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Patent Information Users Group, Inc.

The International Society for Patent Information Professionals

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Patent Information Users Group, Inc.  The International Society for Patent Information Professionals


Program

The PIUG is pleased to announce the program for the PIUG 2016 Annual Conference. When planning your trip to the conference, please keep the following events in mind so that you do not miss out on a valuable opportunity.

PLEASE BE ADVISED that attendees and speakers who are not members of PIUG will not have post-conference access to the conference presentations posted on the PIUG wiki, which is a PIUG member benefit. To enable post-conference access to PIUG conference presentations, and to also save significantly on PIUG conference registration fees, BECOME A MEMBER of PIUG by going to the PIUG Membership page.

Conference Program at a Glance

Day

Event

Time

Attendees

Saturday, May 21

Workshops

8:00am – 5:00pm

Workshop registrants

Speakers Dinner

6:30pm – 10:00pm

By invitation only

Sunday, May 22

Workshops

8:30am – 3:30pm

Workshop registrants

PIUG Business Meeting

4:00pm – 5:30pm

All conference attendees

First-time Attendee Welcome & Orientation Reception

6:30pm – 7:30pm

Check out Tips for First-Time Attendees

Opening Reception in Exhibit Hall – exhibits open

7:30pm – 9:30pm

All conference attendees

Monday, May 23

Exhibit Hall open (breakfast, 7:30am – 8:30am)

7:30am – 4:40pm

Plenary sessions

8:30am – 4:40pm

PIUG Gala & Awards Dinner

6:30pm – 7:00pm (cash bar) 7:00pm – 10:30pm (dinner)

Tuesday, May 24

Exhibit Hall open (breakfast, 7:30am – 8:30am)

7:30am – 5:35pm

Plenary sessions

8:30am – 10:20am and 1:00pm – 5:35pm

Exhibit-only Hours

10:20am – 11:50am

Networking Dinners

7:00pm – 9:00pm

Sign-up sheet at registration desk. Meal at own cost.

Wednesday, May 25

Exhibit Hall open (breakfast, 7:30am – 8:30am)

7:30am – 3:05pm

All conference attendees

Plenary sessions

8:30am – 4:40pm

Networking Dinners

7:00pm – 9:00pm

Sign-up sheet at registration desk. Meal at own cost.

Thursday, May 26

Workshops

8:00am – 3:00pm

Workshop registrants

 
In addition, your conference Registration includes conference breakfasts, lunches, and refreshments during meeting breaks for Monday, May 23 through Wednesday May 25, the Sunday Welcome Reception and the Gala Dinner on Monday night.

Registration

The deadline for Early-bird registration is April 1, after which rates will increase. Register NOW. Rates are available by clicking details under the PIUG 2016 Annual Conference on the PIUG Calendar Page.

Convene – Event App from Thomson Reuters

The PIUG 2016 Annual Conference mobile app is hosted by Thomson Reuters Convene and provides an easy-to-use app for all the information you need on the conference and easy interaction among registrants. Details are provided on the PIUG Convene App page.

Technical Session - Monday to Wednesday

The PIUG would like to inform all conference attendees that the use of photographic or recording devices of any kind to create recordings of the conference proceedings including the technical program and workshops is strictly prohibited. This includes recordings by the audience for personal use.

Please note that the speakers listed below may change if circumstances arise. Accordingly, please monitor this web page for updated information.

Monday, May 23
Morning
7:30am - 8:30am Breakfast and Open Exhibits
Sponsored by the Sapphire Sponsors
8:30am - 8:45am Welcome and Keynote Introduction
Elliott Linder, PIUG Chair
8:45am - 9:45am Keynote Presentation: The Criticality of Searching for Quality Patents
Marc Adler, Marc Adler LLC
9:45am - 10:00am Product Updates
10:00am - 10:30am Break
Sponsored by the Amethyst Sponsors
10:30am - 12:05pm Session A: Innovation & Technology Transfer - Opening Remarks
Chairperson - Cathy Chiba, Dauratus Research
10:35am - 11:00am Portfolio-Based Comparative Valuation for the Investment Pitch: A Shark Tank Primer
Kevin Hess, Patent Technics
11:00am - 11:25am Gene or genus? Genetic Sequence Motifs and Their Influence on Patentability
Kristine Atkinson, A/A Patent Investigations
11:25am - 11:50am Use of Patent Metrics to Identify Scientific Knowledge Flows and Research Collaborations at the Department of Energy National Laboratories
Vanessa Peña, Science and Technology Policy Institute (STPI), Washington, D.C.
11:50am - 12:05pm Product Updates
Monday, May 23
Afternoon
12:05pm - 1:05pm Lunch
Sponsored by PIUG
1:05pm - 3:05pm Session B: Competitive Intelligence - Opening Remarks
Chairperson - Brooke Gunter, Thomson Reuters
1:10pm - 1:35pm Tracking Innovation - Enhancing Quality of Weekly Patent Alerts
Piotr Masiakowski, Sanofi US
1:35pm - 2:00pm The Development and Growing Need for Patent Litigation Analytics
Diana J. Koppang, Neal, Gerber & Eisenberg LLP; Emily Florio, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
2:00pm - 2:25pm Trends of the Important Technologies in the Portfolio
J. Jaya Murthy, Eaton Corp.
2:25pm - 2:50pm Effective IP Competitive Intelligence for Winning Strategies, Value Creation and Competitive Advantage
Yateen Pargaonkar
2:50pm - 3:05pm Product Updates
3:05pm - 3:35pm Break
Sponsored by the Amethyst Sponsors
3:35pm - 4:40pm Session C - Opening Remarks
Chairperson - Heather Simmons, University of Illinois
3:40pm - 4:25pm A Review of Recent Efforts by USPTO to Enhance the Quality of Prior Art Found by and Provided to Its Patent Examiners
Donald Hajec, USPTO
4:25pm - 4:35pm Product Updates
6:30pm - 10:30pm PIUG Gala & Awards Dinner
Sponsored by PIUG
Tuesday, May 24
Morning
7:30am - 8:30am Breakfast and Open Exhibits
Sponsored by the Sapphire Sponsors
8:30am - 10:20am Session D - Opening Remarks
Chairperson - Dan Shalloe, EPO
8:35am - 8:45am Product Updates
8:45am - 10:00am Moderated Q&A Panel on Patent Searcher Certification
Moderator - Dan Shalloe, EPO
Andrea Davis, Nuvasive; Susanne Hantos, Davies Collison Cave; Chirag Shah, University of Illinois; and Michael Wustmans, University of Bremen
10:00am - 10:20am Minesoft Chemical Explorer – Opening Up the World of Chemical Patents
Rob Poolman, Minesoft Ltd. - Sapphire Sponsor
10:20am - 11:50am No-Conflict Open Exhibits
Tuesday, May 24
Afternoon
11:50pm - 1:00pm Lunch with Committee Meetings
Sponsored by PIUG
1:00pm - 3:20pm Session E: Patent Analysis - Opening Remarks
Chairperson - Vanessa Pena, IDA Science and Technology Policy Institute
1:05pm - 1:30pm A Framework for IP-enabled Business Strategy
Anand Rohit, TechInsights
1:30pm - 1:55pm Strategic Patent Portfolio Analysis: A Case Study
Bjorn Ulmer, PatentSight GmbH
1:55pm - 2:20pm Analyzing and Developing Patent Intelligence Competences – Benefits of a Patent Management Maturity Model
Michael Wustmans, University of Bremen - Institute of Project Management and Innovation
2:20pm - 2:45pm Patent Quality Assessment Accuracy and Its Overall Impact
Mohammed Abdul Jaleel and Sridhar Reddy, IP Decision Research & Knowledge Services
2:45pm - 3:05pm Case Study: Analyzing Patent and Non-patent Literature to Evaluate the Development Landscape for Medical Devices
John Willmore, BizInt Solutions, Inc. - Sapphire Sponsor
3:05pm - 3:20pm Product Updates
3:20pm - 3:50pm Break
Sponsored by the Amethyst Sponsors
3:50pm - 5:35pm Session F: Searching Patent Authorities - Opening Remarks
Chairperson - Jim Brown, FIZ Karlsruhe
3:55pm - 4:20pm Using Worldwide Patent Office Websites to Find Patent Information
Cynthia Gallagher, Pfizer Legal Division
4:20pm - 4:45pm Virtual Analysis on a Deodorant Strategy of Procter & Gamble Through Mandatory Hypothesis Thinking & Pseudo-experience
Tsutomu (Ben) Kiriyama, JAPIO
4:45pm - 5:10pm Global Patent Prosecution Featuring Global Dossier
Jessica Patterson, USPTO
5:10pm - 5:35pm Update from the European Patent Office (EPO)
Daniel Shalloe, European Patent Office
7:00pm - 10:00pm Networking Dinners. Sign-up sheet at registration desk. Meal at own cost.
Wednesday, May 25
Morning
7:30am - 8:30am Breakfast and Open Exhibits
Sponsored by the Sapphire Sponsors
8:30am - 10:10am Session G - Opening Remarks
Chairperson - Tom Wolff, Wolff Information Consulting LLC
8:35am - 9:35am Moderated Q&A Panel on Quality Issues in Intellectual Property
Moderator - Tom Wolff, Wolff Information Consulting LLC
Stephen Adams, Magister, Ltd.; Matt Phillips, Renaissance IP Law; Anand Rohit, TechInsights; and Stephen Tedeschi, PatentVantage
9:35am - 9:55am Implication of CRISPR/Cas-9 on Patent Searchers
Julien Doudement, LifeQuest - Sapphire Sponsor
9:55am - 10:10am Product Updates
10:10am - 10:40am Break
Sponsored by the Amethyst Sponsors
10:40am - 12:00pm Session H: Searching for Quality, Part 1 - Opening Remarks
Chairperson - Diana Koppang, Neal, Gerber & Eisenberg LLP
10:45am - 11:10am Utilizing Semantic Search of Patent and Non-Patent Literature to Drive Innovation, Increase Revenue, Optimize Operations, and Manage IP Risk
Jeff McCormack, IP.com, and Joe Buzzanga, IEEE
11:10am - 11:35am Ursula's Apple Orchard: Value-Added Patent Tools in the New Millennium
Heather Simmons, University of Illinois College of Law
11:35am - 12:00pm Quality in Manual Patent Searching Compared to Automated Tools
Andrea Davis, Nuvasive
Wednesday, May 25
Afternoon
12:00pm - 1:00pm Lunch
Sponsored by PIUG
1:00pm - 2:40pm Session J: Searching for Quality, Part 2 - Opening Remarks
Chairperson - Ron Kaminecki, Kaminecki IP
1:05pm - 1:30pm Similarity Search in Patents via Artificial Intelligence
Sumeet Sandhu, Elementary IP
1:30pm - 1:55pm Novel Approach for Locating Patent Information: Application for Pharmaceutical Repurposing Research
Rong Yang, Allergan
1:55pm - 2:15pm

Bridging the Gap: Using Company Financials and Metrics in Patent Analytics
Esmaeil Khaksari, Innography - Sapphire Sponsor

2:15pm - 2:40pm Activities of the Patent Search Grand Prix (PSGp) 2015 in Japan: Implementation of the International Section
Sakae Nakamura, Asahi Kasei Corporation
2:40pm - 3:10pm Break
Sponsored by the Amethyst Sponsors
3:10pm - 3:40pm Session K: Trends in Prior Art Searching - Opening Remarks
Chairperson - Darryl Newell, Terumo Americas Holdings, Inc.
3:15pm - 3:40pm Quality at Source: Understanding the "Dirty Database" Syndrome
Stephen Adams, Magister Ltd.
3:40pm - 4:00pm The Case for Curated Content in the Age of Algorithms
Brian Sweet, STN - Sapphire Sponsor
4:00pm - 4:25pm Searching for the Obvious
Ron Kaminecki, Questel
4:25pm - 4:40pm Closing Remarks - Looking forward to 2017
Elliott Linder, PIUG Chair
7:00pm - 10:00pm Networking Dinners. Sign-up sheet at registration desk. Meal at own cost.

Conference Abstracts and Biographies

Keynote Presentation: The Criticality of Searching for Quality Patents

The search community is unfortunately often viewed as an undervalued or outsourced resource, but expert patent and literature searching holds the key to improving patent quality. It is up to us to educate attorneys, and more importantly business leaders, about the importance of expert searching. Properly understood and utilized, the patent search community can add even greater value to R&D and patent strategy development. While the patent bar may be focused on 35 USC § 101 eligibility of computer programs and biotech inventions and the correct standards and procedures to be employed during IPR procedures, patent owners need to focus on the basics of patent quality in the search, drafting and prosecution of every patent application to obtain an effective long term competitive advantage.

Marc Adler
Marc Adler LLC

Biography

Marc Adler is an Intellectual Property Strategist and Consultant. He is a Chemical Engineer and a Registered Patent Attorney with over 30 years of experience. He acts as an IP Strategy Advisor for invention and patent portfolio development, IP transactions, and patent analytics projects. In recent years, he has been consulting to multi-national, mid-sized and startup technology based companies in a number of different industries. He served as the Chief Intellectual Property Counsel at Rohm and Haas Company for over 15 years. In that role, he was responsible for global patent, trademark, copyright, and trade secret matters. He successfully led the innovation and technology protection operations for the Company, where he instituted a unique intellectual property strategy to create sustainable competitive advantages with measurable financial returns. He has been an innovator in the use of patent analytics to identify promising next generation advances for effective R&D and product development. He has been active in intellectual property law and management issues. He was a member of the U.S. Patent and Trademark Office's Patent Public Advisory Committee. He has served as the President of the Association of Patent Counsel and the Intellectual Property Owners Association. Mr. Adler received his J.D. from St. John's University and holds a Master's degree in Chemical Engineering from the University of Florida and a Bachelor's Degree in Chemical Engineering from City University of New York.

Portfolio-based Comparative Valuation for the Investment Pitch: A Shark Tank Primer

Abstract

On the popular ABC show Shark Tank, hopeful entrepreneurs present their business plans to a panel of five potential investors, called "the Sharks." The pitch is followed by a Q&A session in which the Sharks grill the principals on their business plan. Ventures based on "innovative" or "novel" technologies are inevitably asked to explain how they will stave off competitors - i.e., do they have patents to protect their intellectual property? Viewers note that four out of five Sharks view IP as important insurance for their investment. However, entrepreneurs typically discuss their IP position after their presentation, rather than leveraging it in their pitch.

The value of intellectual property, at least in the context of operating companies, is generally viewed as providing for offense, defense, or lien collateral. For a startup, an IP position can similarly serve in defensive actions, but it can also be used as a component of the investment pitch. In this presentation, the portfolio of a startup company is analyzed. Comparative metrics are developed that demonstrate the positioning of the startup company's portfolio relative to established companies in the same technology area. A patent data set, or virtual market, is constructed from keyword, semantic, and class code analysis and used to identify companies with patents in the same technology space. Metrics, including company revenue, patent strength, and inventing efficiency are used to compare the startup to established revenue generating companies within the virtual market. Based on these indicators, a favorable patent position is presented that provides support for investment decisions.

Kevin Hess
Patent Technics

Biography

Kevin Hess is an analyst at Patent Technics, a technology consulting firm focused on intellectual property in the semiconductor and consumer electronics markets. Kevin has worked in patent licensing since 2007, focusing on valuation, acquisition, and evidence of use for semiconductor patents. His areas of interest are analytics, valuation, and market analysis.

Before establishing Patent Technics, Kevin worked as a technical expert for Intellectual Ventures where he supported portfolio strategy and licensing engagements in the semiconductor, consumer electronics, and automotive markets. Prior to IV, he was a technical expert in Freescale Semiconductor's IP licensing group. Kevin's technical background includes product engineering and R&D positions at Motorola, Freescale, Huntsman, Phillips, and JemPac, an electronics startup.

Kevin is a named inventor on over 50 US and foreign patents granted in electronics and materials. He has published on patent search strategy and semiconductor device design and reliability. Kevin holds a Ph.D. in Chemical Engineering from the University of Texas at Austin. His interests include music and guitar collecting.

Gene or Genus? Genetic Sequence Motifs and Their Influence on Patentability

Abstract

The profound effect of Supreme Court rulings on the character of what constitutes patentable subject matter has opened a labyrinth of complex factors, leading to IP reassessment and new R&D directions. As genetic engineering evolves toward more careful handling of natural sequences in response to the pivotal patentability decisions on products of nature, the issue of genetic motifs will become an increasing focus of interest. This presentation will examine what gene motifs are and how to identify them, the motivation to exploit them, and the pitfalls arising from literal chemical sequence alignment. We will survey computer tools that may be used for parsing and analyzing motifs, and look at how motifs are described, considering their relationship with obviousness, prior art and genus/species claims.

Kristine Atkinson
A/A Patent Investigations

Biography

Kristine Atkinson holds a doctorate in genetics, master's degree in cell biology, and an undergraduate degree in foreign languages and linguistics. She has written and presented analyses of nonpatent literature, lossy data compression and inclusive patent search paradigms. As principal of A/A Patent Investigations she presently does contract patent search and training for biotech and medical device projects.

Dr. Atkinson has supervised laboratories in electron microscopy, flow cytometry, immunology and protein purification, and has been a professor of legal writing, physiology, immunology, parasitology, tissue culture and communicable disease. She has worked in both public and private sectors, and is a USPTO-registered patent agent.

Use of Patent Metrics to Identify Scientific Knowledge Flows and Research Collaborations at the Department of Energy National Laboratories

Abstract

The Department of Energy's (DOE) 17 national laboratories perform cutting edge science and technology to accomplish DOE's missions in science, energy, and nuclear security. Scientists and engineers from around the world and across sectors are driven to collaborate with the national laboratories for the opportunities to interact with world-class scientific and technical experts and use unique facilities and instrumentation. This presentation provides findings from an analysis of patents affiliated with the DOE national laboratories from 2010 to 2015. The analysis includes (1) the use of patent metrics to measure patenting activities and trends, (2) the tracing knowledge flows and impacts through patent citation analysis, and (3) the identification of collaborations across sectors (e.g., joint-assignees). The presentation also describes limitations on the use of patents metrics to measure science and technology impacts of research organizations and suggestions for the use of patent data for analysis in similar contexts.

Vanessa Peña
Science and Technology Policy Institute (STPI), Washington, D.C.

Biography

Vanessa I. Peña is a Research Associate at the Science and Technology Policy Institute (STPI). She holds dual master's degrees from Columbia University and the London School of Economics and a bachelor's degree from the Massachusetts Institute of Technology. Most recently, her work focuses on efficiencies and effectiveness of the Federal research and development laboratories and policies to support public and private sector innovation. Since joining STPI in 2009, she has also worked heavily on program evaluations, emphasizing data-driven approaches and bibliometrics, to analyze National Science Foundation and National Institutes of Health research portfolios.

Tracking Innovation - Enhancing Quality of Weekly Patent Alerts

Abstract

Patents give inventors exclusive rights in exchange for the detailed public disclosure of their inventions. The disclosure requirements make patents a valuable source of technical and scientific information, used at many companies to monitor progress of their competitors. Patent database vendors offer customizable alert services to facilitate such monitoring. However, as the frequency and the number of queries increase, so do the costs and the effort required to process the alerts. We will discuss a custom software tool developed to address these problems. In particular, we will describe how a switch from a more traditional approach to a scheme using PatBase API (application programming interface) has allowed us to produce weekly patent alerts which have more attractive and relevant content, are less expensive and easier to prepare, and enjoyed a significant increase in popularity.

Piotr Masiakowski
Sanofi US

Biography

Piotr majored in biology and biochemistry in his native Poland, before earning his PhD in biochemistry and molecular biology from the University of Connecticut. He did post-doctoral research in Strasbourg, France and at Stanford University. At Regeneron Pharmaceuticals, Inc., he progressed from a bench scientist to the director of bioinformatics. Currently, Piotr works as patent searcher at Sanofi and develops the PatMOb software at www.genemob.com.

The Development and Growing Need for Patent Litigation Analytics

Abstract


Over the past few years, products have developed and enhanced to provide litigation and prosecution analytics. Patent law is the primary area tackled by these products - incorporating federal courts, PTAB, and prosecution data. This program will focus on how these litigation analytics tools are being used by law firms to predict costs and timelines to key decisions, recommend jurisdictions based on motion success and speed of procedures, and profile judicial decisions. These kinds of statistics are being used today by firms to pitch new clients or new projects for existing clients. Lastly, the program will discuss what is lacking in these tools and our recommendations for further development by the designers of these databases.

Biographies

Emily Florio
Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Emily Florio is the Manager of Library Services at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, one of the world's largest intellectual property firms. She is responsible for the direction, planning and development of the firm's research and information resources across the firm's 10 US and international offices. Emily collaborates with firm practice group and administrative leadership to infuse the library's resources and expertise with initiatives, projects and vision.

Prior to joining Finnegan, Emily was with Fish & Richardson for 8 years as their Information Resources Librarian and the Manager of Libraries. Emily is a Certified Knowledge Manager from the Knowledge Management Institute, obtained her MLS from Simmons College and her BA from the University of Vermont.

Emily has over a decade of experience and currently serves on the executive boards for the Law Librarians' Society of Washington, DC and the American Association of Law Libraries.

Diana J. Koppang
Neal, Gerber & Eisenberg LLP

Diana Koppang is the Library Manager of Neal, Gerber & Einsenberg, LLP - a Chicago law firm that practices in the full range of civil law, with an emphasis on Intellectual Property. She is responsible for managing the firm's library and research services, including advanced research projects and competitive intelligence for all practice areas and firm administration. Prior to Neal, Gerber, Diana was the Information Resources Coordinator at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson - a trademark boutique firm in Chicago. Diana has twelve years of library and research experience, predominantly in the area of intellectual property law.

Diana has previously presented on intellectual research topics for the American Association of Law Libraries (AALL), the Private Law Libraries and Information Professionals (PLLIP) Special Interest Section, the Chicago Association of Law Libraries, and PIUG. She currently serves as Chair of the Intellectual Property Caucus for AALL-PLLIP and as Secretary for the Chicago Association of Law Libraries.

Trends of the Important Technologies in the Portfolio

Abstract

The world is fast moving to an interesting place, where corporate strategies are driven by their Intellectual Property strategies and assets. A good way to understand the strengths and weaknesses of a company is to understand its IP assets and patent filing trends - the first requirement here is to make a comprehensive study of the portfolio and then explore the futuristic trends of the important technologies in the portfolio. At Eaton, we have developed an innovative way to understand a business patent portfolio. Here we will discuss the analytics surrounding understanding the patent portfolio. Then we will discuss how this information is used in selecting the technologies with the most potential. Finally, we will discuss the process to create strategic intelligence reports and look into the various facets of information which go into the creation of these reports. These reports will help you understand and attempt to predict the way the technology may advance.

J. Jaya Murthy
Eaton Corp.

Biography

Dr. Murthy leads the Intellectual Property Centre of Excellence (IPCoE) for Eaton Corp. Over the course of the past ten years, she has gained experience in IP creation, protection, management and monetization and has applied the concepts in various scenarios to help create game changing IP. She has worked extensively in the field of Intellectual property in the domains of chemistry, energy, catalysis, agriculture and engineering. Before joining Eaton, Jaya had worked with corporates like GE, Chevron and Thomson Reuters, Law Firms, University of California and University of Mumbai and as an IP Consultant.

Effective IP Competitive Intelligence for Winning Strategies, Value Creation and Competitive Advantage

Abstract

Competitive Intelligence is widely defined as understanding and anticipating the competitive environment within which a company operates. Effective IP competitive intelligence analysis highlights emerging IP risks, provides patent portfolio benchmarking for technologies of interest, predicts competitor technology development efforts, and the possible commercial deployment of technology. The analysis enables informed decision-making to create and sustain winning IP and technology strategies for competitive advantage. This presentation provides a usable framework for IP competitive intelligence analysis driven by strategic intent and consisting of a cost-effective process, multiple commercial analysis tools and IP savvy team. This presentation differentiates and advocates the benefits of having both "IT driven statistical quantitative analytics" and "patent analyst driven qualitative analysis" with examples.

Yateen Pargaonkar

Biography

Yateen Pargaonkar's patent analytics and competitive intelligence experience includes leadership roles of increasing responsibility in the Energy sector, Consumer Goods, Legal, Biotechnology, and Pharmaceuticals. Yateen was the IP Competitive Trends Manager at Chevron Energy Technology Company as well as a Senior Competitive Intelligence Manager at Procter & Gamble. He has also worked at different IP law firms and taught a course at UCSD on Patent Searching & Internet Research. Yateen has degrees in chemistry, biochemistry, and molecular biology, as well as three years of research experience at Columbia University. He is a registered U.S. Patent Agent and an active member of PIUG.

A Review of Recent Efforts by USPTO to Enhance the Quality of Prior Art Found by and Provided to Its Patent Examiners

Abstract

While the USPTO has always made quality a point of emphasis with its examiners, it has recently introduced several initiatives to enhance the quality of their work product.  These includes the introduction of the Cooperative Patent Classification system, Global Dossier, and international work sharing projects.  The focus of these efforts is to provide examiners with greater access to prior art collections and to emphasize putting the best art before the examiners.  The USPTO has recently launched its Enhanced Patent Quality Initiative (EPQI).  Among the EPQI programs, two in particular are focused on exposing USPTO examiners to relevant prior art early in prosecution.  These include the Automated Pre-examination Search Pilot and Post Grant Outcomes.

Donald Hajec
Assistant Deputy Commissioner for Patent Operations

Biography

Donald Hajec is currently an Assistant Deputy Commissioner for Patent Operations at the USPTO. Don's career at the USPTO spans 34 years, and includes roles as a patent examiner, a Supervisory Patent Examiner, and a Quality Assurance Specialist. In 2002, Don was appointed to the Senior Executive Service as a Technology Center Director. Don is the recipient of numerous awards, including receiving the Department of Commerce Gold (Cooperative Patent Classification (CPC) Implementation) and Silver (Patent Assistance Center) Medals and twice received Bronze Medals. Some of Don's recent special projects include the CPC Joint Board, the Enhanced Patent Quality Initiative (EPQI) Clarity of Record Training, and the Joint Labor Management Team.

Moderated Q&A Panel on Patent Searcher Certification

Abstract

Certification for patent searchers is an issue our profession has been grappling with for some time. These panelists represent a variety of backgrounds and viewpoints. We anticipate a lively discussion on a variety of certification schemes-educational standards, ethical standards, and testing, to name a few. Questions to the panel can be submitted prior to the conference to Ron Kaminecki at ron at kaminecki dot com to be taken up by the moderator or posed directly to the panel during the event.

Panelist Organization
Andrea Davis Nuvasive

Andrea Davis is Manager, Intellectual Property Research at Nuvasive Inc. She has an MSc in Engineering Physics from Lund's Institute of Technology, Sweden, is a registered patent agent and has over 17 years of patent searching experience. Andrea started her professional patent searching career at a patent search firm reviewing the paper patents in the USPTO's Public Search Room. The second half of her career, Andrea has established the patent searching department at Nuvasive, managing the FTO process and actively participating in litigation and B&D projects.

Susanne Hantos Davies Collison Cave

Ms Susanne Hantos is a Senior Associate and the Manager of the Patent Intelligence Services division of Davies Collison Cave , an Australian intellectual property law firm. Susanne is a registered Australian and New Zealand patent attorney and a Canadian patent agent who specializes in searching and assessing patent and non-patent information in order to provide intellectual property advice to corporations, universities, government agencies, non-government organisations and non-profit entities. She has a B.Sc. Honours degree in Applied Chemistry from the University of Guelph, Ontario, Canada and a M.Sc. degree in Organic Chemistry from the University of Ottawa, Ontario, Canada. Susanne also has a Master of Library and Information Science (MLIS) degree from the University of Western Ontario, Canada and a Master of Industrial Property (MIP) degree from the University of Technology, Sydney, Australia. Since 2008, she has been a volunteer co-ordinator of the international patent information professional certification initiative, QPIP. She is also the current Immediate Past President of the Patent Information Users Group (PIUG). In June 2014, Susanne was appointed as the Co-Editor-in-Chief of World Patent Information, a pre-eminent peer-reviewed journal for those who have an interest in intellectual property information.

Chirag Shah University of Illinois

As Managing Director and Founder of PatentVanatge, Chirag Shah focuses on managing a team of thirty and developing outside client relationships from our Chicago and Washington DC offices. An expert in complex and critical patent research, Chirag and PatentVantage have pioneered unique search algorithms to consistently yield high quality patent insights for its clients. Concurrently, Chirag is a Professor at The University of Illinois College of Law where he created a curriculum to train advanced law students the principles of patent research and strategy. The course is also taught at The National Institutes of Health.

Mr. Shah is an active investor in early stage technology companies, where he advises and mentors entrepreneurs. He entered the patent research world after gaining experience at the U.S. Patent and Trademark Office and Fox Rothschild LLP. Chirag is an honors graduate of The University of Pittsburgh School of Law and holds undergraduate degrees in chemistry, physiology and graduate degree in biotechnology from The Johns Hopkins University.

Michael Wustmans University of Bremen

Michael Wustmans is a research associate at the Institute of Project Management and Innovation at the University of Bremen, Germany. He started his dissertation in July 2014 with a research focus on patent management and patent information retrieval. For this dissertation, he is currently working with different industrial partners on the development of their patent management. He holds an M. Sc. degree in Industrial Engineering and Management from the University of Siegen, Germany.

 
Moderator: Dan Shalloe, EPO


Minesoft Chemical Explorer – Opening Up the World of Chemical Patents

Abstract

We will discuss the challenges of traditional chemical structure searching and how the advent of chemical name entity recognition technology, utilized by Minesoft Chemical Explorer, is providing an alternative approach.

From developing a search strategy to visualizing results, we will use examples to demonstrate a number of features including:

  • Chemical Explorer
    • Fast, user friendly and intuitive interface for both chemists and non-chemists
    • "Lookup" feature to easily identify a structure of a known compound
    • Links to PubChem, Chemspider and Wikipedia for further information
    • Seamless integration with PatBase to identify publications disclosing the compound of interest in each family
  • TextMine
    • Visualize and pinpoint the exact location of the chemical within the full-text
    • Identify and highlight other chemical, disease, polymer, genetic and physical terms disclosed in the full text

This presentation will demonstrate how any user can benefit from the innovative features in Chemical Explorer and TextMine to open up the world of chemical patents.

Rob Poolman
Minesoft Ltd.

Biography

Rob is currently a Senior Manager (Innovation and Consulting) at Minesoft Ltd, UK. In 2000, and having completed a PhD in Biochemistry, Rob started his career at Pfizer as a Biotechnology Information Consultant providing biomedical, patent and competitive intelligence to both research scientists and patent attorneys. During 6 years at Pfizer, he helped form and lead a high performing team of information professionals within the Legal division. In 2006, he joined Novartis to create and manage the NIBR Search and Analytics team and during the last 3 years at Novartis, Rob completed an MBA at Warwick Business School which allowed him to take on additional operational and managerial responsibilities. With over 14 years of experience in the information industry, Rob has recently joined Minesoft to spearhead their future product development, to enhance their consultancy based approach and to bring an end user perspective to the company.

A Framework for IP-enabled Business Strategy

Abstract

Intellectual property rights-intensive industries continue to increase their share of global economic activity. Integration of IP strategy into business planning is the difference between entering a market with confidence and responding to a patent infringement litigation. Too often, however, IP departments do not have a seat at the strategic planning table despite the valuable insight they bring to the business. Likewise, an effective IP strategy cannot be developed without knowledge of the business strategy.

This presentation will discuss best practices in patent analysis and visualization techniques to help decision makers decode patent information to formulate a patent strategy that is effective and delivers business value. These best practices include:

  • Developing a highly customized taxonomy that maps patents to business goals, technologies and products / services.
  • Employing a Value Map to illustrate the key patent holders in the value chain.
  • Performing portfolio balance comparisons to identify strengths, weaknesses, opportunities and threats for a client.

We present a case study that helped a major client in formulating an IP strategy that would facilitate its entry in to the smart grid market.

Anand Rohit
TechInsights

Biography

Anand Rohit is an architect in the IP Services Engineering Solutions team at TechInsights, the leading provider of technical analysis and patent portfolio services. He is an experienced patent professional who has worked on all aspects of the patent life-cycle with innovators, strategic planners, patent agents and attorneys. With over 8 years of experience in patent analytics and patent landscaping, Anand specializes in developing frameworks for effective patent strategy. He has extensive experience in using patent analytics, landscaping and technology analysis to help clients capture and extract value from their patent portfolios through managing patent risks, identifying potential patent creation opportunities and strategic patent portfolio building. Anand's professional interest lies at the intersection of management consulting and patent strategy; combining his talent for spotting technology trends with actionable business advice. He has a MEng in Communications Engineering from the University of Alberta, and is also a Certified Patent Valuation Analyst.

Strategic Patent Portfolio Analysis: A Case Study

Abstract

This session will examine how to validate Key Performance Indicators (KPI) for both internal management and external communication, e.g. in annual reports. Internally KPI provides 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.

Björn Ulmer
PatentSight GmbH

Biography

Björn is Managing Director of PatentSight GmbH, an established university spin-off providing strategic patent analytics and consulting services. Björn has a rather atypical background for an IP professional. He is an economist by education and started his career as a Top Management Consultant at The Boston Consulting Group (BCG) in 2003 with an extensive business resume. In 2012 Björn was asked to re-build and lead the patent department as Director & Head of Corporate Patent Management of Deutsche Post DHL Group in Bonn which he has transformed from a cost to a lean profit center. His key achievements include a newly developed and implemented group wide IP strategy linked to the business strategy, an optimized cost efficient portfolio, and out-licensing deals by using the Patent Asset Index™. He has three kids and lives in Cologne.

Analyzing and Developing Patent Intelligence Competences – Benefits of a Patent Management Maturity Model

Dealing with patent information we will focus on the dimension Intelligence and show the capabilities which are required for patent intelligence and how they can be described in different maturity levels. Furthermore, we will show how the development in this dimension can be managed and what measures can be derived to improve the basic situation of the company. Additionally, we will show how a maturity model can be used as a documentation of quality in patent management.

Michael Wustmans
University of Bremen - Institute of Project Management and Innovation

Biography

Michael Wustmans is a research associate at the Institute of Project Management and Innovation at the University of Bremen, Germany. He started his dissertation in July 2014 with a research focus on patent management and patent information retrieval. For this dissertation, he is currently working with different industrial partners on the development of their patent management. He holds an M. Sc. degree in Industrial Engineering and Management from the University of Siegen, Germany.

Patent Quality Assessment Accuracy and Its Overall Impact

Abstract

The patent system is a rich source of technical and commercial knowledge, thus, patent analysis has long been considered a useful tool for R&D management and techno-economic analysis. Patent analysis is a very broad term in reality and has different meaning for different business objectives across different levels of people in an organization. Recently, the strategic importance of patent analysis has caught the attention in technology management as the process of innovation has become more complicated. Insights extracted from analysis helps assessing technical feasibility by research groups, legal feasibility by legal group, and market feasibility by business group, and also provide transparency and returns to investors and stakeholders. Furthermore, identifying the worth of a patent or portfolio helps in reducing maintenance cost, gives negotiating power in generate new revenue streams through selling and licensing strategies. In the past and currently there are many methods, proposed and practiced, either in assessing the feasibility in defending and forecasting a company's probability of success or identifying the worth of patent quality. However, those approach and findings fail to address the key issue of quality by appropriate validation. In this paper we develop and propose an improvised method that overcomes the limitations of existing approaches and offers a more accurate assessment of a patent or portfolio, though, will cost initial efforts in-terms of contribution from technology, legal and business group experts but surely yield high internal transparency, collaboration and long term benefits and results. Moreover, we believe there is no need of developing new benchmarking indicators. However, available indicators, cleansed and complete, should be applied on the basis of quality standards defined by the patent law, stakeholders and by different people across the organization as mentioned above.

Biographies

Mohammed Abdul Jaleel
IP Decision Research & Knowledge Services

Mohammed Abdul Jaleel (Founder and CEO of IP Decision) earned his Bachelor's degree in Mechanical Engineering with specialization in Production Technology from Osmania University and Post Graduate Diploma in Patent Law form National Academy of Legal Studies and Research (NALSAR).

Abdul brings a successful track record of leadership with both start-ups and established companies, and has more than 15 years of experience in R&D and innovation management. Having a wide range of experience in diverse technology and management areas. Through his many experiences, Abdul identified unmet needs in the IP service industry, and invented and designed the IP Mashboard to meet those needs after spending several years working with different clients at varying levels and with unique interests. He also developed a proprietary methodology for assessing the relationships between competitive patent landscapes and client patent portfolios using a 360° analysis approach.

His paper on "Patent Analysis + Market Intelligence = Competitive Omniscience" was selected for presentation by Society of Competitive Intelligence International Conference and exhibition, New York, 2007. Abdul has also been a speaker at a national seminar held by IIPC on the topic of "Technology Trends, Analysis & Competitive Intelligence", in Hyderabad, India. His current research working paper is on "Patent Quality Assessment Accuracy and Its Overall Impact.

Sridhar Reddy
IP Decision Research & Knowledge Services

Sridhar Reddy is Director of IT at IP Decision Research & Knowledge Services. Prior to his current role at IP Decision, he has over 10 years of experience in the information technology industry with expertise in data management. He has a Bachelor's degree in Mechanical Engineering from Osmania University and an MS in Computer Sciences from Bradley University.

Case Study: Analyzing Patent and Non-patent Literature to Evaluate the Development Landscape for Medical Devices

Abstract

In this case study of a medical device topic ( bioabsorbable stents), we will evaluate how patents, clinical trial information and non-patent literature can be used to assess the development landscape for medical devices.

John Willmore
Vice President, BizInt Solutions, Inc.

Biography

John Willmore is Vice President, Product Development, for BizInt Solutions, Inc. and manages the development of all aspects of the BizInt Solutions product line. John has over 20 years of experience in processing, analyzing and integrating patent and drug pipeline information, and has worked closely with patent and drug pipeline publishers over that period. He was the head of the TRW Smart Charts team at TRW, Inc. and along with Diane Webb, founded BizInt Solutions in 1996. John has a B.S. in Electrical Engineering from Rice University and over 20 years experience in software development.

Using Worldwide Patent Office Websites to Find Patent Information

Abstract

The Patent Searching & Information team in the Intellectual Property Department at Pfizer regularly receives requests to find patent information for countries not covered by commercially available resources. As a team, we have devised a solution that provides our clients with the patent information they need quickly, easily and without accruing any cost. We did this by creating guides for the countries not covered by the commercially available databases so clients can navigate through these patent office websites on their own and (hopefully) find the information they need. This presentation will discuss some of the pleasant surprises as well as some of the challenges encountered during the process of creating the guides.

Cynthia Gallagher
Pfizer Legal Division

Biography

Cynthia Gallagher has been part of Patent Searching & Information (formerly known as GLIST) in the Intellectual Property department at Pfizer since 2005. When she started at Pfizer, she provided search support for chemistry related patent search requests and now provides search support for biotechnology related patent search requests. She started her career as an information Scientist as a chemistry searcher at Merck in 2004. She has a PhD in Chemistry from the University of Vermont, an MA in Biology from Lehman College, CUNY and a BA in Chemistry from the College of the Holy Cross.

Virtual Analysis on a Deodorant Strategy of Procter & Gamble Through Mandatory Hypothesis Thinking & Pseudo-experience

Abstract

At Japanese one-year-long school for Patent Information Map Analysis (PIMA), pseudo-experienced has been practiced under the concrete theme. (Ex. A deodorant of Procter & Gamble) 1. Learn the necessity to integrate Non-Patent Information and Patent Information through flagged patents. 2. Mandatory goal image can be drawn at first in deductive method from self-talk and the desire. 3. Mandatory hypothesis without a conflict can be identified objectively and logically through flagged Patent Information. Case-studies of main products are accomplished to grasp deodorant strategy of Procter & Gamble. Virtual searching will lead to potential forecast of some trend of a company. Even though we can't enter the research center in Cincinnati in reality, but we can almost look at "Search Inside" there virtually from outside.

Tsutomu (Ben) Kiriyama
JAPIO

Biography

Tsutomu Kiriyama is Chair of PDG of INFOSTA in Japan. He is a guest researcher of Japio. He is also an adviser of HAYABUSA (falcon) International P.O. He is also a schoolmaster of PIMA school of Raytec. Co.

Global Patent Prosecution Featuring Global Dossier

Abstract

The USPTO created the Office of International Patent Cooperation (OIPC) in March 2014 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. One of these initiatives is 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.

Jessica Patterson
USPTO

Biography

Jessica Patterson currently serves as a Program Manager in the Office of International Patent Cooperation, overseeing the implementation of key initiatives in support of the organization. In addition, Ms. Patterson is the manager of the Global Dossier program, a complex, strategic initiative modernizing the international patent system by providing cutting-edge services for all stakeholders.

Ms. Patterson began working at the USPTO in 2006 and has served in many leadership roles throughout her career. She has been involved with the Global Dossier project since 2012. In 2014, Ms. Patterson also served as President of the USPTO's Asian Pacific American Network, a voluntary employee organization comprised of more than 800 members.

Ms. Patterson holds a Bachelor of Arts in Government & Politics and Criminal Justice & Criminology from the University of Maryland, and a Master's in Public Policy, with a focus on International Governance, from George Mason University.

Update from the European Patent Office (EPO)

Abstract

There's a lot going on at the EPO. 2016 is set to be the big build-up year for the unitary patent, and users are already asking what the impact will be for patent information. Then there are developments such as full-text searching in Espacenet and easier access to patent statistics via the new PATSTAT Online service. This presentation will offer a tour of the things you need to know to be up-to-date with patent information from the EPO.

Daniel Shalloe
European Patent Office

Biography

Dan Shalloe, a mechanical engineering graduate, joined the European Patent Office as a patent examiner in 1989 and moved to the newly formed Vienna office in 1991. Since that date, he has specialised in patent information. He is the editor of the EPO's Patent Information News newsletter and project manages the EPO's Patent Information Conference. He has spoken at the PIUG annual meeting a number of times in the past, as well as IPI-Confex. Since 2002 he has been the contact person at the EPO for issues relating to certification of patent searchers.

Moderated Q&A Panel on Quality Issues in Intellectual Property

Abstract

The theme of this year's PIUG Annual Conference is "Patent Information: Our Continuing Quest for Quality." Quality can take many forms: quality in patent filings, value-added indexing, quality in patent searching, quality in language transliteration and translation. Questions to the panel can be submitted prior to the conference to Ron Kaminecki at ron at kaminecki dot com to be taken up by the moderator or posed directly to the panel during the event.

Panelist Organization
Stephen Adams Magister, Ltd.

Stephen Adams is the managing director of Magister Ltd., a UK-based consultancy specialising in patents information founded in 1997. Mr. Adams holds a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London, and is a Member of both the Royal Society of Chemistry and the Chartered Institute of Library and Information Professionals (CILIP). He is the author of two editions of "Information Sources in Patents", currently published by Walter de Gruyter KG, and serves on the Editorial Advisory Board of the Elsevier journal "World Patent Information". He received the IPI Award in 2012 for outstanding contribution to patent information. He is the current Vice-Chair of PIUG Inc., the International Society for Patent Information.

Matt Phillips Renaissance IP Law

his experiences as a judicial appellate law clerk, patent examiner, and systems engineer to help clients with all their patent needs. Based on his experiences as a law clerk and patent examiner, Matt can look at patent prosecution and litigation issues from the perspective of the decision maker. From the vantage of a systems engineer, Matt seeks to fully understand the client's technology, objectives, opportunities, and risks to deliver effective advice and service.

Anand Rohit TechInsights

Anand Rohit is an architect in the IP Services Engineering Solutions team at TechInsights, the leading provider of technical analysis and patent portfolio services. He is an experienced patent professional who has worked on all aspects of the patent life-cycle with innovators, strategic planners, patent agents and attorneys. With over 8 years of experience in patent analytics and patent landscaping, Anand specializes in developing frameworks for effective patent strategy. He has extensive experience in using patent analytics, landscaping and technology analysis to help clients capture and extract value from their patent portfolios through managing patent risks, identifying potential patent creation opportunities and strategic patent portfolio building. Anand's professional interest lies at the intersection of management consulting and patent strategy; combining his talent for spotting technology trends with actionable business advice. He has a MEng in Communications Engineering from the University of Alberta, and is also a Certified Patent Valuation Analyst.

Stephen Tedeschi PatentVantage

Dr. Stephen Tedeschi, PhD is a Partner at PatentVantage, an expert prior art research and insight firm, where he focuses on prior art search effectiveness and quality, developing the analyst team, operational workflow efficiency, and expanding the business unit into new markets. He has 7 years of experience conducting prior art searches as a Subject Matter Expert in Materials Science and Chemistry and as a search department director leading a global patent analyst team and managing projects for customers around the world. Dr. Tedeschi has taught prior art searching to a global audience including Patent Attorneys, Scientists, Engineers, and Patent Analysts in the US, England, and Japan and is an Adjunct Faculty member in the National Institute of Health's FAES program. He received his Masters and PhD in Materials Science and Engineering from the University of Florida and his Bachelors in Ceramic Engineering and Glass Sciences from Alfred University.

 
Moderator: Tom Wolff, Wolff Information Consulting LLC

Implication of CRISPR/Cas-9 on Patent Searchers

Abstract

Biotech patent searchers are masters in the art of knowing which tools to use and when to use them to accomplish a wide range of research tasks. As new technologies like CRISPR/Cas-9 are being adopted by big pharmaceutical, biotech, agrochemical, and synthetic biology companies, patent searchers have to adapt and understand how these technologies present new search challenges. A CRISPR/Cas-9 case study will be presented to illustrate these challenges and solutions to overcome them.

Julien Doudement
LifeQuest

Biography

Julien leads the efforts behind the LifeQuest product. Also an expert in the use of GenomeQuest, he advises customers on patent search best practices for both products, while advancing new product features and content delivery. With 10 years at the company, he combines extensive biological research experience with a deep understanding of the GQ platform. He holds Master Degrees in Biology and Bioinformatics.

Utilizing Semantic Search of Patent and Non-Patent Literature to Drive Innovation, Increase Revenue, Optimize Operations, and Manage IP Risk

Abstract

In this session, you will learn the power of semantic search to analyze your IP position in the market, assess competitive threats and evaluate partnership and licensing opportunities. We will present real-life case examples of how IP.com's proprietary cognitive intelligence technology drives the patent and non-patent literature search platform; and, how we have solved specific organizational needs.

Jeff McCormack
IP.com

Joe Buzzanga
IEEE

Biographies

Jeff McCormack is Vice President of Product Management at IP.com. He is responsible for prioritization and execution of product and analytical features for InnovationQ, InnovationQ Plus and IP.com's portfolio of analytical reports. Throughout his career Jeff has embraced analyzing data and developing solutions to solve complex problems. Prior to his role at IP.com, Jeff's work experience included more than 12 years in the investment industry as a healthcare analyst and portfolio manager, and Vice President, Strategy and Business Development at Manning & Napier. Jeff holds a B.A. in Mathematics with honors from Nazareth College. He was awarded the CFA charter in 2007 from CFA Institute.

Joe Buzzanga is a Senior Product Manager at IEEE where he is responsible for a number of digital subscription products, including the newly launched patent search platform, InnovationQ Plus. Prior to IEEE, Joe was a Product Manager at Elsevier, where he was responsible for illumin8 and Engineering Village. He also has extensive product and marketing experience at technology companies, including Intel Corporation, 3Com, and Bellcore (now Ericsson). He has an MBA from Rutgers University as well as an MLS and MA (Philosophy), both from the University of Wisconsin-Madison.

Ursula's Apple Orchard: Value-Added Patent Tools in the New Millennium

Abstract

A decade ago, Dr. Ursula Schoch-Grübler, Senior Vice President of BASF Group Information Center, published an article expressing apprehension about the future of patent searching. Her concerns centered on the fate of value-added commercial patent databases when compared to government patent authorities free patent databases on the web. Would expensive commercial databases survive in a world where patent searching is available for free? Her most dire predictions have not come true. Commercial patent databases are alive and well, although some of the players have changed. This presentation will examine how the patent information landscape has transformed over the course of the past decade, including some unforeseen developments, most notably the rise of "big data" as applied to patent information.

Heather Simmons
University of Illinois College of Law

Biography

Heather J. E. Simmons is an Assistant Professor of Library Service at the University of Illinois Urbana-Champaign. Previously she worked at General Motors for 17 years, and before that she was the Assistant Director of Wayne State University Law Library. She has a BA in Classical Archaeology and an MA in Library Science from the University of Michigan, and a JD from Wayne State. Heather was admitted to the State Bar of Michigan in 1985. She is active in the American Association of Law Libraries, serving on its executive board from 1997-2000. She is a member of PIUG's Member Relations Committee. Research interests include access to patent information, patent searching and patent classification. Her most recent article is: "Cranky no more: The life and legacy of Charles Franklin Kettering," World Patent Information, vol. 44, March, 2016.

Quality in Manual Patent Searching Compared to Automated Tools

Abstract

Several kinds of patent searches (FTO, invalidity, collection) were conducted both with traditional manual searching by professional patent searchers and through various automated and semi-automated patent tools. The results were compared in order to evaluate the quality and usefulness of non-manual patent searching tools.

Andrea Davis
Nuvasive

Biography

Andrea Davis is Manager, Intellectual Property Research at Nuvasive Inc. She has an MSc in Engineering Physics from Lund's Institute of Technology, Sweden, is a registered patent agent and has over 17 years of patent searching experience. Andrea started her professional patent searching career at a patent search firm reviewing the paper patents in the USPTO's Public Search Room. The second half of her career, Andrea has established the patent searching department at Nuvasive, managing the FTO process and actively participating in litigation and B&D projects.

Similarity Search in Patents via Artificial Intelligence

Abstract

This talk will describe our experiments with modern Artificial Intelligence as applied to patent analytics. The AI models each word by capturing its local context in a sentence. It automatically generates data-based vocabularies for different patent classes - allowing a one-click lookup of semantically close words ('onym's, adjective modifiers, etc.). These word models enable a new free-text 'similarity' search for query keywords, snippets, and documents. Preliminary results show that 'similarity' search outperforms the traditional keyword-Boolean query syntax, and provides better performance and transparency than traditional semantic search.

Sumeet Sandhu
Elementary IP

Biography

Dr. Sumeet Sandhu is CEO and Founder of Elementary IP, which is an Enterprise Software company providing next generation software tools for patent search and analysis based on modern Artificial Intelligence. Before EIP, she served in various R&D, management and business roles at Intel for 10 years. She is an inventor on over 55 patents, with several implemented on millions of wireless devices worldwide. She holds Electrical Engineering degrees from Stanford (PhD) and MIT (MS, BS).

Novel Approach for Locating Patent Information: Application for Pharmaceutical Repurposing Research

Abstract

Drug repurposing refers to the re-development and re-purposing of existing marketed drugs to new indications that are currently not approved. It is estimated that among more than 3,000 active pharmaceutical ingredients (APIs) approved by US FDA, nearly 65% are marketed for multiple indications. Compared with traditional drug development, wherein drug screening and initial toxicity testing can take more than five years, drug development by repurposing can proceed directly into the clinical phase. Thus, this approach is favored by the pharmaceutical industry to shorten development times. When companies engage in drug repurposing, the first task is to ensure freedom-to-operate (FTO) and/or identify potential risks of FTO. Conducting FTO is not a big challenge for a single API on a single indication, but it is almost impossible when you are trying to do this for hundreds of APIs against multiple indications. Presented here is a novel use whereby a commercial search engine and embedded analysis tool are used to first generate a landscape map for different indications, and then produce a heat map/hit grid showing where each API is located in the landscape. The maps are interactive and dynamic, allowing decision makers not only to see the general picture, but also to drill down to a specific API for a specific indication. This approach has proven successful to process dozens of APIs in a matter of few hours and rapidly narrow the set to lead candidates.

Rong Yang
Allergan

Biography

Rong Yang earned his Ph.D. in Pharmaceutical Sciences from Univ. of Florida, College of Pharmacy, in 2002. Rong is a registered Patent Agent (USPTO Registration No. 60834, 2007) and is Senior Information Scientist - Patent Liaison, Allergan, since 2008.

Bridging the Gap: Using company financials and metrics in patent analytics

Abstract

Many business executives are fluent in the language of financial indicators and performance metrics.  Few, however, can speak with confidence in the language of patent analytics, lessening the effect of your executive communications.  Bridge this pivotal gap during our  presentation, where we’ll use easy to understand visuals and measures, building upon your existing knowledge of familiar words and phrases.  Specifically, the presentation will provide an overview of common company terms for financials, metrics, and resources for mining financial data, and demonstrate how it all intersects with patent analytics.  You will leave with the information necessary to speak with confidence in all your patent analytics related executive communications.

Esmaeil Khaksari
Innography

Biography

Esmaeil directs new services R&D at Innography. He brings two decades of experience in data extraction, manipulation, and presentation to every engagement. In 2014, he standardized and launched a suite of 12 core Innography service offerings, including Patent Market Tracker. New offerings focus on blending AI and human analysis techniques to bring greater value at lower cost. Esmaeil has published over 25 articles & whitepapers in Intellectual Property analytics. He regularly speaks at industry conferences, on-site events, and webinars. Esmaeil holds an M.B.A. and B.S. in Computer Science from Boston College.

Activities of the Patent Search Grand Prix (PSGp) 2015 in Japan: Implementation of the International Section

Abstract

The Patent Search Grand Prix (PSGp) has been held annually since 2007. In PSGp, the participants use online databases via PCs at the examination venues to find answers to specific patent search questions. We have reported the activities of PSGp in the PIUG Conference for the past 2 years. Awareness of PSGp has risen year by year, PSGp2015 was held in the three districts (Tokyo, Osaka, and Sendai) achieving the highest number of participants last year. In addition, in the PSGp2015, as the special event of the organizer IPCC's 30th anniversary, the international section was created. Ten guest searchers from 6 countries worked on the same question, and the participants and the committee members had a review meeting, which was held on the next day of the PSGp. This presentation will describe activities of the PSGp2015, focusing on the newly created international section.

Sakae Nakamura
Asahi Kasei Corporation

Biography

Sakae Nakamura joined Asahi Kasei Corp. in 1985. In 1989, she was transferred to the intellectual property department and responsible for patent acquisition and licensing business concerning health care and fiber. Later, she held a post in the technical information search division under the intellectual property department of Asahi Kasei Group established in 1998, and was promoted to a director for the division in 2006. In this role, she was in charge of providing training on information searches and utilization for researchers in addition to specific searches.

She also headed a division supplying consulting services on information search and information analysis in diverse industries.

She has been a committee member of The Patent Search Grand Prix (PSGp) since 2009, and named a chairperson of the committee last year.

Quality at Source: Understanding the "Dirty Database" Syndrome

Abstract

Once Upon A Time in the West, the only patent databases came from the commercial sector. Most patent information specialists knew and used The Magnificent Seven (*), but they cost A Fistful of Dollars. During the 1990s, many more vendors entered the market, often re-distributing first-level data; there was The Good, The Bad and The Ugly. With our increasing reliance upon the output from software-based large-scale analysis tools, costing A Few Dollars More, the input quality of our raw patent data has never been more important. But is using cheaper first-level information a genuine economic choice, or are we Dancing with Wolves? Magister Ltd.

Stephen Adams
Magister Ltd.

Biography

Stephen Adams is the managing director of Magister Ltd., a UK-based consultancy specialising in patents information founded in 1997. Mr. Adams holds a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London, and is a Member of both the Royal Society of Chemistry and the Chartered Institute of Library and Information Professionals (CILIP). He is the author of two editions of "Information Sources in Patents", currently published by Walter de Gruyter KG, and serves on the Editorial Advisory Board of the Elsevier journal "World Patent Information". He received the IPI Award in 2012 for outstanding contribution to patent information. He is the current Vice-Chair of PIUG Inc., the International Society for Patent Information.

The Case for Curated Content in the Age of Algorithms

Abstract

Since the earliest days of information management, content producers have acquired, organized, and disseminated information for the advancement of research. To optimize the value and usability of their content, many database producers curate the information, adding value such as indexing, creation of controlled vocabularies, abstracting, title enhancement, translation, classification, data standardization, and links. However, in the age of powerful search algorithms, data mining, and semantic full-text search, some may wonder if there is still a compelling case for intellectual content curation. In this presentation, we'll highlight the unique value derived from curation activities across key STN databases, and discuss new opportunities created as technological advances further expand the value that curation can deliver to enhance discoverability, insight, and efficiency.

Brian Sweet
STN

Biography

Brian Sweet has been a senior product manager at CAS for over twelve years, focusing on STN®'s patent and biomedical content and on STN® AnaVist™. With more than 30 years of experience in the information industry, Brian began his career at BIOSIS, then moved to Elsevier, where he managed the product development and marketing of Embase and other databases. Brian is a former president of NFAIS and as been active in SLA.

Searching for the Obvious

Abstract

Most patent searching deals with prior art considerations under 35 U.S.C. 102, especially with the changes due to the America Invents Act and also, international searches also focus on prior art. Obviousness is also the focus of some patent searches, primarily to anticipate or argue with rejections or for invalidity searches. But what may be obvious to one may not be obvious to a person having ordinary skill in the art. This presentation will look at obviousness as a consideration for patentability.

Ron Kaminecki
Questel

Biography

Ron consults with inventors on patent matters including patent searches and also teaches patent searching at three universities. He has worked with patents all of his career, starting as an Associate Information Specialist at IIT Research Institute and has worked mostly at Dialog under different ownership for many years. He has written many articles and presented many papers in the field of patent information and also has a patent pending and is a co-author of a NISO Standard Common Command Language. He has a BS in Chemistry, and MS in Computer Science and a JD with a Certificate in Patent Law. He is a US Patent Attorney and is a member of the Illinois Bar and the Northern District Court of Illinois.

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