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PIUG 2009 Northeast Conference

| Overview | Program | Presentations (PIUG members only) | Sponsors | Travel | Workshops |

Monday, October 12 to Thursday, October 15, 2009

Hyatt Regency New Brunswick
2 Albany Street
New Brunswick, New Jersey, USA 08901

Program – Tuesday, October 13, 2009

Conference presentations are available to PIUG members and conference attendees on the PIUG 2009 Northeast Conference Papers wiki page in the PIUG wiki members-only section. Conference attendees who haven't joined PIUG (see the PIUG membership page) and want access to these conference presentations should contact the PIUG Wikimaster by email.

7:30-8:15am Breakfast/Registration
Vendor Exhibits Open
   
Morning Presentations
 
8:15am - 8:30am

Welcome and Introductory Remarks
Adrienne Shanler, PIUG 2009 NE Conference Chair

Introduction and Housekeeping
Marty Goffman and Rick Williams, PIUG 2009 NE Program Co-chairs

8:30am - 9:15am

Update on Patent Rules, Patent Reform, and Case Law
Rouget (Ric) Henschel - Foley & Lardner LLC

9:15am - 10:00am

A Class on Classifications
Jim Brown - FIZ Karlsruhe

10:00am - 10:30am

Break
Exhibits Open

10:30am - 11:00am

Semantic Search - Opening the Black Box
Mike Hudelson - LexisNexis

11:00am - 11:30am

Chinese Utility Model Patenting - Trends Within a Lesser Known Prior Art Source
Bob Stembridge - Thomson Reuters

11:30am - noon

Patent Research in India: Challenges and Best Practices
Ashish Nawani - Evaluserve

Noon - 1:30pm

 
Lunch
 

1:30pm - 4:15pm

Round Table Discussion Topics

There will be ten concurrent round table discussions. Each session will last 45 minutes and each attendee will be able to participate in three discussion sessions.

Session one: 1:30pm - 2:15pm
Session two: 2:15pm - 3:00pm
Session three: 3:30pm - 4:15pm

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

  1. Outsourcing - pros, cons, costs, satisfaction, alternatives.
  2. Competitive Intelligence - Databases, strategies. NOT patent focused
  3. Visualization Tools - what do you use, do you like them, why? Alternatives.
  4. LSA - what's available, pros, cons, deficiencies.
  5. Citation Analysis - What is the best method for conducting, and interpreting? Which are more important Attorney cites, Examiner cites, or In-Text cites?
  6. Patent Abandonments - Do you monitor competitive patent abandonments? If so, what in signs do you gain?
  7. Efficiencies - What are best practices for improving the process efficiencies of searching, analyzing, and disseminating patent information?
  8. Professional Development
  9. Chemical Indexing Policies
  10. Preparing and presenting search report results - different client requirements, report templates, combining results from different databases, and duplicate removal across database hosts
4:15pm - 6:00pm

 
Exhibits Open and Networking Opportunities
 

6:30pm -

 
Networking dinner at a nearby restaurant for interested participants

Tom Wolff, on-site coordinator

Conference Abstracts and Biographies

Morning Presentations

"Update on Patent Rules, Patent Reform, and Case Law" top of page

Have we returned to the days when the PTO's mantra was "We are the patent office, not the rejection office"? Perhaps. New leadership is in place at the PTO: David Kappos as Director and 35-year PTO veteran Bob Stoll as Commissioner for Patents. The Federal Circuit has ruled that the PTO rule changes are for the most part within the PTO's authority -- will the PTO proceed or decline to finalize the rule changes? Patent reform is stalled for now. The courts have been active: Bilski, KSR, Ariad v. Eli Lilly, Prometheus v. Mayo. It remains true that there is never a dull moment in patent law!

Rouget (Ric) Henschell
Foley & Lardner LLC
Washington, D.C
rhenschel @ foley.com

Biography:

Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and is Vice-Chair of the Chemical & Pharmaceutical Practice Group. Ric's practice focuses on counseling clients in patent matters, representing clients before the U.S. Patent and Trademark Office (USPTO), litigation, and licensing. Specifically, his practice includes validity and freedom-to-operate opinions; due diligence investigations; negotiating and interpreting patent licenses; procuring domestic and foreign patents; post-grant reexamination and reissue proceedings; and interferences. His practice also includes litigation in federal and state trial courts and appeals before the USPTO Board of Patent Appeals and Interferences and the U.S. Court of Appeals for the Federal Circuit. His experience includes technologies such as pharmaceuticals, biotechnology, polymers, nanotechnology, cosmetics, and business methods. Ric served as clerk for Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.

"A Class on Classifications" top of page

Patent classifications are powerful tools in performing comprehensive and efficient searches. Patent documents are classified by up to four different major classification systems - the international classification, European classification, US classification and Japanese classification systems. This talk will give an overview of each of those four systems; how to find the proper classifications in each system, how they are applied, updated, etc. Also included in the talk will be some examples showing the benefits of the different systems.

Jim Brown
FIZ Karlsruhe
Jim.Brown @ fiz-k.com

Biography:

Jim Brown joined FIZ Karlsruhe, Inc. in 2008 after working at IFI Patent Intelligence for 23 years. At IFI, Jim started as a chemical patent indexer, and then moved on to chemical patent indexing training and chemical patent searching. He was also a special indexing project manager and technical representative. His current duties at FIZ Karlsruhe Inc. include customer trainings, authoring workshop manuals and presentations, and representing FIZ at conferences and exhibitions. Jim has a Bachelor's degree in Chemistry from the University of Delaware.

"Semantic Search - Opening the Black Box" top of page

This paper will discuss the definition of semantic search, the types of solutions that have been historically labeled semantic, and the modern state of the art today. Emphasis will be on dynamic vs. static, "black box" vs. open and indexed vs. non-indexed systems. This latest version of semantic search will be discussed and contrasted with prior semantic solutions.

Mike Hudelson
LexisNexis
Michael.Hudelson @ lexisnexis.com

Biography:

Michael Hudelson is a Director of Intellectual Property Solutions with LexisNexis. Michael holds Bachelor & Master's degrees from Indiana University and a J.D. degree from the University of California. He practiced law before joining LexisNexis in 1996, and has spoken at various conferences and authored articles about IP.

"Chinese Utility Model Patenting - Trends Within a Lesser Known Prior Art Source" top of page

Filings for invention patents in China have been growing at an average of over 24% per annum since the turn of the new millennium. Last year, just shy of 290,000 invention patent applications were published by the Chinese Patent Office. However, this is not the complete story.

An alternative protection is available to inventors through Chinese Utility Model patents. These lesser known patents provide a more affordable route for protection of inventions and hence are very popular with Chinese domestic innovators. Annual filing growth rates are significant at over 16% per annum since 2000. Last year, just over 225,000 of these patents were published by the Chinese Patent Office. More importantly, very few of these patents are filed outside China and hence are available only in Chinese, yet they constitute publicly published information and therefore form an important part of the prior art.

This presentation will review sources of Chinese Utility Model information and will report original research conducted to highlight where the innovation disclosed in Chinese Utility model patents is originating, who is using this route to protect their innovation and in what technology areas this method of IP protection is most used.

Bob Stembridge
Thomson Reuters
Bob.Stembridge @ thomsonreuters.com

Biography:

Bob Stembridge acts as the liaison between Thomson Reuters and intellectual property user groups and is a regular speaker at industry meetings. As a member of ACS, CILIP and PIUG, Secretary of CEPIUG, and current Chair of PATMG, and with many years of patent-related experience, Bob is one of the expert faces of the IP Solutions business of Thomson Reuters.

Bob graduated from University of Sussex, UK, with an honors degree in Chemistry. He joined Derwent (one of the founding components of the IP Solutions business of Thomson Reuters) in 1980 and has held various roles in editorial, marketing, sales and product development over the years. He has also held positions as Senior Information Analyst specializing in patent analytics at British Petroleum and European Sales Liaison with Dialog. He is currently Customer Relations Manager for Thomson Reuters with responsibility for interfacing with customer user groups for the organization. He was elected to the CSA Trust Board of Trustees in February 2007.

"Successfully Managing the Patent Lifecycle " top of page

Managing the patent lifecycle, from idea creation and development through invention submission and prosecution, all the way to portfolio management and litigation support, can be as complicated as it is essential to a healthy enterprise. Further complications or obstacles can arise from the involvement of a wide range of players (including corporate R&D centers, corporate legal departments, and IP researchers) that may be located in different geographic regions and time zones. Successful navigation of the challenges inherent in this lifecycle can increase collaboration and research quality, and significantly strengthen the decision making process, resulting in decreasing the time to market. We will review some recent technologies available to help streamline this process, focusing on collaboration and researcher tools, and advancing a discussion of what these tools can and cannot to do assist in these complex and al processes.

David Dickens
CPA Global
DDickens @ cpaglobal.com

Biography:

Mr. Dickens has a BSBA from the University of Florida and has published several articles in World Patent Information, Managing Intellectual Property and IEEE Optical Communications.

"Patent Research in India: Challenges and Best Practices" top of page

India and China have emerged as big powerhouses in global economy with rapidly expanding markets and hubs for research and development. Accordingly, the need and importance of IP protection and enforcement in these countries have increased proportionately. The patenting landscapes in these countries are undergoing rapid changes due to surge in patent filing and reforms initiated by the government to improve IP infrastructure. India is specially important for pharma community as it has a strong presence in APIs (it holds the largest number of DMFs outside US) and is gradually moving towards innovative research. Also, it allows for both pre grant and post grant opposition.

Often, lack of thorough IP research has lead multinationals into difficult situations, as witnessed in recent litigation cases involving multinational companies in these emerging markets. Conducting thorough patent research is, hence, becoming an increasing challenge and expensive hurdle for companies across many industries. This situation is aggravated by the difficulties involved in searching and analyzing patent data, for example, the lack of an online patent database in India. As a result, multinational corporations are largely unaware of the ground realities and are unprepared to operate in such a scenario.

This interactive and practical session will provides useful insights to overcome these challenges and limitations. In this we will cover, various databases that can be used for searching patents in India, their strengths and limitations, and the strategies that one should adopt. We will present a case study that showcases all these aspects.

Ashish Nawani
Evaluserve
ashish.nawani @ evalueserve.com

Biography:

Ashish Nawani is an Engagement Manager with Evalueserve. She is also a registered Indian Patent Agent. She has been responsible for setting up the Pharma/Biotech practice within the IP group of Evalueserve. She now spends her time in managing and developing client relationships, and tailoring Evalueserve's offerings as per their needs. She has been a speaker at many events including those organized WIPO, LES, CII etc.

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