Patent Information Users Group, Inc.

The International Society for Patent Information Professionals

PIUG 2008 Annual Conference
An International Conference for Patent Information Professionals

20 Years of Patent Searching in a World of Emerging Technologies
Celebrating the 20th Anniversary of PIUG!

Overview | Program | Presentations (Members Only) | Sponsors | Travel | Workshops

Saturday, May 17 to Thursday, May 22, 2008

Hyatt Regency Crystal City
2799 Jefferson Davis Highway
Arlington, VA, USA 22202
Tel: +1 (703) 418-1234

Conference Presentations

Technical Program

Monday, May 19
Tuesday, May 20
Wednesday, May 21

Workshops

Thursday, May 22

Business Meeting – Sunday

3:30-5:30pm PIUG Business Meeting pdf

Technical Session – Monday to Wednesday

Monday, May 19
Morning

 
8:35-9-25am Keynote Address
Enhancing Innovation and Competitiveness: Understanding IP is Key!

Catherine T. "Katie" Hunt, Rohm and Haas Company,
Immediate Past President, American Chemical Society
pdf
9:25-9:50am PIUG – The first 20 Years Edlyn Simmons, Procter & Gamble Co. pdf
10:40-10:45am Evolution of Patent Information
Session Opening Remarks

Ford Khorsandian, Technology & Patent Research International
10:45-11:15am Whatever Happened to the Silent 700?
Stephen Adams, Magister, Ltd.
pdf
11:15-11:40am Confederacy of Patent Information User Groups in Europe
Aalt van de Kuilen, Solvay
pdf
Monday, May 19
Afternoon

1:30-1:35pm Topics of Recent Interest
Session Opening Remarks

Yateen Pargaonkar, The Procter & Gamble Co.
n/a
1:35-2:00pm Some Statistical Properties of the USPTO Patent Citation Network 1963 – 2002
Bernard Gress, Fannie May
pdf
2:00-2:20pm A Review of Indian Patent Information
Anu Vaidyanathan, PatNMarks
n/a
2:20-2:40pm Semantic Search and Other Ways of Improving Chinese Patent Searches
Dong Zhao, Beijing East Linden Science & Technology Co., Ltd.
pdf
3:30-5:30pm Panel Discussion on Current Strategy and Future Planning Initiatives
Moderated by Lucy Akers, Bristol-Myers Squibb
 
  PIUG Strategic Plan 2008-2012
Suzanne Robins, PIUG
pdf
  Advancing STN
Sabine Brunger-Weilandt, FIZ Karlsruhe
pdf
  Current Strategy and Future Planning Initiatives: Questel
Pierre Buffet, Questel
n/a
  David Brown, Thomson Reuters n/a
  Robert Massie, Chemical Abstracts Service pdf
Tuesday, May 20
Morning

8:00-8:05am Patent Information – Searching, Analysis and Reporting
Session Opening Remarks

Bruce Mason, Ciba Vision
8:05-8:30am Patent Documentation Group: Past Successes and Future Challenges
Minoo Philipp, Henkel, President – PDG
pdf
8:30-8:55am Searching Chinese Prior Art
Zhifu Shu, Henry Murray, and Dan Hendriksen ExxonMobil
pdf
8:55-9:20am Implementing Effective U.S. Patent Invalidity Searches,
in View of KSR International, Co. v. Teleflex, Inc.
Yateen Pargaonkar, Procter & Gamble Co.
n/a
9:20-9:40am Use of Advanced Search Tools to Optimize Patent Categorization
Samir Raiyani, Dolcera
pdf
10:35-10:40am Software and Other Tools for Patent Information
Session Opening Remarks

Nancy Lambert
10:40-10:55am Expanded Access to Patent Information in CAS Products: More Content, Deeper Analysis
Brian Sweet, Chemical Abstracts Service
pdf
11:20-11:35am Turn the Page – Adding Value to Full Text
Richard Garner, LexisNexis
pdf
Tuesday, May 20
Afternoon

3:30-3:35pm From the Patent Offices
Session Opening Remarks

Anthony (Tony) Trippe, Chemical Abstracts Service
3:35-4:05pm Three Score Years and Ten
Curt Edfjäll, Vice President, EPO
pdf
4:05-4:35pm New Developments in WIPOs Patent Information Services
Juneho Jang, WIPO
pdf
4:35-5:00pm Patent Information from the Eurasian Patent Office
Andrey Sekretov, EAPO
pdf (imbedded notes)
pdf (printed notes)
Wednesday, May 21
Morning

8:00-8:05am Session on Tips and Techniques from the Experts
Session Opening Remarks

Alison Taylor,
Threshold Information Inc.
8:05-8:35am BLAST and Similarity Database Searching
Adrienne Shanler
pdf
8:35-9:05am Enhancing Search Precision with IPC-R
Sue Cullen, Thomson Reuters
n/a
9:05-10:00am USPTO Classification Entering the 21st Century
Terrence Mackey, USPTO
pdf
10:30-10:35am Techniques for Special Subject Areas
Session Opening Remarks

Jane Thompson, Eisai Corporation of North America
10:35-11:00am Basic Training: Patents 101
A primer for those who are curious about the language of patents Or, why do submarine patents have nothing to do with undersea vehicles?

Ron Kaminecki, Thomson Reuters
pdf
11:00-11:20am Claim Based Search Experiments on Latent Semantic Patent Search Engines CK Rao, A Harita, U Parameswaran, SciTech Patent Art Services n/a
11:20-11:35am Citation Analysis as a Component of Corporate Patenting Strategy
Elliott Linder, Questel
pdf
11:35am-Noon Free v. Fee Based Databases
Alicia Mills, Dorsey & Whitney LLP
n/a
Wednesday, May 21
Afternoon

1:30-3:15pm Rules, Regulations and Reform – Patent Tumult in the US
Panel Discussion
, Moderated by Marty Goffman, SequenceBase Corp
  The $100,000 Application And "Dead on Arrival" Rule Changes For Biological Deposits and Markush Claims
Ric Henschel, Foley & Lardner
pdf
  Bang! Pow! Right in the KSR!
Ron Kaminecki, Thomson Reuters
pdf
  Ding Dong, the Rules Are Dead! – and Other Updates on US Patent Law
Rick Neifeld, Neifeld PLC
pdf
  The Three Weird Sisters of Patent Reform
Roy Zimmermann, Medtronics
pdf
3:45-3:50pm Valuable Patents – Techniques for Identification and Quantification
Session Opening Remarks

Doreen Alberts, Theravance, Inc.
3:50-4:15pm Helping Others Acquire, License or Invest in Patents with Confidence
Susanne Hantos, Davies Collison Cave
pdf
4:15-4:40pm Are There Hallmarks of Important Patents?
Don Walter, Thomson Reuters
pdf
4:40-5:05pm Identifying and Quantifying Valuable Patents
Barry Brager, Perception Partners, Inc.
n/a
Thursday, May 22
2 identical sessions:
10:00am-noon
1:00pm-3:00pm
USPC Classification Search Strategies
USPTO
pdf

Conference Abstracts and Biographies

Welcome and Introductory Remarks

Suzanne Robins
Patent Information Services, Inc.
Chair – PIUG

Biography

Suzanne Robins received a Bachelor’s degree in Chemistry from the University of Virginia in 1981 and a Master’s degree in Chemistry from Rice University in 1983. After joining the team of patent searchers at the Monsanto Patent Department in 1988 as an independent contractor she started her own company, Patent Information Services, Inc. in 1991. She conducts patent and literature searches for a wide variety of clients around the country. Suzanne is a member of the American Chemical Society, the Division of Chemistry and the Law, the Division of Chemical Information, and the Patent Information Users Group. She was Planning Co-Chair for both the 2005 and 2006 Annual Conferences and PIUG Vice-Chair from June 2004-June 2006. Her roles in PIUG prior to serving as Vice-Chair include PIUG Treasurer, Membership Chair, and Annual Conferences Registration Chair.

Session Opening Remarks

Ken Koubek
Rohm and Haas Company
Treasurer – PIUG

Biography

The first 13 years of Ken's professional career was spent in the laboratory, 10 years of which he worked as a pesticide residue chemist at ICI Americas. In 1985, Ken accepted a position in their corporate research information department as a research information scientist. He worked 6 years in that capacity until 1991 when he went to Coca-Cola to oversee the technical information aspects of the research library. In December, 1998, Ken returned to a searching position with Rohm and Haas Company where he is currently employed as a Senior Information Scientist. Ken was the membership chair for PIUG from September 2001 until June 2004 when he was elected treasurer.

Keynote Address:
Enhancing Innovation and Competitiveness: Understanding IP is Key!

Abstract

The global marketplace has changed dramatically in the past 20 years. Discussions of innovation and competitiveness are front and center not only in companies but also in universities and governments. In developing competitive advantage understanding the patent landscape and the presence or absence of 'white space' will be key. Using patents as an indicator of innovative leadership, we will take a closer look at the future of the global chemical enterprise.

Catherine T. "Katie" Hunt
Rohm and Haas Company

Biography

Dr. Catherine T. "Katie" Hunt is the Leader for Technology Partnerships at the Rohm and Haas Company. Katie began her career at Rohm and Haas Company in 1984 after completing an NIH Postdoctoral Fellowship at Yale University. She holds an A.B. in Chemistry (cum laude) from Smith College and a Ph.D. in Chemistry from the University of California, Davis. She is the Immediate Past President of the American Chemical Society.

Katie has received numerous awards including being named one of Pennsylvania's "50 Best Women in Business" by Governor Rendell (2007) for her role in accelerating the pace of innovation by building strategic partnerships across industry, academia and national labs in conjunction with foundations and federal agencies. She recently received the Smith College Medal from her alma mater's Board of Trustees (2008) "for exemplifying in her life and work the true purpose of a liberal arts education." She was a founding member and co-author of the Vision 2020 "Chemical Industry R&D Roadmap for Nanomaterials by Design: From Fundamentals to Function". Dr. Hunt currently serves on the MIT Visiting Committee for the Department of Chemical Engineering.

Katie lives in Upper Dublin, PA with her husband, Wes, and their son, James. In her spare time she enjoys yoga, judging science fairs, and serving on her local library board.

PIUG – The First 20 Years

Abstract

The world of patent information in 1988 was very different from that of the 21st century. The Patent Information Users Group (PIUG) was organized in 1988 by 17 patent information specialists employed by U.S. chemical, pharmaceutical and petroleum companies. Our purpose was to improve communication among patent searchers and influence the development of patent information services by speaking as a group of information users rather than individuals or individual corporations. PIUG has changed in response to the changes in our environment. This paper will discuss the roots of PIUG and its development over its first 20 years.

Edlyn Simmons
Procter & Gamble Co.

Biography

Edlyn Simmons was one of the founders of PIUG, a past chair, and now Director-at-large. She was a patent information scientist and patent agent at Hoechst Marion Roussel and its predecessor companies for 26 years, and is now a Principal Information Scientist at the Procter & Gamble Company. Edlyn has spoken and written extensively about patent information and is the winner of the 2005 International Patent Information Award.
 

Session on Evolution of Patent Information
Session Opening Remarks

Ford Khorsandian
Technology & Patent Research International

Ford Khorsandian is President of Technology & Patent Research (TPR) International, Inc., which specializes in searching scientific and patent related information for patentability, infringement, and validity/opposition research in the fields of chemistry, biotechnology and electrical/mechanical art; and also provides patent analysis, and competitor intelligence studies. He holds a B.S. degree from the U.K. and started his career in Europe with Derwent Information Ltd. He moved to the U.S. in 1986 and later became Vice President of Derwent North America, working with the patent and information departments of Fortune 500 companies. He was later appointed as a Director at the Chemical Abstracts Service (CAS) Division of the American Chemical Society, responsible for CAS international business in Europe, Japan and other Pacific Rim countries . He has been working in the field of patent and technical information for over 20 years, and has also served as the Vice Chairman of the Patent Information Users Group (PIUG). He is currently the Chair of the PIUG Nominations Committee. He is also the founder of the International Patent Information IPI-Award.

Biography

Whatever Happened to the Silent 700?

Abstract

A British politician once famously remarked, “A week is a long time in politics.” Similarly, twenty years is a very long time in the business of patent information. Since PIUG was formed in 1988, corporations, products and technologies have been born, lived and some have died. Much of what we take for granted today is almost unrecognizable compared with the practices of the 1980s. This talk will be an essentially light-hearted review of how far we have come in the practice of patent searching since those dim and distant days. Searchers of a certain age will be encouraged in their nostalgia, whilst newer entrants to the profession will wonder how we ever managed to get the job done.

Stephan Adams
Magister Ltd

Biography

Stephen Adams is managing director of Magister Ltd., a UK-based consultancy in patent information formed in 1997. In addition to working on projects for a wide range of clients, including patent offices, database producers and industrial information teams, he speaks often at patent information events, and has published a book in the KG Saur “Guides to Information Sources” series. He is a past Director-at-Large of PIUG Inc. and currently sits on the Editorial Advisory Board of the Elsevier journal “World Patent Information”. A chemist by background, Stephen also holds a Masters degree in information science from City University, London.

Patent Information User Groups in Europe Join Together

Abstract

Several patent information user groups in Europe are building up a network, to share experiences, discuss topics relevant to all, and to support set-up of new national user groups. To improve this cooperation a Confederacy was set up as an umbrella organization.
This Confederacy has a focus on topics with a global impact, like training, education and certification, and a leading role in stimulating other European countries to start a Patent Information User group. This presentation gives an overview of the participating user groups, the way they work, and the goals and activities of the network.

Aalt van de Kuilen
Solvay Pharmaceuticals
European Confederation of Patent Information User Groups

Biography

Aalt van de Kuilen is the current President of the European Confederation of Patent Information User Groups and a Board Member of WON (the Dutch patent information user group). He worked with the WON and the GO Institute (in the Hague) to establish the highly-regarded Dutch course for new patent information professionals. Aalt is currently employed by Solvay Pharmaceuticals as a senior patent information professional.

Session on Topic of Recent Interest
Session Opening Remarks

Yateen Pargaonkar
Procter & Gamble Co.

Biography

Yateen R. Pargaonkar works as a Senior Information Scientist at Procter & Gamble Co., in Cincinnati, Ohio. Prior to joining P&G, he worked as an Associate Law Librarian at Morrison & Forester in San Diego, California and taught a course at the University of California at San Diego (UCSD) on Patent Searching & Internet Research. Yateen has also served as a Scientific Advisor at two Intellectual Property law firms in the New York area. Yateen got trained as a biomedical scientist with a graduate degree from University of Miami, Miami, FL and with three years of work experience at Columbia University, New York City, NY. Yateen is a registered U.S. Patent Agent and an active member of PIUG (Patent Information Users Group Inc.).

Some Statistical Properties of the USPTO Patent Citation Network 1963 – 2002

Abstract

The network of patent citations is distributed across dense clumps of citations between closely related patents. The largest clumps are defined by the patent technology categories and subcategories. The exchange of citations between these groups evolves over time and reveals technological trends. By considering the evolution of up- and down-, and in- and out- citations, conclusions about the generality, originality, and productivity of patents and technology categories can be drawn.

Bernard Gress
Fannie Mae

Biography

Bernard Gress is an economist at Fannie Mae. His research is in Genetic Algorithms, Patent Citation Networks, and Nonparametric and Spatial Econometrics.

A Review of Indian Patent Information

Abstract

Indian Patent Information is currently available by utilizing both the INPADOC plugins to various search databases and a plurality of free, on-line resources. Both these sources suffer from a couple of drawbacks including missing data, bibliographic presentation of information, erroneous data and a limited period being represented (for example, only valid patents are a part of some of these resources). PatNMarks is the first Indian firm to provide Intellectual Property information for the Indian landscape by using proprietary, in-house data-bases, which have been manually entered and verified over several software cycles. Our value-added services, Vaniham, Noutpam and Abha, cover the entire range of Intellectual Property searches including Patents, Trademarks and Designs for the Indian landscape. In this paper we present some perspectives on the organization of Indian Patent literature, including the challenges we faced with the classification, paper-copies, and transformation of arcane media to up-to date and compatible databases, which provide the basis for our due-diligence services.

Anu Vaidyanathan
PatNMarks

Biography

Anu Vaidyanathan is the CEO of PatNMarks, the first Indian company to provide comprehensive IP information for the sub-continent, by means of its value-added data-bases and services. Anu received her Bachelors of Science in Computer Engineering from Purdue University and a Masters in Computer Engineering from North Carolina, in 2001 and 2002. She is a qualified patent professional in India and leads a team of Engineers and Scientists at PatNMarks, providing services in all aspects of IP-Law for a niche clientele spanning the globe.

Semantic Search and Other Ways of Improving Chinese Patent Searches

Abstract

Based on sophisticated algorithms and precise computational models, Patentics, a true concept-based full text search engine, builds intelligence into text to represent a concept by mathematical vectors, allowing search to be language independent. By doing this, for example, a search for Chinese patents may be undertaken by using corresponding keywords in English.

Through the built-in conceptual model, patents are indexed mathematically and grouped, depending on their meaning, into their own conceptual spaces by a specific clustering algorithm, and each cluster of indexed words is related to a major subject. Upon such a model words/phrases/documents are related to each other intrinsically, with a ranking number representing their relevancy. What's more, the returned results can be ranked according to any "concept word", and be further refined by use of some related terms automatically generated by the system, thereby significantly easing the searchers' burden of looking up synonyms.

Furthermore, the presentation covers others ways East Linden uses to improve the search of patent information. Deep indexing and machine translation technologies used in East Linden's products are also introduced.

Dong Zhao
Beijing East Linden Science & Technology Co., Ltd.

Biography

Mr. Dong Zhao is presently vice president of East Linden. He worked in ROSE-HULMAN INST OF TECHNOLOGY, engaged in network development, information service, and on-line retrieval etc. During the time, Mr. Zhao was active in many R & D works related to information service and information management and joined SLA and IALA, and addressed presentation in some very important state conferences many times. From 2000-2004 Mr. Zhao Worked in EDS as software engineer and accumulated very rich working experience working on many important projects. He also Worked for a company in Miami, as senior software engineer, responsible for frame design of communication software on leading ship, as well as the overall management of the project progress. Mr. Zhao joined East Linden in 2005.

Panel Discussion
Current Strategy and Future Planning Initiatives

Panel Moderator:

Lucy Akers

Panel Members:

Sabine Brunger-Weilandt, FIZ Karlsruhe
Pierre Buffet, Questel
David Brown, Thomson Reuters
Robert Massie, Chemical Abstracts Service
Suzanne Robins, PIUG

Biographies

Lucy Akers, Bristol-Myers Squibb

Lucy Akers is a U.S. patent agent with a degree in chemistry. She worked for five years as an independent patent information consultant and has held corporate positions with Shell and ExxonMobil. Lucy is the Past Chair of the Patent Information Users Group (PIUG), Inc. and is currently a senior patent analyst with Bristol-Myers Squibb.

Sabine Brunger-Weilandt, FIZ Karlsruhe

Sabine Brünger-Weilandt is President & CEO of FIZ (Fachinformationszentrum) Karlsruhe, Germany. She has many years of experience in senior positions in the marketing and communications departments of renowned, international organizations and enterprises. Her first contact with the information sector was in the early eighties when she worked in the Documentation Center of the Deutsche Bank AG. Then she took over as Head of Sales at the Handelsblatt publishing house, where she was responsible for the area of business databases. After working as a Senior Consultant for Steria Mummert Consulting, Hamburg, she spent several years as a member of the Managing Board of Greenpeace, Germany. Later on, she became Head of Strategic Consulting at the BBDO Group. She took over as President & CEO of FIZ Karlsruhe in 2003. Mrs. Brünger-Weilandt holds a degree in History, German Language and Literature, Education, and Philosophy from the Rheinische Friedrich-Wilhelms-University of Bonn.

Pierre Buffet, Questel

David Brown, Thomson Reuters

Robert Massie, Chemical Abstracts Service

Robert J. Massie has been President of Columbus, Ohio-based Chemical Abstracts Service (CAS), a division of the American Chemical Society, since 1992. Prior to his appointment, Mr. Massie had extensive information and publishing industry experience, including having served most recently as President and CEO of Gale Research, Inc., the leading general reference publisher serving libraries, schools and businesses. In the early and mid-1980's, Mr. Massie held senior executive positions with the Torstar Corporation, the largest newspaper and book publishing company in Canada. Prior to that, he was a management consultant with McKinsey & Co. in New York, where his clients included the General Electric Company and the New York Times Company. Before that, he practiced law with the firm of Covington & Burling in Washington, D.C. Mr. Massie holds a joint J.D./MBA degree from Columbia University, where he was a Harlan Fiske Stone scholar; he is an honors graduate (B.A.) of Yale College. Mr. Massie is a member of several Boards of Directors, including the Columbus Chamber of Commerce and TechColumbus, has served on the Boards of COSI and the Columbus Symphony, and is currently a member of the Columbus Partnership. Mr. Massie has authored a number of papers, and speaks frequently to industry groups on the subject of scientific research in the digital age.

Among his awards and recognitions are the Miles Conrad Award, presented in 2008 by The National Federation of Advanced Information Services (NFAIS), the Patterson-Crane Award for Outstanding Contribution to Providing Chemical Information Services, 2003, and the Executive of the Year award from the Industry & Technology Council of Central Ohio in 1998.

Suzanne Robins, PIUG

Suzanne Robins received a Bachelor's degree in Chemistry from the University of Virginia in 1981 and a Master's degree in Chemistry from Rice University in 1983. After joining the team of patent searchers at the Monsanto Patent Department in 1988 as an independent contractor she started her own company, Patent Information Services, Inc. in 1991. She conducts patent and literature searches for a wide variety of clients around the country. Suzanne is a member of the American Chemical Society, the Division of Chemistry and the Law, the Division of Chemical Information, and the Patent Information Users Group. Suzannhttp://www.piug.org/imagese is the current Chair of PIUG. She served as Planning Committee Co-Chair for the 2005, 2006, 2007 and 2008 Annual Conferences and PIUG Vice-Chair from June 2004-June 2006. Her previous roles in PIUG include Treasurer, Membership Chair, and Annual Conferences Registration Chair.

Session on Patent Information – Searching, Analysis and Reporting
Session Opening Remarks

Bruce Mason
CIBA Vision Corporation

Biography

Bruce Mason serves as senior technical information specialist and competitive technical intelligence analyst for CIBA Vision Corporation. He has 40 years experience in the technical information industry and has specialized in patent information for over 25 yrs. and competitive intelligence for over 12 yrs. He has a BS degree in chemistry and professional certification in competitive intelligence. He holds professional membership in the Chemical Information Div. of the American Chemical Society, the Product Development and Management Association, the Patent Information Users Group, and the Society of Competitive Intelligence Professionals.

Patent Documentation Group: Past Successes and Future challenges

Abstract

The Patent Documentation Group (PDG) is a non-profit organisation consisting of companies using technical, patent and other intellectual property related information for their business. The PDG, which was founded in 1957 as a working group by thirteen European chemical and petrochemical companies, seeks to promote the effective and efficient use of patent information. It has a reputation as an indispensable partner in all discussions relating to the quality and enhancement of patent information. The PDG currently comprises forty multinational companies from eight different countries engaged in the automotive, chemical, electronics, engineering, household / personal care products, petrochemicals and the life science industries.

Minoo Philipp
Henkel AG & Co

Biography

Minoo Philipp is the Patent Information Manager at Henkel AG & Co. KGaA in Germany. She is responsible for the corporate provision of patent information. Ms Philipp is a chemist with several years of R & D experience in the chemical industry and consulting, prior to starting a career in information. She is currently the President of the Patent Documentation Group.

Searching Chinese Prior Art

Abstract

Since its first patent law enacted in 1984, we have seen significant growth of patent applications to the Chinese patent office. With China's steady economic growth rate and its market size, there is no doubt the trend will continue. This presentation will use an FTO (Freedom to Operate) example to show different methods to identify related patents, and compare coverage of Chinese patents from various commercial vendors and free patent information sources. The pros and cons of each source will be examined. From a westerner's perspective, the evaluation of retrieved results and methods of obtaining the original patents will also be discussed.

Zhifu Shu
Henry H. Murray
Dan E. Hendriksen

ExxonMobil

Biographies

Zhifu Shu joined ExxonMobil's Information Research & Analysis group in 2001. Prior to that he was with SC Johnson Polymer (now part of BASF) in Racine, Wisconsin, and with Pittsburgh Plate Glass in Pittsburgh, Pennsylvania. He holds a BS degree in chemistry from Wuhan University, China, and a Ph.D. in organic chemistry from the University of Michigan-Ann Arbor.

Henry (Hal) Murray was formally trained as an inorganic chemist at Yale University, 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 Exxon Research and Engineering in 1989 as a researcher. More than a decade ago, Hal joined the Information Research and Analysis Group. Hal is a member of the EI EnCompass vocabulary task force and a member of the American Chemical Society. In addition to patent searching, Hal’s other professional interests include competitive intelligence and data visualization.

Dan Hendriksen moved to patent searching in 2000 after R&D assignments in Corporate Research and then Chemicals Research. He holds a Ph.D. in inorganic chemistry from UC Berkeley.

Implementing Effective U.S. Patent Invalidity Searches,
in View of KSR International, Co. v. Teleflex, Inc.

Abstract

An issued U.S. patent is presumed valid under 35 U.S.C. § 282. The burden of establishing the invalidity of a patent or any claim thereof rests on the party asserting such invalidity. In KSR International, Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), the Supreme Court relaxed the rigid application of the Federal Circuit's long established standard of "teaching, suggestion, motivation" (TSM) test for determining obviousness. This shift towards relaxed application of TSM and to determine “whether there was an apparent reason to combine the known elements” presents more opportunities for finding prior art during patent invalidity searching.

This presentation relates to the implications of the U.S. Supreme Court ruling, coupled with a discussion of selected U.S. laws, affecting U.S. patent invalidity searching. The talk will discuss strategies and focus on considerations for implementing effective patent invalidity searches in a post-KSR world. Three examples of prior art cited and interpreted during recent patent litigations citing KSR will also be provided.

Yateen Pargaonkar
Procter & Gamble Co.

Biography

Yateen R. Pargaonkar works as a Senior Information Scientist at Procter & Gamble Co., in Cincinnati, Ohio. Prior to joining P&G, he worked as an Associate Law Librarian at Morrison & Forester in San Diego, California and taught a course at the University of California at San Diego (UCSD) on Patent Searching & Internet Research. Yateen has also served as a Scientific Advisor at two Intellectual Property law firms in the New York area. Yateen got trained as a biomedical scientist with a graduate degree from University of Miami, Miami, FL and with three years of work experience at Columbia University, New York City, NY. Yateen is a registered U.S. Patent Agent and an active member of PIUG (Patent Information Users Group Inc.).

Use of Advanced Search Tools to Optimize Patent Categorization

Abstract

Patent database search conducted for patent landscape in a technology area results in a few hundred relevant patents. Presenting this large set of complex information to clients is a big challenge. Patent search professionals simplify the presentation of information by categorizing patents, in custom made categories (this is done to reflect the business context of the firm) such that the number of patents in each category is a significantly lower number than the large initial set.

Analysis and categorizing of patents is time consuming. There is a need to optimize this task. Patent databases available today are not very useful for this. Also, text mining tools available do not provide flexibility to patent searchers to define the attributes that categorizes a patent in a certain category. In this session, we will discuss different techniques that can be used to categorize large patent data sets in various domains including biotechnology, medical devices, chemistry, telecommunications, software and others. The methods are a mix of manual and automated techniques that have resulted in effective categorization of very large data sets over time. Finally, we will demonstrate the techniques used by Dolcera's team for effective categorization of several hundred thousand patents to date.

Samir Raiyani
Dolcera

Biography

Samir Raiyani is the Chief Executive Officer and co-founder of Dolcera, a premier intellectual property and market research services company based out of Hyderabad, India and Silicon Valley, US. Samir brings more than a decade of leadership in high-tech and knowledge service innovation to the company. At Dolcera, Samir has helped establish relationships with nearly two dozen of the world's largest companies in life sciences, manufacturing and high tech. Samir was also the co-founder of MediSpark (iScribe), a mobile healthcare startup that is now part of CVS Caremark Inc., one of world's largest retail pharmacy and pharmacy benefit chains in the world. Prior to Dolcera, Samir was Director at SAP Research in Palo Alto, California. At SAP, Samir helped launch several new initiatives in the areas of metro wireless networks (WiFi-mesh/WiMax), RFID, sensor networking and mobile multimodality. He was instrumental in setting up partnerships with Intel, Motorola and several other companies. He has a Masters degree in Computer Science from Stanford University and an undergraduate degree in Electronics and Communication from Gujarat University.

Session on Software and Other Tools for Patent Information
Session Opening Remarks

Nancy Lambert

Biography

Nancy Lambert earned a B.S. with honors in Chemistry from Carnegie Mellon University in Pittsburgh and went on to complete two years of graduate work in Chemistry at Princeton University before receiving her M.S. in Library Science from Columbia University. She joined 3M Company as a patent information specialist in 1974 and became their principal chemical and polymer patent searcher. In 1986, lured by the prospect of living in Northern California, Ms. Lambert moved to Chevron Research Company and served as a patent information resource for all of ChevronTexaco and its subsidiaries. Ms. Lambert was one of 17 individuals in attendance at the first ever meeting of the PIUG in Crystal City, Virginia. She has been involved with PIUG since its beginning in 1988. Ms. Lambert has also contributed many articles to the PIUG Newsletter and has provided a semiannual Vendor Update column for the PIUG Newsletter. In addition, she has promoted the spirit of community by serving as organizer and Director of the “IFFI Players” group of actors at the PIUG Annual Meetings, often re-writing whole scripts to fit the bill and slip in a generous helping of patent related humor.

Expanded Access to Patent Information in CAS Products: More Content, Deeper Analysis

Abstract

Recent and upcoming enhancements involving patent information in CAS databases and services will be reviewed. CAS database coverage of exemplified prophetic substances from patents will be highlighted, as well as expanded access to Asian patent information in CAplus.

Brian Sweet
CAS

Biography

Brian Sweet is a Senior Product Manager at CAS, currently responsible for STN AnaVist, STN’s new analysis and visualization software. He is a 28 year veteran of the information industry, and has been with CAS for 5 years. Previously, he worked for BIOSIS in Philadelphia, Elsevier Science in New York and Amsterdam, and Ovid Technologies in New York. He is a former President of the NFAIS. Brian holds undergraduate degrees in Biology and History from the State University of New York at Binghamton, and a Master’s degree in Information Studies from Drexel University.

Turn the Page – Adding Value to Full Text

Abstract

A multi-year project designed to change the way users think about full text patents is nearing completion. During this presentation Richard Garner will outline the steps LexisNexis is taking to develop the world’s most comprehensive, multi-lingual, full text patent database; highlighting some of the processes involved in turning the printed page into a value-added database.

Richard Garner
LexisNexis

Biography

Richard Garner's career spans almost 25 years in the patent information industry. He established the British Library's Patent Express document delivery service in the early 1980s; led Derwent's First Level Data Division in the 1990s and is now IP Product Director at LexisNexis.

Session on From the Patent Offices
Session Opening Remarks

Anthony (Tony) Trippe
Chemical Abstracts Service

Biography

Anthony Trippe is Sr. Innovation Manager at CAS where he is responsible for creating new product ideas around the area of chemical and life sciences information. Mr. Trippe has a long history of working in the patent information field and has been a sought after speaker for many years on the topic of patent analysis and visualization. He has a background in organic chemistry having gotten a Master’s degree in synthetic organic chemistry and worked early in his career at several different pharmaceutical companies.

Three Score Years and Ten

Abstract

A review of the past twenty years of changes in European patent information will throw some light on why the EPO decided to take a close look at its patent information policy in 2007. The new patent information policy introduces the concept of "barrier free" patent information and allows the EPO to do more to make search tools available to the public. What will this mean in the longer term?

Curt Edfjäll
EPO

Biography

Curt Edfjäll, born on 17 May 1944 in Uppsala, Sweden, has a BA in economics. In 1967 he started his career at Sweden's Telecom in the Economic Division swiftly moving on to become head of the finance section of the Swedish Patent Office. In 1973 he joined Sweden's Ministry of Trade as head of administration. In 1977 he joined the European Patent Office as Principal Director Organization/EDP and in 1988 was appointed to EPO's Controller. In 1996 he was appointed to his current post as Vice-President, Administration. This has included overall responsibility for the EPO's patent information activities since 2001.

New Developments in WIPO’s Patent Information Services

Abstract

A core function of the patent system is the publication and dissemination of the technical information contained in patent documents, so as to make technology developments available to all. In this respect, the World Intellectual Property Organization (WIPO) provides, through PATENTSCOPE® Search Service, access to the technology contained in over 1.3 million published international patent applications.

The presentation will cover WIPO’s patent information objectives, updates on WIPO patent information products and services, with a particular focus to WIPO PATENTSCOPE® Search Service (see http://www.wipo.int/pctdb/en/), the authoritative source of PCT international patent applications. The presentation will also address the challenges WIPO is facing to meet the requirements and demands from the global users of patent information and, will lastly, include an update on WIPO’s products on patent statistics.

Juneho Jang
WIPO

Biography

Mr. Juneho Jang, a national of Republic of Korea, is a Senior Patent Information Officer of WIPO. He is responsible for WIPO's activities in coordinating the provision of WIPO's patent information services and products, outreach activities for the promotion of patent information to the developing countries, and the development of cooperation projects with IP offices on the digitization and dissemination of patent documents. Mr. Jang holds a PhD in Mechanical Engineering from R.P.I in USA. He is also a qualified patent attorney in Republic of Korea.

Patent Information from the Eurasian Patent Office

Abstract

The Eurasian Patent Organization has operated as a regional intergovernmental patent authority for more than 12 years, granting patents valid in 9 contracting states. Over the past years, the Eurasian Patent Office has developed a number of products and services for patent information users. This presentation reflects the current state of patent information activities at the EAPO. It is mostly focused on legal status information, description of CIS-region databases in the EAPATIS search information system, and availability of Eurasian data in INPADOC and the DOCDB databases.

Andrey Sekretov
Eurasian Patent Office

Biography

Andrey Sekretov has been working as a Principal Specialist of the Information and Search Systems Department of the Eurasian Patent Office since 1999. His background is in automation and finance. The scope of his responsibilities includes development of publication procedures of the EAPO including data extraction and dispatch, implementation of standards for patent information presentation, development of a number of patent information products on optical discs, and the EAPO-Espacenet project. As a patent information expert, he also participates in most of the IT projects at the EAPO.

Session on Tips and Techniques from the Experts
Session Opening Remarks

Alison Taylor
Threshold Information Inc.

Biography

Alison Taylor, Ph.D., is currently a Scientific and Patent Information Analyst at Threshold Information, Inc., a private search firm service based in the Chicago area. Threshold provides information services for a wide range of clients from large Fortune 100 companies through small, independent businesses. Prior to Threshold, Alison was Manager of the Patent and Chemistry Searchers team for Pharmacia / Monsanto company in Skokie, IL, from 1999-2003. She started with another division of the Monsanto company in 1995 – The Nutrasweet Company – and was Manager of the library at the Mt. Prospect site. She started her scientific career as a bench scientist at Abbott Laboratories in the Molecular Biology group and has a BSc in Biochemistry from the University of Surrey in England and PhD in Microbiology and Molecular Biology from King's College London.

BLAST and Similarity Database Searching

Abstract

Neither one database nor type of search (BLAST vs. text) is adequate for a prior art or freedom to operate search. No one database is comprehensive. Although there is a lot of overlap, each database and search type has unique data and information content. This is true for sequence searches.

The presentation will focus on BLAST searches done for the Wyeth patent attorneys. For most of the presentation, data from 15 sequences were accumulated for the analysis. The examples use non-confidential sequences.

Topics include search and data display parameters based upon the attorneys’ wants and desires, basic procedure of a search to the final spreadsheet, example of a spreadsheet, STN vs. Seqweb (DGENE/PCTGEN/CAS Registry vs. GENESEQ/Genbank), STN database comparison, CAS Registry vs. USGENE and PCTGEN, unique hits from CAS Registry vs. status and comparison by database on the country level.

Adriene Shanler
Wyeth

Biography

Adrienne Shanler is a Patent Information Scientist in the Patent Law department at Wyeth and chair of the PIUG NE Conference. Formerly, she was a Senior Information Scientist in the Technical Information Center of the Cyanamid Agricultural Research Center in Princeton NJ. Expertise includes human and veterinary pharmaceuticals, vaccines, formulations as well as biotech. She describes herself as “a Jane of most trades”. In addition she is an EMT and volunteers with Edison First Aid & Rescue Squad #1, teaches first aid and CPR for the American Red Cross, and is an active member of Maine Coon Rescue and Paws of Gold, an all-breed feline rescue group. Currently, Adrienne shares her life with Maine coon cats, a Wegie, a Birman and one MCR foster cat. Hobbies include needlepoint and science fiction.

Enhancing Search Precision with IPC-R

Abstract

With the reclassification of the backfile largely complete in the major offices, and new implementations of IPC searching in place on many tools, the benefits of using IPC-R (IPC8) effectively can be realized. Now we can take advantage of the power inherent in the IPCR code types, and use the codes to focus on retrieval that is far more targeted than previous IPC versions allowed. Examples that display some best practices for use of the codes are provided in 3-4 code areas, and comparisons with other older classifications are provided. Editing of alerting strategies could make internal review tasks far less onerous.

Sue Cullen
Thomson Reuters

Biography

Sue Cullen led a research group for 18 years, and has 16 years of IP management experience including directing a licensing office and participation in redesign of IP practices at a large diversified company. Since 2000 she has worked as a consultant in IP analysis, and aims to help make people and companies successful through effective extraction of intelligence from IP. Sue has a Ph.D. in Microbiology from Albert Einstein College of Medicine, a B.S. in Chemistry, is a U.S. patent agent, and an Adjunct Full Professor at Washington University in St. Louis.

USPTO Classification Entering the 21st Century

Abstract

Building and maintaining a patent classification system for prior art retrieval is a resource-intensive and often protracted undertaking. The presentation will cover the historical evolution of the United States Patent Classification (USPC) system, including coverage of significant historical changes to aspects of USPC. Included will be an overview of patent classification automation activities, as well as recent competitive sourcing and international patent classification harmonization activities.

Terrence Mackey
USPTO

Biography

Terrence is with the International Liaison Staff, Search and Information Resources Administration, United States Patent and Trademark Office. Terry attended the University of Wisconsin where he earned his B.S. and M.S. degrees in Materials Science and Engineering. During his 20-year tenure at USPTO, he has worked as a patent examiner and patent classifier, as well as served as project manager for the development of electronic tools and business processes related to United States Patent Classification (USPC) activities. Terry has also worked as a patent analyst in the USPTO Office of Electronic Information Products' Patent Technology Monitoring Division which is responsible for producing numerous reports of patent activity and trends. Since 2004, when he joined the International Liaison Staff, Terry has worked on both USPC and International Patent Classification (IPC) reclassification activities, and in particular efforts to harmonize USPC information with the IPC system.

Session on Techniques for Special Subject Areas
Session Opening Remarks

Jane Thompson
Eisai Corporation of North America

Biography

Jane Thompson is a registered U.S. patent agent with an MSc in Chemistry. She has spent over 18 years in the patent information profession, previously holding positions in the Patent Departments at the Dow Chemical Company, Vertex Pharmaceuticals, and Pfizer, Inc. She is currently a Senior Patent Information Scientist in the U.S. IP Dept. of Eisai Corp. in Andover, MA where she conducts searches and analysis in support of IP, R&D, and business clients.

Basic Training: Patents 101
A primer for those who are curious about the language of patents
Or, why do submarine patents have nothing to do with undersea vehicles?

Abstract

Many patent workers are assumed to have a certain minimum amount of knowledge about this area of intellectual property. Non-Obviousness, 102 objections, continuations-in-part, statutory disclaimers, prior art dates, and yes, submarine patents are all concepts that are assumed to be common knowledge amongst patent researchers. But how does one actually learn this (and similar) information? A lot of it is not even taught in law schools! This session will cover the basics of patents in non-technical, non-legal terminology to equip you in the basics of US patents.

Ron Kaminecki
Thomson Reuters

Biography

Ron Kaminecki is Director, Intellectual Property Segment with the The Scientific Business of Thomson Reuters. Ron 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 information via manual, online and batch systems at the IIT Research Institute as an Associate Information Specialist. His current responsibilities at Thomson Reuters include working with various intellectual property groups to help develop new solutions for searching, to collect information from these groups, and to disseminate this knowledge. He is a registered US patent attorney and is a member of the Illinois Bar and of the Bar of the Northern District Court of Illinois, and was a US Patent Agent.

Claim Based Search Experiments on Latent Semantic Patent Search Engines

Abstract

Several free and commercial patent databases with powerful and unique search capabilities exist. However, accurate patent retrieval continues to be challenging. It appears though, that not much research has gone into the area of information retrieval for different types of patent databases. The lack of analysis to compare results from a patent retrieval collection has caused patent search to remain an exclusive domain for expert searchers who have substantial experience and knowledge.

CK Rao
SciTech Patent Art Services

Biography

Dr. Chellapilla Kameswara Rao is a Manager (Client Relations) at SciTech Patent Art Services Private Limited. Dr. Rao manages patent related analytics projects in mechanical and electrical engineering areas. He has over a decade of academic and more than two decades of industrial research experience. He has several publications and presentations in the area of dynamics and vibrations of power plant structures and equipments. He had worked as Head of intellectual property management for four years in Bharat Heavy Electricals Limited before joining SciTech Patent Art in 2006.

Citation Analysis as a Component of Coporate Patenting Strategy

Abstract

Citation analysis can reveal useful information about a company’s patenting practices. The use of citation analysis, with relevancy codes, to improve corporate patenting process efficiency will be illustrated and discussed.

Elliott Linder
Questel

Biography

Elliott Linder earned a B.S. in Chemical Engineering from New York University. He served for nearly 23 years at the American Petroleum Institute's Central Abstracting and Information Services as indexing manager and editor of the API Thesaurus. During this period his professional affiliation with Orbit began when, in 1975, Orbit was the first service to make the API files available online. It was also during this time that Mr. Linder forged professional lifelong relationships with many of today's PIUG members. In 1993 Mr. Linder resigned from a drastically changed API and left his beloved New York for Washington, DC to join his other beloved and future wife, Marsha Fenn. The couple will celebrate their 15th anniversary in July. After working on a number of different assignments Mr. Linder joined Questel·Orbit Inc in 2002 as Sales Manager, North America.

Free v. Fee Based Databases

Abstract

This paper will discuss free and fee based databases for patent research. Database costs for conducting patent research can range from free to prohibitively expensive. For attorneys working at larger law firms, the fee based databases are likely readily available. However, if you are working with clients who are cost sensitive, work at a smaller firm, working on a pro bono case, or are a solo practioner, you might want to consider the value of free databases.

This paper will evaluate the content, searchability, and functionality of both the free and the fee based databases. The paper will specifically lay out the advantages and disadvantages of these databases and when research is best conducted in fee based databases and when you can find the results that you need in free based databases.

Alicia Griffin Mills

Biography

 

Panel Discussion
Rules, Regulations and Reform – Patent Tumult in the US

Panel Moderator:
Marty Goffman

Panel Members:
Ric Henschel
Rick Neifeld
Roy Zimmerman
Ron Kaminecki

Biography

Marty Goffman

Martin has a BA, MA, and Ph.D. in Chemistry (Physics Minor) from Temple University. After working in industry for 20 years, Marty founded Martin Goffman Associates, a full service business and technical research organization. He is also a co-founder of the www.patentvaluepredictor.com patent valuation service. In 2006 he started the SequenceBase Corporation, producer of the USPTO Genetic Sequence Database, USGENE® currently hosted on STN and also available by subscription. He is a past chair of the PIUG Discussion List.

The $100,000 Application And "Dead on Arrival" Rule Changes For Biological Deposits and Markush Claims

Abstract

This presentation will contrast two proposed rule changes, which are doomed under the recent district court decision blocking the USPTO continuation and claims rules, and the USPTO's accelerated examination program, which involved no rule change but presents major obstacles in cost and potential risk. The USPTO proposed rule changes for biological deposits are unlikely to be finalized, because they contain the same flaw that the district court found in the continuation and claims rules undefined they involve substantive change by an agency with no substantive rulemaking authority. While proposing to require public availability of biological deposits upon publication instead of upon grant, the USPTO concedes that case law has stated that it suffices to make such deposits available upon grant. Similarly, the USPTO proposed rule changes for handling Markush claims are unlikely to be finalized for the same reason: The USPTO concedes that contrary case law exists in its own notice of the proposed change. The USPTO's accelerated examination program is the only change that it has successfully implemented recently undefined perhaps because it involve no rule changes of any kind. Unfortunately, the USPTO not only shifted the primary burden of search and examination to the applicant, but asks the applicant to do far more than any examiner would, thus pushing the potential cost of prosecuting an application under the accelerated examination program north of $100,000.

Ric Henschel
Foley & Lardner

Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and is a member of the Chemical & Pharmaceutical, Intellectual Property Litigation and International Practices as well as the Nanotechnology Industry Team. Dr. Henschel graduated from Georgetown University Law Center (J.D., 1999), City University of New York (Ph.D., organic chemistry, 1990), and the City College of New York (B.S., chemistry, 1981). While in law school, he was president of the Student Intellectual Property Law Association. Dr. Henschel is a member of the Virginia and District of Columbia bars and is registered to practice before the USPTO.

Bang! Pow! Right in the KSR!

Abstract

The apparent goal of the US Supreme Court of late has been to focus on intellectual property issues, including such decisions such as KSR Int'l Co. v. Teleflex, Inc. and MedImmune, Inc. v. Genentech, Inc. Actually, the Court has a history of ruling on intellectual property cases going back over a century and a half in Hotchkiss v. Greenwood, which dealt with the standard of proof in patent cases and is now targeting other specific areas in patent law. These decisions have led to various rules, tests and even other decisions which help determine what can be patented and also what rights may be extended to patent holders and even licensees. How do these new decisions affect the various parties of patent law, including inventors, assignees, searchers, attorneys, litigants and the general public? An overview of these points will be given along with how such changes in the law will affect you.

Ron Kaminecki
Thomson Reuters

Ron Kaminecki is Director, Intellectual Property Segment with The Scientific business of Thomson Reuters. Ron 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 information via manual, online and batch systems at the IIT Research Institute as an Associate Information Specialist. His current responsibilities at Thomson Reuters include working with various intellectual property groups to help develop new solutions for searching, to collect information from these groups, and to disseminate this knowledge. He is a registered US patent attorney and is a member of the Illinois Bar and of the Bar of the Northern District Court of Illinois, and was a US Patent Agent.

Ding Dong, the Rules Are Dead! – and Other Updates on US Patent Law

Abstract

The public 1, the USPTO 0, in the battle on rules limiting continuations and claims! Tafas v. Dudas, decision dated 4/1/2008, permanently enjoins the USPTO from promulgating these rules. The USPTO plans to appeal the decision. I will briefly explain the decision, the issues, and the USPTO's prospects for ultimate success in the Courts. Second, the decision in Tafas impacts the fate of other proposed rules. I will discuss that impact on at least the proposed new rules for appeals and IDSs. Third, I will provide some insight into the appeals process in the USPTO, the impact of the proposed rules on appeals, and reveal some startling statistics about appeals and explain why those statistics are so important! Fourth, I will review some of the recent important judicial decisions and provide an update on legislative developments.

Rick Neifeld
Neifeld PLC

Rick is a patent attorney. He has degrees in physics and mathematics, and a Ph.D. in Physics from Rutgers University. Rick is the founder of Neifeld IP Law, PC, which focuses on patent interference, and patent and trademark prosecution in the USPTO and abroad. Rick has been involved in over fifty patent interferences, is a former chair of the Interference Committee of the AIPLA, and also administers the popular-amongst-interference -practitioners "patentinterference" yahoo group list. He is widely published on patent law issues and many of those publications appear on his firm's web site, www.Neifeld.com. He is also a co-founder of the www.patentvaluepredictor.com patent valuation service.

The Three Weird Sisters of Patent Reform

Abstract

Good things, and often bad, come in threes. Winning the Trifecta is a good thing. Combining incompetent top PTO management, ill-considered and probably illegal patent practice rules changes, and the Patent Reform bills in Congress makes a dangerous witches' brew threatening patent attorneys, patent searchers, and the value of patents in the US. I'll present some of the prior art searching and analyses provisions of proposed rules and Patent Reform bills to consider their negative impacts on costs, available capacity to comply, and devaluing US patents if all become effective.

Roy Zimmerman
Medtronics

Roy Zimmermann is the Principal Patent Searcher for Medtronic, a large medical device manufacturer. During his 15 years at Medtronic, Roy worked initially in Medtronic's library, but has worked for more than a decade for Medtronic's chief patent counsel supporting patent attorneys, litigators, and patent portfolio managers. Roy serves on the Vendor Committee for PIUG, where he has concentrated on web-based services, Micropatent, Delphion, Lexis. He also serves on advisory boards to several online services, including Questel-Orbit. He recently joined the IPI Selection Board for the annual IPI Award.

Session on Valuable Patents – Techniques for Identification and Quantification
Session Opening Remarks

Doreen Alberts
Theravance

Biography

Doreen Alberts is the Associate Director of the Knowledge Management Department at Theravance. After 11 years as a medicinal chemist at SmithKline Beecham, Doreen transferred to the Information Management Department as an information analyst. In 2000, she was recruited to join Theravance to build their information management capabilities. Doreen is currently a member of the Advisory Committees for Questel Orbit and OVID Technologies. Doreen is one of the recipients of the 2007 PIUG Service Awards in recognition of her service to PIUG as the Annual Conference Sponsorship Committee Chair for 2005-2006 and the Strategic Planning Committee Chair for 2006-2007. She is the Program Co-chair of the 2008 PIUG Annual Conference.

Helping Others Acquire, License or Invest in Patents with Confidence

Abstract

Investors are becoming increasingly savvy in this knowledge economy. A noticeable trend has emerged within the patenting arena in which those seeking to acquire, license or invest in patented technology are asking more focused, detailed and tough questions in order to assess whether commitment is warranted. Being satiated with superficial or incomplete information or having lax attitudes towards intellectual property appropriation are becoming a distant memory, as more realize that by thoroughly scrutinizing patent rights before purchase, the exposure to infringement risks or the risk of purchasing a "lemon" can be mitigated.

As both a patent searcher and patent attorney, it has been my experience that comprehensive freedom to operate searches and patent validity investigations have become fundamental in advising clients on how to effectively approach any in- or outlicensing activity or purchase arrangements relating to patents. In order to advise clients, patent attorneys need reliable searches and this presentation will examine the features of a sound approach to patent research and analysis in support of patent acquisition, licensing or investment in patented technology. Special considerations concerning Australian and New Zealand patent law and resources will also be discussed.

Susanne Hantos
Davies Collison Cave

Biography

Susanne is the manager of the Patent Intelligence Services division of Davies Collison Cave, an Australian intellectual property law firm. Susanne is a trained chemist, a librarian and a registered Australian and New Zealand patent attorney and Canadian patent agent who specializes in conducting patent and scientific literature searches in order to advise on novelty, patent infringement/freedom to operate and patent validity issues related to chemical technology. Susanne is a member of PIUG, ACS, SLA as well as an associate member of the Institute of Patent and Trade Mark Attorneys of Australia, the Intellectual Property Institute of Canada, and the Australian Library and Information Association.

Are There Hallmarks of Important Patents?

Abstract

How many times has a client come to you and asked for a listing of “just the important patents in this field”? What is an important patent? Is there an easy way to recognize one when you see it? This study will look at some important patents, and investigate whether they have certain features that “unimportant” patents do not have.

Donald Walter
Thomson Reuters

Biography

Donald Walter joined The Scientific business of Thomson Reuters, which was then called Derwent Information, in 1992, where his primary job is to train users on Thomson Scientific and Thomson Healthcare databases, specializing in chemical and patent information. He also conducts searches and analyses for legal and industrial clients of the Thomson Reuters' Scientific Search Service, with a special emphasis on pharmaceutical and chemical subjects. He learned his craft at Exxon Research and Engineering, conducting patent and scientific literature searching for clients in the legal and technical departments. His Ph.D. from Yale is in Chemistry. He lives just outside Washington DC.

Identifying and Quantifying Valuable Patents

Abstract

The complex linkage between patents and products, coupled with a lack of transparency in patent transactions, presents a significant challenge to the patent analyst, who is often tasked with inexpensively communicating patent quality and value. This is especially true in landscape analysis, where thousands of patents must be understood and prioritized, often without having time to read most of the documents.

There are several “black box” approaches to understanding patent quality and value, such as regression models, citation ratios and other systems. None of these has the advantage of being readily applied “on the fly” by analysts that are not customers of the model owners.

It is possible for patent analysts to use data available in commonly collected bibliometric fields – and other data freely available on the web – to develop simple, inexpensive models that proxy for patent quality and value. Some metrics that can be developed in this way include geographic strength, seminality, leadership, growth impact and value chain contribution. In this presentation, the speaker will describe practices that patent analysts can use to quickly and effectively ascertain relative quality and value of patents in a complex landscape. Examples will be demonstrated via a case study in chemical industry.

Barry Brager
Perception Partners

Biography

Barry is the Founder and Managing Partner of Perception Partners(R). He leads ongoing development of patent-pending quantitative and qualitative analytical tools for data and text mining that have been used to analyze more than 250,000 patents worldwide and which have supported decisions related to more than $1 billion in financial transactions.
Barry is also the Chief Executive Officer of Starpound Corporation. Starpound is an IP management company that licenses technology to turn mobile phones into remote control devices. Barry holds one patent and multiple pending related to these endeavors.

Barry holds several leadership positions in the IP industry. Barry graduated in 1992 from Temple University, and in 2003 completed Emory University's top 10 globally-ranked Executive MBA program, graduating Beta Gamma Sigma.

 

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