"Patent Landscaping and Analysis: Tools, Tips and Tricks"
The use of third-party patent landscaping and analysis software has become an increasingly essential tool leveraged by corporations for their technology and business strategy development activities. The ability to evaluate patent literature, not just for prior art, but as important publications that may be used for trending, ring-fencing, and white-space identification analysis is becoming an increasingly sought-after skill for IP professionals. Using a chemistry-related example, this presentation will cover the importance of building an accurate data set through various online search techniques, and review the different landscaping tools now available for analysis of data. It will focus on what landscape analysis can and can't do for the IP professional, and tips and tricks for developing comprehensive analyses.
Shayne Phillips has been working in the intellectual property arena for close to fifteen years, particularly in the areas of technical patent and nonpatent literature searching, and in IP-related competitive intelligence. Ms. Phillips began her career at Procter & Gamble (P&G) in Cincinnati, Ohio, working as a Technical Assistant in Corporate New Ventures (a group tasked with evaluating outside technology for the entirety of P&G). She then moved to the IP-practice group of Dinsmore & Shohl (also in Cincinnati), working as a Technical Consultant, providing both patent application prosecution support and IP litigation assistance. In 2000 Ms. Phillips moved to Columbus, Ohio, and began work at Chemical Abstracts Service (CAS) as an Editorial Analyst in the Mammalian Hormones Document Indexing Group of the Biochemistry Department of CAS' Editorial Division. In 2002 Ms. Phillips transitioned to the role of Applications Specialist at CAS, specializing in advanced STN training, focusing on protein and gene sequence searching in particular. Following her tenure at CAS, Ms. Phillips transitioned to Halliburton in Houston, Texas, working in their Intellectual Asset Management group as both the head of IP Competitive Intelligence and as a Patent Liaison for the Cementing Product Service Line. Ms. Phillips celebrated her seven-year anniversary at Halliburton in July of this year, and is also a registered US Patent Agent.
Joe Terlizzi is Questel's chemical information specialist and training manager. He has been involved with chemical search and retrieval systems since 1975, when he joined the Central Abstracting and Indexing Service (CAIS) of the American Petroleum Institute. At CAIS, Joe worked until 1999 as an indexer, product manager, editor of the API Thesaurus, and chief trainer, and helped develop their machine-aided indexing system. Joe joined Questel in 2000 as an IP specialist and sales representative and became their head trainer for the Merged Markush Service. Joe holds a Bachelor of Science degree from Stevens Institute of Technology in Hoboken, NJ.
"How to use BIRT to Simplify Patent-Search Report Preparation"
BIRT (Business Intelligence Reporting Tool) is a free, open-source report preparation tool (a commercial version is also available). In this talk I'll describe BIRT, what it is, how to get it, and how to use it to quickly and easily generate standard patent search reports.
David Gange is the president of Altimatia, LLC, a patent research firm specializing in chemical, pharmaceutical, and nanotechnology patent searching and analysis. David is a former director of chemistry at Incara and has worked for over twenty years in chemical information management, chemical structure searching, and patent searching. He is the author of more than thirty patents and publications, and is a frequent speaker at conferences nationwide. In addition to patent research, David provides training in patent searching and analysis. His clients include law firms, and chemical, biotech, and pharmaceutical companies.
He received his Bachelor of Science with Honors in Chemistry from Tulane University. After graduating from Tulane, he received a Ph.D. in organic synthesis from The Ohio State University, and carried out postdoctoral research at Columbia University.
David is a Registered Patent Agent and a member of the American Chemical Society, the Association of Independent Information Professionals, the Chemical Consultants Network, the National Association of Patent Practitioners, and the Patent Information Users Group.
In his spare time David enjoys playing chess, visiting Civil war battlefields, and raising orchids.
"Simple Methods to Streamline Search Procedures"
Over the years of searching, first as an information professional at a pharmaceutical company and then as an independent patent researcher, I have learned or adapted procedures, which have helped me to streamline my search process and reduce online costs, as well as to organize results and costs. A few of these procedures, which include the expanded utilization of the STN Query Command, Edit and Command Window, Microsoft Word and Excel, and BizInt, will be shared.
Philipsen Chemical Patent Search, LLC
Judy Philipsen is currently a pharmaceutical and chemical patent researcher primarily working as team member for Technology & Patent Research International, Inc. and has also represented the MMS Helpdesk for Questel. She is a member of the American Chemical Society, Chemical Information Division and the Patent Information Users Group. She is a member of the faculty for the PIUG course on Patent Information Fundamentals, which was conducted for the first time after the 2010 NE PIUG Conference.
Prior to becoming a chemistry/patent searcher in the Parke-Davis Legal Department in 1989, Judy was a synthetic chemist in the Medicinal Chemistry Department at Parke Davis in Ann Arbor. In 1991, she transferred to the Parke-Davis Library and, following mergers with Pfizer and then Pharmacia, assumed the title of Information Manager in the Information Management Department at Pfizer. In addition to her role as a chemical patent searcher, she was Global Coordinator of the SciFinder Program at Pfizer and active in mentoring and training within the global Information Management Department. She retired from Pfizer in February, 2006.
"2011 Patent Reform - Breaking it Down"
This presentation takes a look at the history of patent reform and its development from the 1952 Patent Act to the 2011 HR 1249 bill, also known as the "America Invents Act." We will identify the parties involved in its formation and analyze each of the major provisions and their potential impact. Key provisions to be discussed include: the first to file system, the best mode patentability requirement, new post-grant review proceedings, false marking provisions, and USPTO fee diversion. Come ready to discuss the constitutional and policy implications of these exciting changes to US patent law and their impact on US and global patent practice.
General Electric Corp.
Catherine Toppin is Patent Counsel with the Global Patent Operation (GPO) of General Electric Corp. Her practice focuses primarily on the procurement and development of patent portfolios for various electrical and software businesses within GE. Previously, Catherine worked as an associate in the intellectual property group of a large law firm in Boston, Massachusetts where she served on the firm's Boston Diversity Committee and the Women's Business Collaborative.
Toppin earned her undergraduate degree in electrical engineering from Princeton in 2002, and attended the University of Maryland, Baltimore School of Law, where she received awards for "Best Appellate Brief" and "Best Appellee Brief" at the 2006 regional Giles S. Rich Memorial Moot Court Competition. While in law school, she interned with the U.S. District Court for the District of Columbia for the Hon. Henry H. Kennedy. Upon graduation, Toppin was awarded the William P. Cunningham Award for exceptional achievement and service. Prior to law school, she was a patent examiner with the U.S. Patent and Trademark Office.
Toppin is the president of the Association of Black Princeton Alumni, a member of the Princeton School of Engineering Advisory Counsel, Princeton Prize in Race Relations National Board, and the Princeton University Alumni Association Executive Committee. She is also the incoming Chair of the Intellectual Property Section of the National Bar Association. Catherine volunteers her time as a board member of Project Step, a classical music education program for underrepresented students, and is co-chair of the United Way campaign for the GPO.
"From Idea to the Air: A case study in technology, from first patents to the real world"
It is a long way from the first conception of an idea until products based on the idea enter the real world. This talk will review a case study based on unmanned aerial vehicles, comparing some predictions based on trends in the patent literature with business information disclosing what actually happened in the market place.
Donald Walter is a product specialist at Thomson Reuters where his primary job is to train users on Thomson Reuters' databases and solutions, specializing in patent and chemical information. He also works with the Thomson Reuters Search Service, conducting searches and analyses for legal and industrial clients, with a special emphasis on pharmaceutical and chemical subjects. Since joining the company, which was then Derwent Information, in 1992, he has given many presentations at national meetings, and been invited to speak at international meetings. He learned his craft at Exxon Research and Engineering, conducting patent and scientific literature searching for clients in the legal and technical departments. Don received his Ph.D. from Yale University in Chemistry. He lives just outside Washington DC.
"Plumbing the Depths of Examiner Search (il)-Logic: A Patent Searching Perspective"
Forests have been felled to create the material incorporated into patent law CLEs covering the legal ramifications of examiner citations and determinations. But for those of us who search patents to support attorneys, our analysis is generally limited to two important questions with regard to examiner searching:
- For Novelty: How and why did the Examiner find and/or cite a particular reference.
- For Validity: How does this affect my ability to locate potentially invalidating prior art.
This presentation will be based upon a combination of off-the-record examiner interviews, copious file wrapper reviews, and plenty of anecdotal evidence. Absolutely no legal advice is intended or being provided!
Dominic M. DeMarco
DeMarco Intellectual Property, LLC
Dominic DeMarco is the Managing Director of DeMarco IP, a patent search firm focused on serving the needs of patent attorneys in both prosecution and litigation. DeMarco IP currently employs seven professional patent researchers and performs searches across a full range of technologies. As Managing Director, Dominic is responsible for all facets of company operation including training and work product.
Dominic was originally taught to search the infamous shoes at the USPTO's Public Search Room during the 1990's and was of the lucky generation able to transition their skills to the computerized systems used today by patent information professionals. His primary search tool of choice is the USPTO's EAST (Examiner Automated Search Tool) computer system, the powerful in-house search engine used by US patent examiners, which he supplements with other databases as needed. Dominic is a registered US patent agent (#49,015) with a degree in chemical engineering from the University of Virginia.