Search engine companies like Google use variations on LSA to obtain greater search accuracy, but a variety of issues have prevented widespread adoption of these techniques in the patent searching realm. It is possible to overcome these hurdles and create a better patent search engine than those currently in existence.
James Ryley is the President of FreePatentsOnline.com, a patent data and analytics firm. James was responsible for the original design and programming of FreePatentsOnline.com and now directs their development and analytics teams.
Previously with Patent Complete, LLC, a patent searching firm, James holds a BS is Cell Biology and Genetics, and a Ph.D. in Molecular Biology and has extensive patent searching, programming and data analysis experience.
Contact Details: James Ryley, Ph.D.
8605 Chapel View Drive
Ellicott City, MD 21043
Tel: +1 410-977-5716
Speaker: Yateen Pargaonkar, Procter & Gamble
Title: Best Practices for the Process of Cost Effective Patent Searching, Analysis & Reporting
The main concepts in this presentation include:
The process of a cost effective patent search
Awareness of hidden costs of fulfilling a search request
Selection of the most cost effective database(s) and building effective search strategies
Specific tips for cost effective post-processing of search results
Information Scientist at P&G
USPTO Registered Patent Agent
Associate Law Librarian at Morrison & Forester in San Diego
Scientific Advisor at various Intellectual Property law firms in the New York area.
Lecturer at the University of California at San Diego (UCSD) on Patent Searching
M.S in Biochemistry & Molecular Biology from University of Miami, FL
Contact Details: Yateen Pargaonkar
Procter & Gamble
Mason Business Center
8700 Mason-Montgomery Rd
Mason, Ohio 45040 USA
Tel: +1 513 622 2861
Speaker: Kerry G. Stanley, Senior Searcher, Science IP / Chemical Abstracts Service
Title: STN Online Search Tricks – or - Things We Have Forgotten
This session will explore several tips/tricks that may be used to save time in searching or in the processing of search results on STN. For example is there an easy way to remove records we have previously retrieved and reviewed but no longer have saved on STN? Also, simple search strategy editing techniques will be demonstrated and approaches for presenting patent publication data in reports will be reviewed.
Kerry Stanley is a Senior Searcher with Science IP, the search service of Chemical Abstracts Service. Kerry provides search services supporting patentability, FTO and validity opinions for clients in both the legal and corporate areas. In his previous position at CAS Kerry was responsible for developing training materials supporting online searching on STN, with a focus on patent literature retrieval, and conducted numerous workshops and presentations. Kerry joined CAS in 1994.
Prior to joining CAS, Kerry worked in the pharmaceutical industry for 22 years, including 11 years of laboratory research before making the transition to information sciences. Kerry spent the majority of his corporate career with McNeil Pharmaceutical, Wyeth Ayerst Research, and, most recently, with Sterling Winthrop Pharmaceutical.
Contact Details: Kerry G. Stanley
Science IP/Chemical Abstracts Service
Tel: +1 610-584-2875
Speaker: Blaise Mouttet, Patent Analyst, Landon IP, Inc.
Title: Patents for Patents
Due to rapid increases in patent filings and a limitation in resources for managing and searching patent data, several companies and individuals have taken it upon themselves to find innovative solutions to patent data management. These solutions have in many cases served as a basis for patents themselves. A recent study by patent analysts at Landon IP has analyzed this set of patents for patents and have identified a total of 80 US patents and 290 US pre-patent publications (with duplicates of patented documents removed) either directly claiming inventions pertinent to patent information management or solving a problem specifically related to patent information management. Analysis of this data elucidates emergent trends in patent research and provides some insight into how patent analysis is evolving.
Blaise Mouttet, B.S. in Electrical Engineering, New York Institute of Technology, New York, NY. Prior to joining Landon IP, Mr. Mouttet worked for five years as a Patent Examiner at the U.S. Patent and Trademark Office in the field of digital printing devices (primarily inkjet) and associated control systems. Mr. Mouttet assisted in the formation and population of US class 977 (Nanotechnology). In addition, he also worked closely with the US patent classification division in various technologies including microelectromechanical systems (MEMS), microfluidics, and scanning probe microscopy (STM, AFM). Mr. Mouttet is currently a graduate student at George Mason University studying nanoscience and nanotechnology and runs a blog (http://tinytechip.blogspot.com/) that monitors new patents in MEMS and nanotechnology.
Contact Details: Blaise Mouttet
Landon IP, Inc.
1700 Diagonal Rd., Suite 450
Alexandria, VA 22314 USA
Tel: +1 703 486 1150, ext 237
Fax: +1 703 892 4510
Product Review: Gene-IT
Kamalakar Gulukota, Ph.D., MBBS, MBA
Director, Product Management
1700 West Park Drive, Suite 260
Westborough, MA 01581 USA
Tel: +1 508 616 0100
Fax: +1 508 616 0110
Mon-Fri PM Support Line: +1 774 242 6192
Speaker: Jonathan W. Grant, FIZ-Karlsruhe, Inc.
Title: Searching for Nanotechnology on STN
"Nanotechnology" spans many disciplines - therefore searching on this topic is challenging as the information is spread in various different databases. This session will cover literature and patent files that cover “nano”-specific applications, as well as techniques that will allow the user to identify specific areas on the STN host. This will include keyword, descriptor, thesauri and technology code techniques for targeting defined “nano” features.
Jonathan Grant has over two decades of experience in the information business, including eight years as Customer Education Executive with Thomson Derwent, teaching and developing methods of searching international intellectual property. Prior experience includes positions at the USPTO as a Search Assistant covering Software, Communication and Testing and Measurement art units, as well a Senior Reference Analyst at the NASA Center for Aerospace Information. A graduate of Morgan State University with a BS degree in Physical Science, Jonathan brings a wealth of IP and related experience to FIZ Karlsruhe and this presentation.
Contact Details: Jonathan W. Grant
1210 Brixton Road
Baltimore, Maryland 21239 USA
Tel +1 410 828 1854
Fax +1 410 828 1854
Speaker: Michael Kayat, President, UTEK Intellectual Capital Consulting
Title: Guiding New Product Development with Patent Portfolio Analysis
Innovation is still a risky business. The chances of success in introducing a new product can be increased by following a proven phase-gate approach. Intellectual property (IP) management, particularly patent portfolio analysis, can play a major role in identifying product line "holes" where there may be missing technology features, weak market positions and potentially poor IP protection, during the new product planning phase. Portfolio analysis can also guide the product management phase and subsequent product maintenance phase.
The talk will describe the new product development phase gate process and how patent portfolio analysis can be utilized at each stage, including portfolio optimization.
Michael Kayat is president of UTEK Intellectual Capital Consulting, part of UTEK Corporation, a specialty finance company focused on technology transfer and intellectual property management. Mike's background includes executive level positions in the high technology industry and a wide ranging experience in many industries, from aerospace & defense, automotive, biotechnology through telecommunications. He holds a Ph.D. in Physics from the University of Leicester (UK) and MBA from Pepperdine University.
Contact Details: Michael Kayat, Ph.D.
UTEK Intellectual Capital Consulting, Inc.
2109 E. Palm Avenue
Tampa, FL 33605 USA
Telephone: +1 813 754 4330
Fax: +1 813 754 2383