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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

Virtual Meeting Book Link

Virtual Meeting Book

Wednesday, May 11

  8:00 am    Social Hour

  8:45 am    Welcome - Shelley Pavlek (PIUG Chair)

  9:00 am    An Introduction into SEP's, Standards and Standards Contribution Data Search and Analysis - Tim Pohlmann (IPlytics GmbH)

  9:30 am    Using AI to determine Standard Essential Patent (SEP) Pool Essentiality - Shawn Ambwani (Unified Patents)

10:00 am    Valuation of the Injunction in Unwired Planet vs Huawei - Roya Ghafele (OxFirst Ltd.)

10:30 am    Break

10:45 am    SEP Panel Discussion

11:15 am    Clarivate, Gold Sponsor Product Review

11:20 am    IFI CLAIMS, Gold Sponsor Product Review

11:25 am    STN, Gold Sponsor Product Review

11:30 am    Break

11:45 am    IFI CLAIMS Ultimate Owner: A View of Patent Possession - Claire Hammond (IFI CLAIMS Patent Services)

12:15 pm    Lunch

12:45 pm    Patent Information Specialists - How They Can Help at Different Level in Our Organizations and How to Promote the Pivotal Role of These Specialists?

                   - Cécile Boyer-Joubert (Biogaran), Grégoire Vemiquet (Saint-Gobain Group)

  1:15 pm    Patent Information Professional Challenges in the "New Normal" IP Activities Environment.  Do We Turn into Chameleon or Swiss Knife?

                   - Muriel Bourgeois (MT_IP Consulting)

  1:45 pm    Aptean GenomeQuest, Silver Sponsor Product Review

  1:50 pm    PatSnap, Silver Sponsor Product Review

  1:55 pm    BizInt, Silver Sponsor Product Review

  2:00 pm    Break

  2:15 pm    New Patent Search Tools and the Evolving Role of the Patent Information Professional - Frederic Baudour (Allnex. President French

                   Information User Group)

  2:45 pm    WORKSHOP - Critical Patent Metrics in a Snap(shot) - Janice Stevenson (IFI CLAIMS Patent Services)

  3:45 pm    WORKSHOP - Empowering Patent Searchers with the Latest Innovations from Minesoft – Kevin Spahr (Minesoft)

Thursday, May 12

  8:00 am    Welcome - Shelley Pavlek (PIUG Chair)

  8:10 am    WORKSHOP AI Patent Classification for Breakfast - How to Benefit from AI Based Classification in Your Daily Work - Kornél Markó (Averbis)

  9:10 am    IP Landscape Activities for Business Strategies Towards Sustainability Goal of Asahi Kasei Corporation - Sakae Nakamura, Yasushi Miyagi (Asahi Kasei Corporation)

  9:40 am    Mixed Patent/Design Databases and Families: Are We Going Towards a Comprehensive IP Information System? - Guido Moradei (Quaestio-Patent Information Partners srl)

10:10 am    Hidden Legal Status: What the National File Inspection Doesn't Always Tell You - Stephen Adams (Magister Ltd)

10:40 am    Break

10:55 am    The Role of IP Offices in Patent Information – A Personal View - Nigel Clarke (Stanfield Clarke Associates)

11:25 am     IP Data and Insights Unleashed - Caroline Peel, Paul Torpey (Clarivate)

11:45 am    Have We Seen This Patent Family Before? - Matt Eberle (BizInt Solutions, Inc.)

12:00 pm    PATENTSCOPE: Latest Developments and Overview of the Top Features – Sandrine Ammann (WIPO)

12:30 pm    Lunch

  1:00 pm    An Overview of Searching for Prior Act - Ron Kaminecki (Kaminecki IP LLC)

  1:30 pm    What’s All the Fuss About - A Discussion of Web 3.0 and the MetaverseTony Trippe (Patinformatics, LLC)

  2:00 pm    Use of Temporal Context in Identifying Fundamental Patents - Kevin Hess (HTS LLC)

  2:30 pm    Conference Wrap-up

Meeting Abstracts

An Introduction into SEP's, Standards and Standards Contribution Data Search and Analysis.

Tim Pohlmann, Managing Director, IPlyytics GmbH

Abstract - 

The fourth industrial revolution will see the convergence of technology as connectivity technologies are gradually integrated across all industry verticals. This revolution will not only disrupt business models around connected devices but also make IP professionals reconsider how to deal with intellectual property as they are faced with the ever-growing challenge of ensuring that they have the necessary assets to hold their own during the transformation of industries such as automotive, manufacturing, energy, home appliance or healthcare. Connectivity standards such as 4G, 5G, Wi-Fi (802.11), Bluetooth, versatile video coding (VVC), near field communication (NFC) and radio frequency identification (RFID), among others, are subject to so called standard essential patents (SEPs). Such patents must be used when implementing the standard. IP professionals across all industry verticals must rethink how they develop, evaluate, and analyze their own portfolios and the competition with regards connectivity standards. This means aligning patent portfolios to protect innovations and proactively engaging in continuous strategic portfolio development to align the patent portfolio with the objectives of the business as it relates to patent licensing, acquisitions, joining patent pools, participating at standards meetings, and understanding the competition.

In this session Tim Pohlmann, CEO and founder of IPlytics will discuss end explain

 How to deal with the increasing demand for better data around SEPs, standards and standards contributions to understand competition in an ever more fully connected world?

 How to have all information to ensure freedom to operate, identify prior art for new R&D projects or identify white spaces.

 How to navigate patent portfolios where products increasingly rely on connectivity standards?

 How to manage aspects of patent licensing when integrating new technological advances such as 5G or Wi-Fi which are protected by SEPs?

Biography - 

Tim Pohlmann is the CEO and founder of IPlytics. He earned his doctoral degree with the highest distinction from the Berlin Institute of Technology, with a dissertation on patenting and coordination in standardisation. He then went on to work as a post-doctoral researcher and consultant for the Law and Economics of Patents Group at CERNA, MINES ParisTech.

In his work as an economist and consultant, Dr Pohlmann was confronted with the challenge that standards databases such as those of the European Telecommunications Standards Institute and the Institute of Electrical and Electronics Engineers have no real, meaningful connection with comprehensive global patent databases. He realised that if we are to keep pace with the next technology revolution, then as IP professionals, we need to rethink – even revolutionise – how we approach both patent and standards data, to provide business-ready knowledge for actionable decision making across our organisations.

Dr Pohlmann founded IPlytics with the vision of creating the first solution on the market to bring together comprehensive, highly indexed technical standards information, global patents, declared SEPs, patent pool and technical standards contribution data, to provide industry-leading analysis on the past, present and future of standards-essential technology. Unlike other tools that are overly complex, IPlytics provides fast, intuitive access to patents and standards to empower the user to strategically align patent portfolios to protect innovations and proactively engage in continuous strategic portfolio development as it relates to SEP assets, for initiatives such as licensing, acquisitions and joining patent pools, or simply to understand the respective positions of the competition.

Dr Pohlmann has been actively involved in preparing empirical studies for the European Commission, the World Intellectual Property Organization and the German federal government on declared patents, standards contributions, patent transfers and patent pooling behaviour.

Dr Pohlmann is a recognized thought leader, panel speaker and adjunct lecturer on the topics of Standard Essential Patents (SEPs), FRAND licensing, patent pools and advanced patent intelligence. He is also the author of several peer-reviewed economist journal articles, several Managing IP articles, IPWatchdog articles, IAM Magazine articles, and some of the ever most-read IAM Media industry reports.

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Using AI to Determine Standard Essential Patent (SEP) Pool Essentiality

Shawn Ambwani, Co_Founder/ COO/ SVP Legal, Unified Patents

Abstract - 

The dramatic number of patent filings in SEPs have made traditional landscapes very difficult to ascertain and maintain. Unified, as part of the development of a joint patent pool called Alium for the 5G RAN space. An area with over 100,000 self-declared essential patents and very little actual analysis. A traditional landscape is very difficult in such an environment. Unified developed a new way to measure essentiality based on training sets of eyes on analysis that provides the best of both worlds. An accurate landscape and even the ability to measure individual patents based on essentiality.

Biography - 

Co-Founder of Unified Patents, the Anti-Troll and founder of 2 previous video codec companies with successful exits.

He is responsible for running Unified’s operations, counsel & docket management, analytics, and marketing.

He has co-authored papers on PTAB analytics and procedures which have been published in law reviews affiliated with the U. of Chicago, U. of Colorado, and Northwestern among others. A full list of his contributions can be found in SSRN.

Shawn has a JD/MBA from Boston University and a BS in Mathematics from UCLA. He is an active member of the California Bar.

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Valuation of the Injunction in Unwired Planet vs Huawei

Roya Ghafele, Managing Director, OxFirst Ltd.

Abstract - 

On August 26 2020 the UK Supreme issued a landmark decision in the matter of Unwired Planet vs Huawei. The decision revolutionised the debate on standard essential patents as the Court held that a Global FRAND (fair, reasonable and non-discriminatory) rate can be sanctioned with an injunction in the U.K. To assess whether the issuance of an injunction in that case was proportional to the value of the infringed standard essential patents, the article builds upon the valuation approaches contained in the judgment itself. It does so, by comparing the value of the injunction to the implied value of the patents that caused the British injunction. Comparing a slightly adjusted valuation approach accepted by the Court to the direct value of the injunction, shows that the direct value of the injunction outweighs the estimated value of the infringed patents. Whether this is commensurate with the proportionality factors set out under English law should be further examined.

Biography - 

Dr. Roya Ghafele is the founder and Managing Director of Oxfirst, ( an award-winning law and economics consultancy that specialises in helping organisations value their Intellectual Property in disputes, for licensing and sales purposes and the commercialisation of ideas and innovation, on preparation for Stock Market floatation as well as general management considerations.

She is a visiting Professor at Brunel University, London and is fluent in five languages, English, German, French, Italian and Persian as well as being an accredited expert witness to courts in England and Wales. Prior to founding OxFirst, Dr. Ghafele held an Assistant Professorship with the University of Edinburgh, a Departmental Lectureship with Oxford University and a Research Fellowship with the Haas School of Business, University of California at Berkeley.

Whilst working with the Organisation for Economic Cooperation and Development (OCED) and the World Intellectual Property Organization (WIPO), Dr. Ghafele offered strategic advice on Intellectual Property and Technology Transfer to Governments in Europe, Asia and the Middle East.

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IFI CLAIMS Ultimate Owner: A View of Patent Possession

Claire Hammond, Content Specialist, IFI CLAIMS Patent Services

Abstract - 

We all know how difficult it is to track patent ownership. In the beginning, of course, there is an assignee, and the assignee owns the invention. But over time, in the course of doing business, IP assets and entire companies are sold to new owners; iterations of company names proliferate. The natural progression of business makes the simple question—Who owns What? —more complicated than it should be. Especially when it comes to hierarchical, multibillion dollar entities.

As intangible assets occupy an ever-growing portion of corporate balance sheets, understanding who owns the invention has never been more crucial to investors with an eye toward M&A. With IFI’s Ultimate Owner, our newest addition to our suite of patent offerings, we provide the conclusive answer to which entity owns what patent asset. The bedrock of Ultimate Owner is IFI CLAIMS’ deep involvement over seven decades in the proprietary and painstaking work of name standardization. Ultimate Owner interprets each name iteration, identifies where it belongs under public and private-company corporate umbrellas, and then shows you who possesses the rights, giving you a clearer view of your target companies.

Join us to learn more about how Ultimate Owner can support your M&A decisions, risk analyses, and competitive intelligence.

Biography - 

Claire Hammond, Content Specialist at IFI CLAIMS Patent Services, applies her patent expertise and her application background to help review, analyze and map IFI’s data to ensure the highest quality standards.

In her past roles she helped support and train user communities on a suite of IP tools. She was also a member on the IP tool team who helped to enhance different tools by automating processes, reducing legal risk and identifying high value patents in their patent applications.

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Patent Information Specialists. How can They Help at Different Level in Our Organizations and How to Promote the Pivotal Role of These Specialists?

Cécile Boyer-Joubert, Patent Engineer, Biogaran

Grégoire Vemiquet, Saint-Gobain Group

Abstract - 

Patent information is paramount for defining strategies and making decisions in any dynamic company.

Whether it be at the level of decision-makers, researchers, legal or business development, a specialist in patent information is key to success. Despite its strengths, this complex and protean profession may face difficulties of gaining recognition in our organizations.

The French-speaking Patent Information User Group (CFIB) focused on this issue, set up working groups to explore, discuss and draw up concrete ideas and proposals.

How to raise the profile? How to enhance the visibility and understand better this profession?

Some proposals that have already been implemented will be presented: a series of videos showing the multiple facets of the job, participation to PIP certification...

Biographies - 

Cécile Boyer-Joubert, PhD started her career in R&D as a medicinal chemist researcher. She then moved to the Information Science field, worked several years for Pfizer as a Patent Information Specialist, for the well-known IP firm Lavoix and then for Exeltis France as Scientific Competitive and IP Team Leader. She joined Biogaran in 2019 as a Patent Engineer currently in charge of all IP aspects before generic drugs launch. She has 20 years of professional experience in patent information in the pharmaceutical industry. Cécile is Board member of CFIB (French Speaking Patent Information User Group) since its creation as an association, former treasurer and currently involved in a Task force for the Promotion of our Profession.

Grégoire Verniquet has now over 10 years’ experience in the IP departments of large companies, such as PSA, Essilor and at present the Saint-Gobain Group. He has developed wide and strong skills in patent information, ranging from patent searching for prior art, opposition and freedom to operate, patent watch script building, landscape and mapping creation. He is also Project Leader in the internal development of AI tools for big Patent datasets. In 2021, after taking the required exams, he qualified as a QPIP (Qualified Patent Information Professional). Grégoire has been a member of the CFIB (French Speaking Patent Information User Group) since 2016 and is currently involved in a Task force for the Promotion of our Profession.

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Patent Information Professional Challenges in the "new normal" IP activities environment.  Do We Turn into Chameleon or Swiss Knife?

Muriel Bourgeois, Founder, MT-IP Consulting

Abstract - 

Our profession is (once again) facing challenges of multiple dimensions:

  • search vs analysis
  • traditional boolean vs semantic / AI
  • “technical” vs “decision makers” customer profiles
  • domain specialization vs multi-domains / multiple IP rights
  • internal vs external vs outsourcing mix operations

As we have done successfully these last 30 years, can we still overcome hurdles and maintain or even develop our job while keeping a smiling face?

Biography - 

Valedictorian of IP Assets Management Master in Paris (Descartes), Muriel Bourgeois –Tassanary run a 30+ years’ career on multiple aspects of IP lifecycle within Thomson Technicolor and Nestlé, from IP assets solutions & operations (Projects management, IP tools & processes, Patent Formalities, Licensing PMO, Contents Management) to expertise in Intelligence & Analytics (QPIP n°57).

Since 2021, she has been running her own business at MT-IP Consulting (Innovation, Organisation, and Management) in the South West of France.

Former President of CEPIUG (Confederation of European Patent Information User Group), and Vice-President of CFIB (French speaking Patent Information Group), she plays an active role in Patent Information Education before QPIP, French Patent Office, and Universities.

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New Patent Search Tools and the Evolving Role of the Patent Information Professional

Frederic Baudour, Patent Information Analyst, Allnex, President of French Patent Information User Group CFIB

Abstract - 

The last 20 years saw a lot of developments from the patent database Industry, introducing or rebranding some “concepts” or search technologies.

As a few examples we can cite IP landscaping and the search for the so called “white space”; the mixing of different kinds of data: patents, financial, marketing, … to provide new kinds of analysis; and most recently search tools based on Artificial Intelligence.

Some of these could sometimes lead us to the assumption that it is quite easy to learn, in a few seconds, “everything there is to know” on a specific topic, by just typing a few keywords in a Google like interface.

Is it true? Is it false?

What are the limits of these news tools? Of these new search methodologies? Of these analysis?

Can we blindly trust search results?

How can we redefine our job in this new World?

Biography - 

Frederic Baudour earned his Bachelor's degree in Chemistry from University of Mons Hainaut (Belgium) and a degree in Applied Economics – Management from Facultés Universitaires CAtholiques de Mons – FUCAM (Belgium).

He began working as an Information Scientist for UCB Chemicals in 1996 and became Information Manager when UCB created the Surface Specialties division from the acquisition of the Coatings, Adhesives & Additives business of Solutia.

He later moved into the role of Senior Information Analyst following the purchase of Surface Specialties by Cytec Industries and then the divestiture of the Coatings business to Allnex.

Frederic currently works in ALLNEX's Knowledge Management Office, is President of CFIB (French Patent Information Association) , Qualified Paten Information Professional (QPIP), former vice-president at CEPIUG (Confederacy of the EU-user groups), and former ALLNEX representative at the PDG (Patent Documentation Group).

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Critical Patent Metrics in a Snap(shot)

Janice Stevenson, Executive Vice President of Client Services, IFI Claims Patent Services

Abstract -

“S&P 500 companies' intangible assets have gone from 17% of total assets in 1975 to 90% last year,” (2020). * As these assets become more and more mainstream, wading into the thicket of patent data seeking reasonable estimates of value is daunting. Using IFI Snapshots in combination with our ever evolving Ultimate Owner collection can simplify the quest for wise M&A decisions, risk analyses, and competitive intelligence.

* Alan Murray and David Meyer, "We are All Tech Companies Now," Fortune, 2021

In this workshop we will review the crucial indicators contained within the IFI Snapshot; including patent status, anticipated expiration, claims summaries, and assignee/applicant name standardization - a proprietary IFI process leveraging over seven decades of painstaking work normalizing myriad name variations under a precise, searchable designation; the IFI Standardized Name. We will then examine the interaction between IFI Names and the IFI Ultimate Owners to shed light on elements such as the geographic distribution of IP rights, the ebb and flow of technologies, and the overall health of patent portfolios within global organizations.

Along the way, we will also illustrate how patent data can be used to quickly identify “red flags” that may arise during a M&A. This includes events such as EP validation decisions, PCT filing decisions, annuity, and maintenance payments – who decides and who pays.

Biography -

Janice Stevenson applies her vast client support experience to providing IFI clients the foundation they need to bring their applications to full fruition. She draws on past experiences as a trainer, sales manager, and developer focused on intellectual property and patent applications.

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Empowering Patent Searchers with the Latest Innovations from Minesoft

Kevin Spahr, Minesoft

Abstract -

In an informative, hour-long session Kevin Spahr will showcase the latest updates to PatBase and PatBase Analytics. Kevin will also highlight some of the neat new features added to PatDocs, a multi-use application to assist with all your IP legal operations. PatDocs has many time-saving features including downloadable legal documents and reports, and family tree mapping. Minesoft’s PAIR Alerts are included in PatDocs and have now been expanded to include some international coverage.

With colleagues working from home or across locations and borders, it’s easy to feel disconnected due to lack of face-to-face contact, everyday conversations and even a generally interrupted schedule. Tim will end the session by explaining how you can get reconnected with Minesoft’s IPShare, a new, innovative application designed to help your team connect more effectively.

Biography -

Kevin Spahr is the US Customer Success Manager for Minesoft. Minesoft is an IP tools development company based in the UK that has been successfully and exclusively working in the IP space for over 25 years.

Kevin started his career with Minesoft over 5 years ago after receiving a liberal arts degree from Villanova University. Kevin’s career began with a patent and IP searching class offered through the University of San Diego enabling his continued efforts to offer Minesoft clients the best support possible. Currently, Kevin manages and supports some of Minesoft’s largest law firm and corporate clients and focuses on funneling client feedback to drive the continued improvements of Minesoft’s patent solutions.

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AI Patent Classification for Breakfast - How to benefit from AI based classification in Your Daily Work

Kornél Markó, Averbis

Abstract -

The use of artificial intelligence in patent monitoring has outgrown its infancy. In this workshop, we will show how patent specialists and users can significantly reduce their workload or that of their colleagues with the help of machine learning and NLP.

Furthermore, we will present various ways in which companies can integrate this AI benefits into their daily work. Be it as a "stand alone" option, tightly integrated into the system landscape, connection to Minesoft products or fully integrated in a monitoring system like RAPID5 from Centredoc.

Biography -

Kornél Markó is co-founder and managing director of Averbis GmbH. He holds a PhD in computational linguistics and has been leading the development of Averbis core components for several years. His competence is internationally recognized and documented in numerous publications. Kornél has strong expertise in the areas of semantics, natural language processing (NLP) and machine learning (ML) in conjunction with their operational use in literature and patent research and classification.  In his younger days he was world champion (2000) in robot soccer.

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IP Landscape Activities for Business Strategies Towards Sustainability Goal of Asahi Kasei Corporation

Sakae Nakamura, Sr. General Manager, Sr Fellow, Corporate IP, Asahi Kasei Corporation

Yasushi Miyagi, Manager, IP Strategic Planning Group of Corporate IP, Asahi Kasei Corporation

Abstract - 

Asahi Kasei Corporation is accelerating its efforts to create value by contributing to sustainable society, with the goal of achieving carbon neutrality by 2050. In building corporate and business strategies towards the value creation, IP landscape has been playing a crucial role. In our presentation, we are introducing some of our IP landscape activities for demonstrating our approach and proposals for the value creation. Particularly, we are introducing an example where we made strategy proposals for business areas of our focus including alkaline water electrolysis business, based on analysis of a wide range of information including IP and market information. We are also introducing our activities aiming to encourage sustainability efforts and idea creation for new businesses through IP analysis.

Biography - 

Sakae Nakamura is a senior general manager of Corporate IP of Asahi Kasei. She is responsible for all IP activities of the Asahi Kasei Group. Her specialty is research and information analysis, and she has been promoting IP landscape activities in the Asahi Kasei Group. In October 2020, she was appointed as a senior fellow of the Asahi Kasei Group's advanced professionals in this area and continues to this day.

Yasushi Miyagi is an intellectual property analyst certified by the Association of Intellectual Property Education in Japan. He engaged in strategic studies at a research division belonging to one of the biggest investment companies in Japan. Prior to that, he had worked as a patent attorney for 7 years at a law and patent firm, mainly dealing with patent applications by major German Companies including Bosch and Siemens. He joined Asahi Kasei in 2018 and has been engaged in research and analysis of technical information at the IP Strategic Planning Group.

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Mixed Patent/Design Satabases and Families: Are We Going Towards a Comprehensive IP Information System?

Guido Moradei, Founder and CEO, Quaestio - Patent Information Partners srl

Abstract - 

We are often asked to search designs as prior art to challenge the validity of a previous design patent/registration. In case of FTOs regarding a product having a shape, a texture or a GUI it is essential to cover designs as well as patents, and to know where the IPRs really exist.

There are specialized sources for that and a few AI-based tools already available on the market offering reverse image search, not only browsing the web but also design patent/registration databases. But several classic patent databases too have a coverage of designs that seems to be expanding. In this presentation I would like to examine the state of the art of the information about design patents/registrations included in patent databases, the different search options with particular reference to the “mixed families”, the criteria behind the art of building them and the priority regulations.

Biography - 

Guido is the founder and CEO of Quaestio – Patent Information Partners srl, an Italian firm specialized in providing IP information services to attorneys, lawyers and IP departments of big companies. With more than 30 years of experience as IP information specialist and QPIP, Guido has developed special skills in searching designs prior art and information, testing databases, comparing tools, analyzing classifications. Guido is also a Trademarks and Designs registered attorney before the Italian and the EU Intellectual Property Offices and editor of a virtual special issue of the World Patent Information about Industrial Design Intellectual Property and Information Retrieval.

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Hidden Legal Status; What the National File Inspection Doesn't (Always) Tell You

Stephen Adams, Managing Director, Magister Ltd.

Abstract - 

Patent information specialists are increasingly being called upon to locate data on the IP rights in force in less familiar, more ‘exotic’, countries.  These types of request may challenge our assumptions and our background knowledge about the limits of territorial enforceability of a national or regional patent, into additional jurisdictions.  Although the EPO’s system of extension and validation states is well-recognized and documented in their legal status records, there are other examples across the world where such extensions are not well represented, in either formal documentation or electronic records.  This presentation will dig a little deeper, in order to help information specialists to understand the why, the where, the when and the how of such extension of patent rights.

Biography - 

Stephen Adams is the managing director of Magister Ltd., a UK-based consultancy specializing in patents information. Mr. Adams is a Qualified Patent Information Professional (number 20190044100092) and holds a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London, as well as professional membership of the UK’s Chartered Institute of Library and Information Professionals (CILIP) and the Royal Society of Chemistry (RSC). He was the representative for UK user groups on the information sub-committee of the Standing Advisory Committee to the EPO (SACEPO/PDI) for many years, as well as contributing to the work of the Committee on WIPO Standards (CWS) on behalf of the PIUG. He is currently a member of the American Chemical Society’s Committee on Patents and Related Matters (CPRM). He is the author of three editions of “Information Sources in Patents”, the most recent being published in September 2020 by Walter de Gruyter KG. He received the IPI Award in 2012 for outstanding contribution to patent information.

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The Role of IP Offices in Patent Information – A Personal View

Nigel Clarke, Stanfield Clarke Associates

Abstract - 

World Patent Information commemorated four decades years of its founding with a 40th Anniversary Community Meeting in September 2019. One year earlier the European Patent Office celebrated a number of big patent information anniversaries in 2018. This grand conjunction of events provided reasons for me to unearth what turned out to be a rich history of public information about conferred intellectual property rights. The publication obligation has intensified from the beginning, synergistically, symbiotically and inextricably with the evolution of intellectual property systems.

This presentation is a personally researched view of the history of patent information combined with some own experiences of working in an intergovernmental IP office and as a WPI editorial board member for over 20 years. The world has changed a little since 2019, you may have noticed. So I´ll include some subjective observations on the patent information responses of IP offices regarding the COVID pandemic and climate change, and speculate (but not too much) on the future of patent information at IP offices.

Biography - 

In March 2021, I set up an independent consultancy – Stanfield Clarke Associates - operating in the intellectual property space, after 30 years at the European Patent Office, EPO. I am interested in the application of patent analytics to landscaping studies of future and emerging technologies, the evolution of the commercial patent information sector, creating awareness of IP in the STEM community, and the development of IP teaching materials. I am an editorial board member of World Patent Information. I have recently joined the Innovation and Intellectual Property Management lab at the Institute for Manufacturing at the University of Cambridge. I am guest lecturer at Kingston University and Visiting Fellow at Oxford Brookes University. I have chartered memberships of the Royal Society of Chemistry, the Institute of Physics and the Science Council (UK). I have a BSc in physical chemistry and a PhD in Neutron Science both from the University of Exeter.

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IP Data and Insights Unleashed

Caroline Peel, Paul Torpey - Clarivate

Abstract -

As the global innovation landscape changes at a rapid pace, multiple forces are reshaping the consumption and use cases for patent information. In this new landscape, accessibility, speed to insights and the need for clean and structured data are notable emerging factors. During this presentation Clarivate will provide an update on how it enables its customer to ensure that the value of patent intelligence is embedded within the fabric of the organization. Topics covered:

·   Introduction to IP Intelligence. -  Paul

·   Data curation – Content curation process and how Clarivate utilises advanced technology to create smart IP data. -  Caroline 

·   Accessing data through a connected ecosystem – the various ways Clarivate allows its customer to consume IP data. -  Paul

·   Speed to insights through curated dashboard. -  Paul

Biography - 

Paul has been with Clarivate for more than 20 years and has held several roles across the organization. In his current role as Sr. Director of IP Intelligence Products, Paul manages solutions that include Derwent Innovation and Innography. Prior to joining the IP Intelligence team in 2010, Paul spent a significant amount of time in the Science business of Clarivate supporting platforms such as the Web of Science. In his spare time Paul is involved with the National Multiple Sclerosis Society and is a member of the Clarivate Philadelphia cycling team that participates in fund raising activities for MS research and patient care.

Dr. Caroline Peel LLM is the Content Director for IP at Clarivate and has been part of the Clarivate team for 21 years. She joined the Derwent GENESEQ editorial team after completing PhD in Cell Cycle Checkpoints and now leads the editorial teams across the globe curating patent and trademark content for products such as the Derwent World Patent Index, Derwent GENESEQ, Cortelis and the CompuMark suite of products. Caroline graduated from the University of Leicester with a BSc Hons Degree in Biological Sciences (Genetics) and a PhD in Cell Cycle Genetics from the University of Sheffield and completed her Masters in Intellectual Property Law from the University of Edinburgh in 2021.

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Have We Seen This Patent Family Before?

Matt Eberle, BizInt Solutions, Inc.

Abstract -

Since its introduction in 1998, BizInt Smart Charts for Patents has provided tools to help patent searchers build compelling reports. Over the years, new systems and techniques for searching have proliferated.  In this presentation, we will look at the evolution of BizInt Smart Charts capabilities over this time with a case study illustrating different techniques for determining "have we seen this patent family before" when reviewing data from multiple sources.

Biography -

Following over ten years of experience at Wyeth, Pfizer and Sunovion as a Senior Information Scientist and Pharmaceutical Information Analyst, since 2013 Matt has helped BizInt customers use the BizInt Smart Charts and VantagePoint tools to create new solutions to address their challenges and problems. Matt lives outside Boston, MA.

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PATENTSCOPE Latest Developments and Overview of the Top Features

Sandrine Ammann, WIPO

Abstract - 

Over the years PATENTSCOPE has evolved from a simple search system containing only published PCT applications with limited search functions to a search system containing over 70 national collections on top of the complete published PCT application collection and offering numerous search features, as well as chemical searches such as Markush. The presentation will focus on the newly added data and features as well as a review of the most useful features for patent searchers.

Biography - 

Sandrine joined WIPO as a translator of PCT published application abstracts. After obtaining a degree in management and communications, she moved on with her career and is now responsible for the promotion of the WIPO Global Databases.

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An Overview of Searching for Prior Act

Ron Kaminecki, Kaminecki IP LLC

Abstract - 

Searches have never been required but have been done in an effort to make it easier for a patent application to work its way through the system and end up in a granted patent. Various changes to the law and court decisions over time have dictated what is necessary in order for a patent application to make it through the system with minimal issues. Over time the system has changed, but searching continues on, with changes in technology which will hopefully keep up with changes in patent prosecution. This presentation will look at how these changes have resulted in new ways of looking at searching.

Biography - 

Ron has been involved with technical and patent information beginning with his work at IIT Research Institute and has continued at different information-intensive companies including Dialog, Knight Ridder Information, Thomson Reuters, ProQuest and Questel and Abbott Laboratories. He currently teaches patent searching at the University of New Hampshire Law School and DePaul Law School, both online and in-person. He is a patent attorney with a BS in Chemistry, an MS in Computer Science and a JD with a Certificate in Patent Law and is also a Qualified Patent Information Professional. He is an inventor, a co-author of a NISO standard for an online search language and has worked as an expert witness. He also serves on various boards and committees in the patent community and on urban preservation. In his spare time, he assembles and fixes electric and acoustic bicycles.

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What’s All the Fuss About - A Discussion of Web 3.0 and the Metaverse

Tony Trippe, Managing Director, Patinformatics, LLC

Abstract - 

Web 3.0 and the Metaverse are some of the hottest topics in technology, but what do these buzz words mean exactly. Pundits say these new technologies will change the way people live their lives, entertain themselves and do business. Is this just more hype or will these technologies really be revolutionary? In this presentation, we’ll look at each of these areas and look at how they might have an impact on the patent information profession. In addition, an analysis of the patent landscape for these technologies will be shared.

Biography - 

Anthony (Tony) Trippe is Managing Director of Patinformatics, LLC. Patinformatics is an advisory firm specializing in patent analytics and landscaping to support decision-making for technology-based businesses. In addition to operating Patinformatics, Mr. Trippe is also an Adjunct Professor of IP Management and Markets at the Illinois Institute of Technology teaching a course on patent analysis, and landscapes for strategic decision making. Tony is an influential thought leader in the patent analysis space, wrote the Guidelines for the Preparation of Patent Landscape Reports for the World Intellectual Property Organization, has been named one of the Top 300 IP Strategists by IAM Magazine and is the developer of the industry's online resource for the use of machine learning and artificial intelligence in the field of Intellectual Property.

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Use of Temporal Context in Identifying Fundamental Patents

Kevin J. Hess - Patent Analyst/Program Manager, HTS LLC


When assessing the value of patents, many factors have been proposed as contributing to the perceived value, including: claim length, family size, prosecution time, citations, etc. While each has some merit, they do not account for the technology landscape at the time of invention. Consideration of a patent’s temporal context provides insights into how fundamental a patent is its peer group.

A case study is presented to demonstrate approaches to temporal analysis and how the results may be useful in valuation or business intelligence. A technology development curve, or S-curve, is derived for technologies relevant to the subject patents. The relative location of the patents along the timeline suggests how fundamental a patent is to the technology. As a refinement, rejection analysis is used to identify patents that the Examiners consider more fundamental within the peer group. The analysis is useful to benchmark dates for further prior art search. Finally, the assessment of which assignees are leaders within the peer group is determined from analysis of citations and each company’s relative speed of innovation. With each approach, the business decisions that may be supported by the analysis are discussed.

Biography - 

Kevin Hess is patent analyst and program manager at HTS LLC (HighTech-Solutions), a technology firm focusing on intellectual property consulting for the wireless, video, telecommunications, semiconductor, battery, and consumer electronics markets. Kevin is also a subject matter expert and founder at Patent Technics LLC which specializes in patent technical analysis for the semiconductor, LED lighting and display, and additive manufacturing (3D printing) markets.

Kevin’s IP experience has spanned many stages of the IP lifecycle, including: inventing, prosecution support, market analysis and valuation, reverse engineering, claim charting, and licensing/litigation. His areas of interest are patent analytics, IP landscaping and taxonomy development. His industry experience includes R&D and product development positions at Tyrex Corporation, Freescale Semiconductor, Motorola, Huntsman Corporation, Phillips-Sumika, ConocoPhillips, and JemPac, a semiconductor startup. Kevin is a named inventor on over 50 US and foreign patents granted in semiconductors, electronics, and materials. He has published on patent search strategy, semiconductor device design and reliability, and polymer materials formulation. Kevin holds a Ph.D. in Chemical Engineering from the University of Texas at Austin. His interests include music and guitar collecting.

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