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Patent Information Users Group, Inc.

The International Society for Patent Information Professionals


PIUG 2016 Northeast Conference

Monday, September 26 through Wednesday, September 28, 2016

Renaissance Woodbridge Hotel
515 US Highway 1 South
Iselin, New Jersey, USA 08830
Main Hotel Phone: +1 (732) 634-3600 | Main Hotel Fax: +1 (732) 634-0258
Reservations: +1 888-236-2427

Twitter: #PIUG16NE

Program

Tuesday, September 27, 2016

7:00 AM Breakfast
8:00 AM Registration, Exhibits Open
8:50 AM Welcome and Introductory Remarks
Shelley Pavlek, PIUG 2016 NE Conference Chair
Don Walter, PIUG 2016 NE Program Committee
9:00 AM

(Keynote) The Changing Face of Patent Law and Our Profession
Henry Hadad, Deputy General Counsel (Bristol-Myers Squibb)

9:30 AM

Global Dossier & International Cooperation
Nelson Yang (USPTO)

9:55 AM

America Invents Act (AIA) – What a Patent Searcher Should Know
Kartar Singh Arora (CPA Global)

10:20 AM Product Reviews (BizInt, STN, Global Patent Solutions)
10:35 AM Break & Vendor Exhibits
11:05 AM

US Patent Eligibility 101, an Update
Matthew Mulkeen (Novartis)

11:30 AM

Is Patent Quality Attainable?
Robert Grantham (Reveal-IP LLC)

11:55 AM Product Reviews (GQ LifeSciences, Minesoft, PatentSight)
12:10 PM Lunch
1:10PM

Technical Emergence: A New Family of Indicators
Alan Porter, Nils C. Newman, J. Garner, S. Carley (Search Technology, Inc.)

1:35 PM

Machine Learning in Patent Analytics: Binary Classification for Prioritizing Search Results
Anthony Trippe (Patinformatics, LLC)

2:00 PM

Strategic Analytics with the Patent Asset Index™
Christopher Baldwin (PatentSight GmbH)

2:25 PM

The Value Proposition of Analytic Tools: Leveraging Your Patent Portfolio to Enhance Your Company's Value
Dawn Owens (Thomson Reuters)

2:50 PM Break & Vendor Exhibits
3:20 PM

Finding Patent Expiry & Exclusivity Data for Drugs
Sophie Bail (Bristol-Myers Squibb)

3:45 PM

Competitive Intelligence Techniques for the Patent Professional
Henry (Hal) Murray (ExxonMobil Research and Engineering Company)

4:10 PM

Value & Visibility: Beyond the Patentability Search
Barbara Hampton (Food for Thought Information Services)

4:35 PM

What They Think of Us, Why They Need Us, and How to Keep Them Coming Back for More
Kerryn Brandt, Ph.D., Leonard E. Bogan, Ph.D, Susan E. Jones (Dow Chemical Company)

5:00 PM Closing Remarks
5:30 PM Networking Dinner (registration required)

Conference Abstracts and BiographiesTop of page

(Keynote) The Changing Face of Patent Law and Our Profession Top of page
Henry Hadad, Deputy General Counsel (Bristol-Myers Squibb)

Abstract

The last decade has brought significant changes to the US patent system from the courts, Congress and the PTO. Coupled with disruptive technological advances and a dynamic global landscape, the actual right provided by a patent has never been so uncertain nor has the profession been so in flux. We will discuss these developments and their impact on IP law, innovation, and the profession.

Biography

Henry Hadad is Senior Vice President and Deputy General Counsel, at Bristol-Myers Squibb Company, where he is Chief Intellectual Property Counsel responsible for all aspects of patent and trademark procurement, counseling, litigation, and policy. His office is located in Princeton, NJ. Henry has practiced IP law for twenty five years, with a focus on the pharmaceutical, biotechnology and medical device industries. He previously held the position of Vice President and Associate General Counsel at Schering Plough Corporation, where he was the Chief IP Counsel until 2009. Immediately prior to joining BMS in 2011, he was Associate Patent Counsel at Johnson & Johnson, where he led the comprehensive care medical device, vision and diagnostics patent group. Earlier in his career, Henry was an attorney at Kenyon & Kenyon in New York and Sughrue, Mion in Washington, D.C.

Henry is a member of the Board of Directors of the Intellectual Property Owners Association, the American Intellectual Property Law Association Education Foundation, and the Gibbons Institute of Law, Science and Technology, at Seton Hall University School of Law. He is also a member of the steering committee for the Coalition for 21st Century Patent Reform and for the Sedona Conference working group on patent litigation best practices. Henry was an adjunct Professor at Seton Hall Law School, and has frequently presented on intellectual property topics on behalf of academic institutions, law associations, and industry groups.

Henry has a B.S. in Biology from Haverford College and a J.D., cum laude, from the American University, Washington College of Law.

Global Patent Prosecution featuring Global DossierTop of page
Nelson Yang (USPTO)

Abstract

The USPTO created the Office of International Patent Cooperation (OIPC) to Improve Global Patent Prosecution and Work Sharing. To achieve this, the organization is developing tools and initiatives that modernize existing systems. These benefit the user community by delivering cost savings, reduced prosecution time, increased quality, and the certainty of IP rights. Key programs include the Patent Prosecution Highway, Common Citation Document, the new Collaborative Search Programs with Japan and Korea, and the future of global work sharing - Global Dossier. The Global Dossier Initiative is a set of business services being developed by the five IP (IP5) Offices (USPTO, EPO, JPO, KIPO, and SIPO) aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface. Global Dossier makes it easier for patent applicants to quickly and easily view, monitor, and manage intellectual property (IP) protection around the world by providing access to the dossiers of related applications filed at the IP5 offices. A highlight of this session will be an overview of the enhancements and upcoming features of Global Dossier.

Biography

Nelson Yang is a patent business analyst in the Office of International Patent Cooperation at the United States Patent and Trademark Office. At the USPTO, Mr. Yang has been involved in many key initiatives, including the Global Dossier, the Global Patent Search Network (GPSN), the Hague Agreement, and Patent End to End (PE2E).

Prior to being a patent business analyst, he was a biotechnology patent examiner at the USPTO. Mr. Yang graduated from Johns Hopkins University with Bachelors of Science degrees in Biomedical Engineering and Computer Engineering, and a Master of Science in Engineering degree in Biomedical Engineering.

America Invents Act (AIA) – What a Patent Searcher Should Know Top of page
Kartar Singh Arora (CPA Global)

Abstract

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011 making significant changes to United States patent practice. The various provisions of AIA became effective on different dates and by now all provisions have been implemented. This presentation will review some of the most notable changes such as first-to-file, post-grant review procedures, scope of prior art and others with a particular emphasis on how these changes are affecting the field of patent searching. The presentation will include guidance on best practices for dealing with changes brought about by the AIA.

Biography

Kartar started his professional career in the laboratory with the Sherwin-Williams Company as a research scientist and continued on that path for several years. However he soon became very interested in the area of Intellectual Property. It started with prosecution of patents on his research work and became more important as he became responsible for the management of IP at Johnson Polymer and then at BASF. During this time he passed the Patent Bar and registered as a Patent Agent with the USPTO. Kartar joined PIUG in 2000 as patent information and searching took more importance in his professional career. He joined Landon IP (now part of CPA Global) in 2012 where he is now responsible for management and execution of patent searches in the areas of Chemistry and Materials. Kartar has been an active volunteer for PIUG, starting as web page editor and continuing as Annual Conference Exhibits Committee chair and Annual Conference Program Committee Co-Chair.

US Patent Eligibility 101, an Update Top of page
Matthew Mulkeen (Novartis)

Abstract

ver the past the decade the Supreme Court of the United States has become more active in deciding patent cases. Many of these decisions have been perceived as weakening patent rights and have caused concern and confusion among some practicing patent attorneys. Court decisions related to the utility and subject matter requirements of Section 101 of the US Patent Code have required both the USPTO and Federal Circuit to change the way they analyze patent claim validity. This discussion will highlight some key SCOTUS and Federal Circuit cases, and resulting changes to USPTO claim examination. Distinguishing over prior art can now be important to meet the requirements of Section 101 (in addition to the traditional 102 and 103-based roles of prior art), which presents new challenges and opportunities when performing a search related to patent claims.

Biography

Matt Mulkeen is a Senior Patent Attorney with the Oncology Business Unit of the Novartis Innovation Medicines Division in East Hanover, New Jersey. His responsibilities include providing patent and IP support for global product teams that bring new drugs to the market for patients. Matt interacts with project teams in both?small molecules and biologics, and in various legal areas including client counseling, international patent portfolio development and prosecution, as well as patent license agreements and other types of agreements related to IP.

Prior to joining Novartis in 2008, Matt worked in private practice in the Washington D.C. office of Foley and Lardner, working on patent drafting, prosecution and legal opinions, mostly in the pharmaceutical, chemical, biologic or medical device areas. Matt was registered by the USPTO as a patent agent before attending law school, during which time he worked full time in patent prosecution while attending the evening program. Matt has a J.D. from the Georgetown University Law Center, an M.S. in Chemistry from George State University and a B.A. in Japanese Language and Literature from Indiana University.

Patent Searching/Prior Art a 200 Year Old Model: Time for a Change Top of page
Robert Grantham (Reveal-IP LLC)

Abstract

On July 17th the Government Accounting Office released a pair of reports describing current PTO procedures relating to prior art and patent quality. The reports describe how the PTO fails to monitor patent search thoroughness and how the Office lacks a definition for what constitutes a quality patent. In essence, the PTO is deficient in search acumen. Various recommendations are made that will if implemented purportedly lead to enhanced patent quality. The GAO fails to recognize qualities specific to the private sector patent searcher that provide lessons relevant to both the PTO and patent examiners, e.g. public sector searchers. The fact that patent examiners engage in patent searching is a 200 year old construct. Failure to recognize insights from the private sector is a reflection of two PTO rules that unintendedly diminish the search function and relegates private sector searchers to the status of non-stakeholders. As long as the two rules remain in effect, lessons from the private sector search community will have no impact on patent quality. The two GAO reports present a very good opportunity for PIUG, that is – the public sector searcher community, to participate in the patent quality debate.

Biography

Mr. Grantham began his career as a patent searcher with a small search firm in in 1989. After 1 and half years he took a position with the Washington DC law firm Nixon and Vanderhye where he stayed for the next 18 years becoming the search department manager. Robert left N&V at the end of 2008 to become a search consultant. He works out of the public searchroom at the USPTO and uses EAST to access patent material. Robert is a generalist and has done work for several fortune 500 companies as well as for smaller inventors across a broad range of inventive fields. His focus is in the mechanical and electro-mechanical arts. Robert’s academic background is in Technology Policy.

Technical Emergence: A New Family of Indicators Top of page
Alan Porter, Nils C. Newman, J. Garner, S. Carley (Search Technology, Inc.)

Abstract

The Intelligence Advanced Research Projects Activity (IARPA) Foresight and Understanding from Scientific Exposition (FUSE) program has stimulated development of indicators of technical emergence. Search Technology has developed a practical mechanism to generate usable emergence indicators from R&D publication or patent data. Taking a target set of patent abstract records on a topic of interest, a script identifies title and abstract terms that match a sharp growth pattern predicated for technical emergence. We then go an extra step to distinguish “players” (individuals, organizations, or countries) who are dominating the emergent activity on the topic in question. We present a case analysis on a broad, enduring emergent technology – addressing PatStat “nanotechnology” search results to identify emergent topics within the domain and spotlight the leading players. We show the process and discuss its utility in identifying cutting-edge players for enhanced technology intelligence.

Biography

Alan Porter (Presenting) is Director of R&D for Search Technology, Inc., Norcross, GA (producers of VantagePoint and Thomson Data Analyzer software) and Co-director of the Georgia Tech Program in Science, Technology & Innovation Policy (STIP). He is an author of many articles and books, including Tech Mining (Wiley, 2005) and Forecasting and Management of Technology (Wiley, 2011). Search anticipates National Science Foundation support to pursue emergence scoring in conjunction with researcher ID (ORCID). Publications available at: http://www.researchgate.net/profile/Alan_Porter4.

Machine Learning in Patent Analytics: Binary Classification for Prioritizing Search Results Top of page
Anthony Trippe (Patinformatics, LLC)

Abstract

Binary classification provides a means for categorizing large collections of patent documents into the references that are likely to be of highest interest to the patent information professional, and those that are likely not related, but were still retrieved in a broad search. One method for performing a binary classification is by employing a Support Vector Machine, a supervised machine learning algorithm useful in this type of work.

During this discussion general principles behind machine learning methods, and practical uses of Support Vector Machines for patent analytics will be covered. A practical example will also be provided on how this method can be used in practice.

Biography

Anthony (Tony) Trippe is Managing Director of Patinformatics, LLC. Tony has been a patent information professional for twenty years, and has spent the last eighteen specializing in technical intelligence, patent analytics and patent landscape reports. Tony is also an Adjunct Professor of IP Management and Markets at Illinois Institute of Technology teaching a course on patent analysis, and tools. Mr. Trippe is an influential thought leader in the patent analysis space, has been named one of the Top 300 IP Strategists by IAM Magazine, and invented the term Patinformatics. He is also the author of the popular Patinformatics blog.

Strategic Analytics with the Patent Asset Index™ Top of page
Christopher Baldwin (PatentSight GmbH)

Abstract

The Patent Asset Index™ is the scientifically validated KPI for patent portfolio strength and innovativeness. In this session you will learn how the methodology works and how it is used by leading companies around the world for both internal management and external communication, e.g. in annual reports. Internally it is used to provide strategic insights along the entire IP lifecycle, for example in R&D strategy, competitive benchmarking, portfolio optimization, licensing, M&A, and identification of disruptive technologies.

Biography

Chris joined PatentSight GmbH in May as a Senior Consultant supporting their North American clients. Prior to joining PatentSight GmbH, he worked for the DuPont Company for 19 years. 14 of those years were dedicated to patent searching and analysis, covering many disciplines such as polymer science, material science, and bio-synthetic chemistry.

The Value Proposition of Analytic Tools: Leveraging Your Patent Portfolio to Enhance Your Company's Value Top of page
Dawn Owens (Thomson Reuters)

Abstract

In an innovation driven market, companies' derive a significant percentage of their value from intangible assets, specifically their patent portfolios. Given the steady incline of patent filings, the declining and/or stagnant IP budgets, along with the fact that 40 percent of patent are rejected; management and the IP departments often struggle to develop a proactive approach to proof the value of the existing IP and to foster investment into a larger portfolio. This presentation will discuss the utilization of analytic tools to optimize a companies' ability to develop a strategic framework; and how this strategic framework can help build an aggressive portfolio which simultaneously drives revenue and prevents competitors from gaining prominence in the industry.

Biography

Dawn Owens recently joined Thomson Reuters as a Patent Product Specialist, with a distinguished legal background in patent law and as a former customer-user of Thomson Innovation. Dawn is a registered US patent attorney and is admitted to practice in the state of Florida as well as with the USPTO. Dawn earned her B.S. in Electrical Engineering from the University of North Florida and has her Lean Six Sigma Yellow Belt certification. Dawn also holds certifications in Advanced Legal Research, Writing, and Drafting and International and Comparative Law. Prior to joining Thomson Reuters, Dawn gained corporate industry experience working at Johnson & Johnson Vision Care and at a private firm as a Patent Law associate, conducting research for and drafting patent applications.

Finding Patent Expiry & Exclusivity Data for Drugs Top of page
Sophie Bail (Bristol-Myers Squibb)

Abstract

While key for business decisions, surveillance of Intellectual Property drug portfolios can be time-consuming, redundant, and costly. This presentation suggests an efficient process and targeted data sources for collecting such information that will yield to a comprehensive and standardized package of patent information that enables more transparency to mitigate duplication. For each product of interest, the output includes a synthesized overview of patent expiry, patent extension, and regulatory exclusivity data.

Biography

Sophie joined Bristol-Myers Squibb, Hopewell, NJ, as a Patent Specialist in October 2015. Previously, she was a Research Scientist at Genesis Biotechnology Group, Hamilton, NJ, working on the design, development, and implementation of high-throughput drug screenings for oncology therapeutics. She completed a Ph.D. in Cell and Molecular Biology at the University of Caen, Normandy, France, followed by an American Heart Association postdoctoral fellowship at Rutgers University, Piscataway, NJ. She co-authored several research publications, reviews, and book chapters covering multiple topics in biotechnologies. Sophie’s professional interest lies at the intersection of science, legal, and financial analysis. She is a candidate in the Chartered Financial Analyst (CFA) Program.

Competitive Intelligence Techniques for the Patent Professional Top of page
Henry (Hal) Murray (ExxonMobil Research and Engineering Company)

Abstract

Patent information is highly structured, diverse, and represents a source of data that can be analyzed for competitive intelligence [CI] purposes. There is a domain between identifying a “killer patent” and the vast area nebulously referred to as “Big Data”, “Data Analytics” or “The Cloud.” This terrain is not fully appreciated, yet accessible to search professional with conventional tools of the trade.

The domain between the extremes is the focal point of this presentation. Techniques and approaches can be employed which identify otherwise non-obvious art or bring some clarity to larger patent groups.

This presentation is meant to help bringing patents to the forefront in CI space as well as initiate further thought and discussion for both the patent professional and database providers alike.

Biography

Hal Murray was formally trained as an inorganic chemist, Eastern Kentucky University and Yale University, then broadened his background with postdoctoral studies at the University of Bayreuth, Germany and Texas A&M University. Hal joined Exxon Research and Engineering in 1989 and in 1996 joined the Information Research and Analysis Group. Hal is a member of the El EnCompass vocabulary task force. In addition to patent searching, Hal's other professional interests include competitive intelligence and data visualization.

Value & Visibility: Beyond the Patentability Search Top of page
Barbara Hampton (Food for Thought Information Services)

Abstract

Novice inventors and entrepreneurs often come late to the intellectual property dance, focusing on establishing the novelty of an invention and taking home the grant of patent rights. PIUG and its members understand the wide range of valuable business information that can be mined from patent records. By demonstrating the ways these pieces can add value to a business idea, we add visibility to the role of the patent information professional.
This presentation is from the perspective of the individual client, with updates on USPTO services relevant to those individuals and to professional searchers. We will examine questions that patent records can answer for inventors and entrepreneurs and evaluate ways to connect to this audience. As Sy Syms often said, “an educated consumer is our best customer” – better results for the user, increased appreciation and use of patent data mining. We will discuss opportunities for presenting and writing for novice inventors and entrepreneurs, as well as IP law firms, including:

  • Government-sponsored business forums
  • Business and inventor groups
  • Patent & Trademark Resource Centers
  • USPTO national and regional office events
  • Patent attorney organizations
  • Social media
  • News media
  • Online publications

Biography

Barbara Hampton served as a patents & trademarks librarian at the USPTO’s Patent and Trademark Resource Center at Sacred Heart University from 2008-2016, designated as the PTRC Representative, 2014-2016. She left academic librarianship this summer to focus on custom research, information services, and writing. She is currently preparing articles for publication on patent history, patents in STEM education, and university applications of patent information.
She became an academic reference librarian, a second career after retiring from general practice as an attorney. She received a B.A. in economics and government from St. Lawrence University, J.D. from the University of Connecticut, and M.L.S. from Southern Connecticut State University. She has presented to a variety of government, business, professional, and community groups about patent research and published on patent topics. She received PIUG’s Brian Stockdale Award in 2015. Currently, she serves on PIUG’s Social Media and Member Relations Committees.

What They Think of Us, Why They Need Us, and How to Keep Them Coming Back for More Top of page
Kerryn Brandt, Ph.D., Leonard E. Bogan, Ph.D, Susan E. Jones (Dow Chemical Company)

Abstract

The Search & Analysis Services (SnAS) group at Dow provides a full range of technical/patent search tools and services to a global R&D community. Based on recent survey results, clients most value us in IP preparation or defense and in helping them to explore new ideas or technologies, projects often requiring sophisticated tools and analysis – all of which take considerable time. Yet there remain opportunities to expand our service: surveys also revealed that less than half of “potential” users sought help from us, almost 60% of non-users were unaware of us despite very frequent outreach and training events, and when asked “Which (technical search) tools have you used in the past year?,” the response “Google [Scholar]” far outnumbered the next named subscription search tool on the list. Given limited staff resources and often flat or declining budgets, how can SnAS groups balance the demands of improving client self-service through training vs. providing SnA service, and also decide on the best mix of breadth vs. depth of service to maximize their value to the organization? We will present data from our surveys and provide examples from our service to generate discussion about this important topic.

Biography

Kerryn joined Dow Chemical in 2009 via its acquisition of Rohm and Haas, where he started work in 1997. He has been a technical searcher or leader of the Search and Analysis Services group since then. Prior experience includes eight years in information services, research, and teaching at Johns Hopkins University's Welch Medical Library and three years in polymer R&D at Procter and Gamble. He has an M.L.S. (University of Maryland), a Ph.D. in Chemistry/Macromolecular Science & Engineering (University of Michigan) and a B.S. in Chemistry (Rensselaer Polytechnic Institute).

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