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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


  1. Program

PIUG is pleased to announce the program (subject to change) at the Plenary Sessions for the PIUG 2024 Joint Annual and Biotechnology Conference. Details for Workshops are listed on a separate web page.  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 website which is a PIUG member benefit.  BECOME A MEMBER of PIUG by going to the PIUG Membership page.


Technical Sessions - Sunday through Thursday

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.

Sunday, May 5
Afternoon
1:00pm - 5:00pm PIUG Course
6:00pm - 9:00pm Welcome Reception
Monday, May 6
Morning
7:00am - 8:00am Fun Run/Walk
8:00am - 9:00am Breakfast and Open Exhibits
9:00am - 9:10am

Welcome and Introductions

Martha Yates, PIUG Planning & Program Chair

9:10am - 9:55am

The Ever-Changing Face of Global Search or 'Has the Centre of the Forest Moved'?

Stephen Adams, Magister Ltd

 

9:55am - 10:25am 

After Expiration: Strategic Insights into Patent Term Extensions Under 35 U.S.C. § 156 and the § 271(e)(1) Safe Harbor

Mike Jesperson, Senior Counsel, Foley & Lardner LLP   
10:25am - 11:00am

Break and Exhibits

11:00am - 11:30am

IPR Estoppel: What Prior Art Can Reasonably Be Found?

Andrea Davis, Bodkin IP and Andrew McElligott, Crowell & Moring LLP
 11:30am - 12:00pm

When AI Fails: Effective use of AI in Patent Search Systems

Jonathan Skovholt and Brad Buehler, Ensemble IP
Monday, May 6
Afternoon
12:00pm - 1:00pm Lunch  
1:00pm - 1:15pm

PIUG Award Presentations

Martha Yates, PIUG Planning & Program Chair

1:15pm - 1:35pm

Talk by Kaback Awardee

1:35pm - 1:55pm   Talk by Technical Achievement Awardee
1:55pm - 2:25pm

Information Literacy and the Patent Information Professional

Malcolm Hallam, Senior Information Advisor, ExxonMobil Technology and Engineering Company

2:25pm - 2:45pm

Best Practices for Training Patent searchers

John Zabilski, Chair of PIUG Education Committee

2:45pm - 3:30pm Break and Exhibits
3:30pm - 4:45pm

Future Proof My Career (An Audience Reflection Panel)

Malcolm Hallam, Jonathan Skovholt, Rosanna Lindquist, Devin Salmon

6:00pm - 8:00pm Dining groups (informal)
 6:40pm-10:00pm  Optional Group Event - Chicago Cubs vs San Diego Padres ( Fee-Based)
Tuesday, May 7
Morning
8:00am - 9:00am Breakfast and Open Exhibits

9:00am - 9:30am

Responsible Use of AI for Patent Information. 

Martha Yates, Bayer CropSciences

9:30am - 10:00am

Patent Alert for Targeted Protein Degradation

Julia N. Heinrich, Ph. D.,  Bristol Myers Squibb

10:00am - 10:30am Break and Exhibits
10:30am - 11:00am

Edible, Comestible, Consumable: Navigating Food Science IP

Rosanna Lindquist and Jennifer Cessna, Sr. Information Research Scientists, Technical Intelligence, The Hershey Company

11:00am - 11:30am 

Technology Opportunities Identification in Low Carbon Space - Search and Visualization of CO2 Capture External Options

Zhifu Shu, Exxonmobil Technology and Engineering Company

11:30am - 12:15am Unconference Session 1
Tuesday, May 7
Afternoon
12:15pm - 1:00pm Lunch and Exhibits
1:00pm - 4:45pm Workshops for General Topics
 6:00pm - 9:00pm

Evening Dinner Cruise and River Tour

Wednesday, May 8

Morning

8:00am - 9:00am  Breakfast and Exhibits
9:00am - 9:45am 

Deep Learning for Patents (Virtual Presentation)

Jason Lee, Assistant Professor of Law at the NYCU School of Law in Taiwan

9:45am - 10:15am 

Focused IP Reports: FTO Whitespace, Surveillance, Structures, Sequences, and Beyond

Matt Eberle, Lead Developer, Analytics and Custom Solutions, BizInt Solutions

10:15am - 10:45am  Break and Exhibits 
10:45am - 11:15am 

Digging Deep into Patents

Ron Kaminecki, Kaminecki IP LLC

11:15am - 12:15pm Unconference Session 2
Wednesday, May 8
Afternoon
12:15pm - 1:00pm Lunch and Exhibits
1:00pm - 4:45pm Workshops for Biotechnology Topics
 6:00pm - 8:00pm Dining Groups (informal)
Thursday, May 9
Morning
7:45am - 8:45am Breakfast and Exhibits
8:45am - 9:00am

Welcome and Introductions

Greg Roland, Biotechnology Program Chair

9:00am - 9:45am

Painstaking Experimentation Is Not Enablement: Implications of Amgen v. Sanofi

Thomas Ehrich,  Rakoczy Molino Mazzochi Siwik LLP

9:45am - 10:15am

Patent Mining: Excavating the Fuel to Power the AI Drug Discovery Revolution

Sam Winders, Patsnap

 

10:15am - 11:00am  Break and Exhibits 
11:00am - 11:30am 

Case Study by LexisNexis ( Title, Abstract and Pressenter to be announced shortly - Stay Tuned for Update)

11:30am - 12:00pm

Plant Patents Color Image Site - Background and Technical Challenges

Russ Allen, PTRC

Thursday, May 9
Afternoon
12:00pm - 1:00pm Lunch and Exhibits
1:00pm - 1:30pm

Look Back on the First Two Years

Kathleen Kalafus, USPTO

1:30pm - 2:00pm

ElasticBLAST: Using the Cloud to Accelerate Sequence Searching

Anne Marie Clark, CAS IP Services and Christiam Camacho, NCBI

2:00pm - 2:30pm 

Break

2:30pm - 3:15pm

Data Integration for Report Generation (Panel Discussion)


3:15pm - 3:30pm

Wrap-up and Concluding Remarks about the Biotech Conference


Conference Abstracts and Biographies

The Ever-Changing Face of Global Search or 'Has the Centre of the Forest Moved'?

Stephen Adams, Magister Ltd., UK

Abstract

Experienced patent searchers and analysts will know that different patent data collections have risen and fallen in significance, both volume and quality, over the last decades.  The focus of our searching may need to shift to take account of these changes.  However, simply adding more country coverage or collecting more sophisticated data for existing countries is a constant challenge to family database producers.  Furthermore, responding to user demand is essentially a reaction to a perceived trend, rather than a proactive strategy to secure the optimum new data feeds for incorporation into our search sources.  The Global Innovation Index (GII), co-produced by WIPO, has now collected 15 years’-worth of data which measure changes in national innovation environments.  These data have been researched in an attempt to identify countries which show sustained improvements in their innovative capacity.  A sub-section of the GII ranking takes account of so-called “knowledge and technology outputs”, which includes scientific publications and patent applications.  These analyses expand upon and contrast with an earlier 2017 PIUG workshop on identifying rising stars in the IP information space.  The bigger picture may prompt searchers to seek suitable training in understanding and using unfamiliar documentation and incorporating new skills into their search practices.

Biography

Stephen Adams is the managing director of Magister Ltd., a UK-based consultancy specialising 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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After Expiration: Strategic Insights into Patent Term Extensions Under 35 U.S.C. § 156 and the § 271(e)(1) Safe Harbor

Mike Jesperson, Senior Counsel, Foley & Lardner LLP   

Abstract

When it passed the Drug Price Competition and Patent Term Restoration Act of 1984 (i.e., the Hatch-Waxman Act), Congress attempted to strike a delicate balance between incentivizing innovation in pharmaceuticals and regulated devices, while promoting competition by exempting certain activities from infringement.  This balance is evident in the Patent Term Extension (PTE) provisions of 35 U.S.C. § 156 and the § 271(e)(1) Safe Harbor provision. We will provide an overview of PTE, including eligibility criteria, regulatory review periods, and enforceable claim scope during the extension period. We will then turn to the § 271(e)(1) Safe Harbor, which shields certain activities from infringement claims during the development of generic counterparts. The interplay between these legal frameworks offers valuable insights for stakeholders in regulated industries, as well at patent information users aiming to understand the reach of patent claims eligible for extension under 35 U.S.C. § 156.

Biography

Mike Jespersen is a patent attorney and Senior Counsel with Foley & Lardner LLP and a member of the firm’s Chemical, Biotech & Pharmaceutical Practice.  Dr. Jespersen counsels clients across a broad range of technology sectors, including pharmaceuticals, energy, and chemistry and materials science.  Representative technologies include pharmaceutical formulations, gene therapies, nanomaterials, fuel cells, batteries, carbon capture, semiconductor polishing, polymer formulations for the aerospace and rail industries, glasses, food production processes, and coatings.

In addition to handling all phases of patent drafting and U.S. and foreign patent prosecution, Dr. Jespersen is well-versed in providing opinions on patentability, invalidity, and freedom-to-operate.  Mike also works closely with clients to guide new product development with patent landscape analysis in mind. Recently, Mike was recognized by the United States Patent and Trademark Office and the State Bar of Michigan for his pro bono work advising clients on patent and trademark matters.

Mike earned his J.D., cum laude, from the University of Michigan Law School (2018), where he was a contributing editor on the Michigan Law Review, a senior judge in the Legal Practice Program, and treasurer of the Intellectual Property Students Association. Mike earned his Ph.D. (2008) and M.S. (2004) in chemistry from the University of Oregon, where he was a National Science Foundation IGERT fellow. He is a graduate of the University of Wyoming (B.S., cum laude, 2001).

Before law school, Dr. Jespersen was a research chemist and National Research Council postdoctoral fellow at the Air Force Research Laboratory’s Materials and Manufacturing Directorate, where he developed advanced materials concepts in surfaces and coatings, polymer nanocomposites, nanoelectronics, bionanomaterial hybrids, photovoltaics, and nanomaterials synthesis and characterization.  Collectively, Mike has published over 20 articles and a book chapter covering a diverse range of nanomaterials and related technologies.

Mike is admitted to practice law in Michigan and before the United States Patent and Trademark Office.

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IPR Estoppel: What Prior Art Can Reasonably Be Found?

Andrea Davis, Bodkin IP and Andrew McElligott, Crowell & Moring LLP

Abstract

A defendant in a patent infringement suit can attack invalidity in two different venues: either through the district court action itself or at the PTAB by filing a petition for inter partes review (“IPR”).  If proceeding with an IPR, the defendant may enlist a patent searcher to identify strong prior art that can be presented to the PTAB as grounds for invalidating the patent.  The quality of this prior art search and the references it discovers will directly impact whether or not the IPR is successful for the defendant.  But the quality of this patent search may also be important following the IPR.  Because, if any asserted claims survive, the defendant is now subject to what is called IPR estoppel.  This means that in the district court the defendant cannot raise new invalidity grounds based on prior art that “a skilled searcher conducting a diligent search reasonably could have been expected to discover” at the time of the IPRs.  This begs the question of what constitutes a diligent search and what art could the original patent searcher reasonably have been expected to discover?  Courts have reached varying and often conflicting answers.

Biographies

Drew McElligott is Counsel at Crowell & Moring LLP, and his practice focuses on patent (utility and design), copyright, and trademark litigation, representing leading companies in the pharmaceutical and medical device sectors, as well as consumer products manufacturers.  Drew has successfully litigated cases in district courts across the county, as well as appeals to the Court of Appeals for the Federal Circuit and inter partes reviews before the United States Patent and Trademark Office.  Before practicing law, Drew worked for four years at the Loyola University Cardiovascular Research Institute conducting scientific research and gaining expertise in a variety of surgical and diagnostic procedures and techniques. He has co-authored multiple scientific articles in medical and cardiology publications, and authored multiple articles on copyright law and the International Trade Commission.

Andrea Davis is an accomplished intellectual property professional with expertise in medical devices and the mechanical sector. Ms. Davis is a Qualified Patent Information Professionals and a US registered patent agent with a M.Sc. degree in Engineering Physics. She is the founder of Bodkin IP, a US-based patent information consulting firm focusing on patent searching and expert witness work related to IPR estoppel. Ms. Davis is actively involved in the Patent Information Users Group (PIUG), a cofounder of the Patent Olympiad and a reviewer for the Elsevier Journal "World Patent Information". A frequent conference presenter on the subject of patent searching, Ms. Davis is also a Stu Kaback Business Impact Award Winner and the recipient of the PIUG Service Award.

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When AI Fails: Effective use of AI in Patent Search Systems

Jonathan Skovholt and Brad Buehler, Ensemble IP

Abstract

- AI can provide better patent search results when used by patent experts, but cannot replace traditional search techniques

- Blending traditional patent search methods with the assistance of AI will find better prior art and find it more quickly

- We share our best practices in the use of AI for professional patent searching based on 4 years of experimentation and practice.

Biographies

Jonathan Skovholt is a founding member and Head of Search Operations at Ensemble IP, an intellectual property consulting firm providing patent search services to corporations and law firms worldwide.  At Ensemble IP, Jonathan works to blend human expertise with advanced technology tools to provide the most reliable and comprehensive patent search results.  Jonathan is focused on assessing AI search systems, the convergence of Boolean and AI based techniques, and the continuing evolution of patent searching.  Prior to joining Ensemble IP, he managed, designed, and delivered training for Landon IP and CPA Global where he taught analysts the finer points of searching, examining, and classifying.  He is a former faculty member of Patent Resources Group (PRG) and at the NIH Foundation for Advanced Education in the Sciences.  Jonathan has taught individuals on the art of prior art searching to audiences on four continents.  He is also a former patent examiner.  Jonathan has a BA in Physics from Gustavus Adolphus College, an MS in Physics from the University of Delaware, and a graduate certificate in Instructional Systems Development from the University of Maryland, Baltimore County.

Brad Buehler is the Chief Operating Officer and a founding shareholder of Ensemble IP.  Prior to starting Ensemble IP, he was Managing Director of the global Patent Search and Innovation Intelligence Unit at CPA Global.  He started his Intellectual Property career with Landon IP in 1999, ultimately serving as the President of the company until its acquisition by CPA Global in 2014.  Throughout his 25+ years in the field of patent searching, he has witnessed and influenced the evolution of patent searching and the role of professional patent searchers.  Brad holds a BS in Biology from Mount St. Mary’s University, an MBA from University of Maryland University College, and is a Registered Patent Agent.  He is also a 2022 graduate of the Harvard Business Analytics Program.

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Best Practices for Training Patent searchers

John Zabilski, Chair of the PIUG Education Committee 

Abstract

For over ten years the Patent Information Users Group has provided both live and online training as part of its mission to support education. Discover lessons learned from coordinating and presenting this training that started with a base of Fundamentals, revealed Best Practices in essentials areas of knowledge and provided Advanced Techniques. Learn how to take advantage of the PIUG Education Library and how you can apply lessons learned to improve your own patent searching expertise.

Biography

John Zabilski is the Chair of the PIUG Education Committee and recipient of the PIUG Service Award in 2011 and in 2023 for his contributions to the PIUG Education & Training Committee. Previously, he held multiple positions for over 40 years at Chemical Abstracts Service (CAS) including indexing, development, training and consulting on how to search for patent information. John has provided onsite and online training in the agrochemical, biotech, chemical, pharma and polymer areas for many organizations including 10 patent offices around the world, contributed to presentations for the WIPO Technology Innovation Support Centers (TISC), presented at AALL, ACS, PIUG, SLA and represented PIUG at the China Patent Annual Conference in Beijing. John is a Registered U.S. Patent Agent and a Qualified Patent Information Professional (QPIP).

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Future Proof My Career (An Audience Reflection Panel)

Malcolm Hallam, Jonathan Skovholt, Rosanna Lindquist, Devin Salmon

Abstract

Join our panelists and your fellow attendees for an audience reflection panel on how to future proof your career.  Moderated by Martha Yates, our panelists Malcolm Hallum, Jonathan Skovholt, Rosanna Lindquist and Devin Salmon have all had very different career trajectories.   They will discuss their careers and what has led to their success.  After some brief discussion, we will break up into small groups to discuss what skills you want to sharpen, how to expand your network, and what you need to thrive.  Then we will come back together and share our ideas. It promises to be a lively discussion and appropriate for people at every stage of their career.

Biographies

Malcolm Hallam is Senior Information Advisor at ExxonMobil Technology and Engineering Company. His first career was as a polymer scientist, working on development of emulsion polymers for adhesives, coatings, and various specialty chemicals applications. In 2000 he left the laboratory to begin a second career in information science, taking on the technical and patent searching role, as well as supervision of the Information Center and global information services for National Starch and Chemical Company, then a division of ICI. 

In 2009 Malcolm joined ExxonMobil in Annandale, NJ, as a patent researcher, becoming Team Leader first for the patent searching group there and subsequently for the Downstream Technical Information Center. His scope of influence encompassed all the internal and external content services, various information management processes, and specialized technical searching related to occupational health, biosciences, environmental, and litigation matters. With the formation of ExxonMobil’s Central Library and Information Center, Malcolm has assumed the role of Information Advisor, with responsibility for guiding the team in tools, processes, and practices necessary for the group to be effective within the evolving corporation.

Malcolm received BA and DPhil degrees in chemistry from the University of Oxford and an MS degree in management of technology from New Jersey Institute of Technology. He is a past Board member, Treasurer, and Membership Chair of PIUG and has been a member of the association for 23 years.

Jonathan Skovholt is a founding member and Head of Search Operations at Ensemble IP, an intellectual property consulting firm providing patent search services to corporations and law firms worldwide.  At Ensemble IP, Jonathan works to blend human expertise with advanced technology tools to provide the most reliable and comprehensive patent search results.  Jonathan is focused on assessing AI search systems, the convergence of Boolean and AI based techniques, and the continuing evolution of patent searching.  Prior to joining Ensemble IP, he managed, designed, and delivered training for Landon IP and CPA Global where he taught analysts the finer points of searching, examining, and classifying.  He is a former faculty member of Patent Resources Group (PRG) and at the NIH Foundation for Advanced Education in the Sciences.  Jonathan has taught individuals on the art of prior art searching to audiences on four continents.  He is also a former patent examiner.  Jonathan has a BA in Physics from Gustavus Adolphus College, an MS in Physics from the University of Delaware, and a graduate certificate in Instructional Systems Development from the University of Maryland, Baltimore County.

Rosanna is a Senior Information Research Scientist at The Hershey Company. As part of Technical Intelligence for Hershey’s Research & Development, her focus areas include intellectual property strategy, intellectual property research & landscape analysis, competitive technical intelligence, and scientific information research. Rosanna manages the Technical Intellectual Property Committee.

Rosanna earned a Food Safety Certificate from the Pennsylvania State University, an MLS at Clarion University of Pennsylvania, and a B.A. at Randolph-Macon Woman’s College.

Devin Salmon


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Responsible Use of AI for Patent Information. 

Martha Yates, Bayer CropSciences

Abstract

The current surge of interest around generative AI may give the impression that AI is a recent development.  However, the reality is that AI processes have been integral to the provision of patent information for many years.  As professionals, it is crucial to establish reasonable expectations for our AI systems and understand how to seamlessly integrate them into our workflows.  During the talk, I will address the common misconception of AI systems as magical problem solvers, and the tendency to assume that technology can outperform human expertise.  I will emphasize the ethical use of AI and discuss how we often fall into the traps of technoabilism and technochauvinism.  Moreover, I will debunk the myth that AI will replace human jobs, highlighting instead that jobs will be transformed by individuals who effectively use AI tools.  These systems make experts more efficient, but they don’t turn novices into experts.  Join me in exploring how to rethink our relationship to AI and what we expect of ourselves and these systems. (Disclaimer, generative AI helped me polish this abstract.  A bibliography of further reading will be provided.)

Biography 

Martha Yates is a Senior Principal Information Scientist and a Science Fellow at Bayer CropSciences, She is a QPIP and has been a member of PIUG since 1994 (or thereabouts) and on the board of directors for the past 10 years.  Martha has a BA in biology from Colorado College, a MS in Biochemistry and a MS in Library Science from the University of Kentucky.  She is also a registered patent agent with the USPTO.  In her current role, she does patent searching and patent information management.  She was the recipient of the Stu Kaback Business Impact Award in 2020.

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Patent Alert for Targeted Protein Degradation

Julia N. Heinrich, Ph. D.,  Bristol Myers Squibb

Abstract

The search request was to develop a Patent Alert for composition-of-matter patents claiming small molecules in the technology of targeted protein degradation (TPD). The hits are prioritized for manual curation and inclusion into a centralized database which enables the R&D scientists to stay on top of this rapidly emerging field. On average, 6-7 numbers of new hits are identified in each weekly update and 2-3 are uploaded into the database.

In TPD, a bifunctional molecule simultaneously targets a protein(s) of interest (POI) and a recruiter protein of a degradation pathway. The interaction triggers degradation of the POI. Its key attractiveness is for inhibiting “undruggable” targets. One of the most infamous and famous drugs TPD is thalidomide.

This presentation will discuss give a very broad description of TPD technologies and the search strategy developed in Minesoft PatBase database to obtain high retrieval and low noise as well as a comprehensiveness result set. The Alert has been in use by R&D scientists for over a year and adapted by me to requests for new Alerts that are for programs on specific protein targets.

Biography

Julia Heinrich has been a Senior Patent Analyst, Biotechnologist at Bristol Myers Squibb since 2011. She started in this field as a Patent Information Analyst consultant at Sanofi in 2010 after a career as laboratory scientist at Wyeth (now Pfizer), a postdoctoral fellowship at Bristol Myers Squibb, and education at Cornell University -Memorial Sloan Kettering Cancer Institute (Ph. D) and Brown University (BA). Julia became certified in 2019 as a Qualified Patent Information Professional (QPIP) and won the PIUG annual Brian Stockdale Memorial Award in 2011.

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Edible, Comestible, Consumable: Navigating Food Science IP

Rosanna Lindquist and Jennifer Cessna, Sr. Information Research Scientists, Technical Intelligence, The Hershey Company

Abstract

The Food Industry can be a complex minefield of terminology and metadata that can present challenges to the uninitiated. In this presentation, we will offer tips and tricks for locating useful keywords using thesauri, food industry non-patent literature sources, product launches, and online resources. Additionally, we will review techniques to create a roster of potential assignee names to help identify relevant art on potential partners or emerging competitors.

Biographies

Rosanna is a Senior Information Research Scientist at The Hershey Company. As part of Technical Intelligence for Hershey’s Research & Development, her focus areas include intellectual property strategy, intellectual property research & landscape analysis, competitive technical intelligence, and scientific information research. Rosanna manages the Technical Intellectual Property Committee.

Rosanna earned a Food Safety Certificate from the Pennsylvania State University, an MLS at Clarion University of Pennsylvania, and a B.A. at Randolph-Macon Woman’s College.

Jennifer is a Senior Information Research Scientist at The Hershey Company. As part of Technical Intelligence for Hershey’s Research & Development, her focus areas include intellectual property research & landscape analysis, competitive technical intelligence, scientific information research, and knowledge management. She is also part of 2 cross functional teams focused on Better for You Sweets and Pretzels.

Jennifer earned a Knowledge Management Certificate from the Special Libraries Association (SLA), an MLS at North Carolina Central University, and a B.S. at Penn State University. 

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Information Literacy and the Patent Information Professional

Malcolm Hallam, Senior Information Advisor, ExxonMobil Technology and Engineering Company

Abstract

One inescapable characteristic of recent decades is the explosion in the amount of information available to the average citizen, challenging everyone’s capacity to make sense of it. The consequences are amplified by the growth of technology that gives consumers self-service access not only to the content, but to all kinds of aggregation, filtering, analysis, interpretation, reviews, etc., as well. The impact on society at large has been sensationally reported in stories of ‘fake news’ and accusations against the role of social media platforms. Equally, there are concerns about working with the information deluge in the workplace. Are your colleagues using the right information, in the right way, to make their business-critical decisions?

Before you can respond to an information need, you have to address the information literacy barriers that at least cloud, if not misdirect the perception of the true question and how to go about finding authoritative answers. This extends into the work of the professional patent researcher. While most of us apply aspects of information literacy routinely, new and different skills have become necessary. Roles in the corporate enterprise have changed … and many have expanded. Clients of the patent researcher have changed and conversations with those clients are necessarily different.

This presentation will examine how information literacy concepts show up in the work of today’s patent information practitioner and how the role has shifted to become more of a teacher and counsellor.

Biography

Malcolm Hallam is Senior Information Advisor at ExxonMobil Technology and Engineering Company. His first career was as a polymer scientist, working on development of emulsion polymers for adhesives, coatings, and various specialty chemicals applications. In 2000 he left the laboratory to begin a second career in information science, taking on the technical and patent searching role, as well as supervision of the Information Center and global information services for National Starch and Chemical Company, then a division of ICI. 

In 2009 Malcolm joined ExxonMobil in Annandale, NJ, as a patent researcher, becoming Team Leader first for the patent searching group there and subsequently for the Downstream Technical Information Center. His scope of influence encompassed all the internal and external content services, various information management processes, and specialized technical searching related to occupational health, biosciences, environmental, and litigation matters. With the formation of ExxonMobil’s Central Library and Information Center, Malcolm has assumed the role of Information Advisor, with responsibility for guiding the team in tools, processes, and practices necessary for the group to be effective within the evolving corporation.

Malcolm received BA and DPhil degrees in chemistry from the University of Oxford and an MS degree in management of technology from New Jersey Institute of Technology. He is a past Board member, Treasurer, and Membership Chair of PIUG and has been a member of the association for 23 years.

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Technology Opportunities Identification in Low Carbon Space - Search and Visualization of CO2 Capture External Options

Zhifu Shu, Sr. Advisor, ExxonMobil Technology & Engineering Company

Abstract

Reaching the Paris Agreement's 2°C target demands a transformed energy system. This talk explores using information discovery and analysis to identify promising carbon capture technologies. We will share our experience collaborating with internal specialists to unearth external technology opportunities in the low-carbon space.  By analyzing both patent and non-patent literature through text mining tools, we visualized and assessed various carbon capture options, providing valuable insights for decision-making and action.

Biography

Zhifu Shu joined ExxonMobil’s Information Research and Analysis (IR&A) unit in 2001 and is currently a senior advisor of Information Research in its Central Library & Info Center (CLIC) within the Strategy and Information division.  He has been the organizer of the popular in-house clients’ outreach webinar series called CLIC Connect since early 2022.  Zhifu was awarded the PIUG Service Award at the 2012 PIUG Annual Conference.  He holds a Ph.D. in organic chemistry from the University of Michigan-Ann Arbor and an undergraduate degree in chemistry from Wuhan University, China.  

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Deep Learning for Patents

Jason Lee, Assistant Professor of Law at the NYCU School of Law in Taiwan

Abstract

Deep Learning has made remarkable advancements in recent years. My presentation at the PIUG Annual Conference aims to provide an overview of my research on the applications of Deep Learning techniques and language models in the patent domain since 2019. The ultimate goal of my research is to promote "Augmented Inventing," which is intended to help inventors be more inventive in the patent domain. Towards this end, a promising direction is to utilize Generative Pretrained Transformer (GPT) models for patent text generation. Referred to as PatentGPT in my research, the implementations in this direction show significant potential not only for inventors but also for patent agents and attorneys to be more productive. Importantly, in February 2024, the USPTO released the Inventorship Guidance for AI-Assisted Inventions. According to the examination guidance, an AI-assisted invention is patentable so long as a human satisfies the joint-inventorship standard of significantly contributing to the invention. The challenges that need to be overcome before PatentGPT can serve as a tool for AI-Assisted Inventions will be addressed.

Biography

Jieh-Sheng Jason Lee serves as an Assistant Professor of Law at the NYCU School of Law in Taiwan. He earned his Ph.D. in Computer Science and specialized in the application of Deep Learning techniques to patent research for his doctoral dissertation. He is currently delving deeper into this area of research, with a particular focus on utilizing GPT models for patent text generation. His legal education includes LL.M. degrees from both George Washington University Law School in the U.S. and NYCU School of Law in Taiwan. In addition, he holds an MS and a BS in Computer Science in Taiwan, with the former from NTU and the latter from NYCU. In the field of programming, his undergraduate team won the regional championship in the ACM International Collegiate Programming Contest, earning the honor of representing Taiwan in the Worldwide Final. In the field of law, he passed the USPTO bar exam as well as the New York bar exam. Before academia, he worked at Novatek and TSMC in Taiwan.

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Focused IP Reports: FTO Whitespace, Surveillance, Structures, Sequences, and Beyond

Matt Eberle, Lead Developer, Analytics and Custom Solutions, BizInt Solutions


Abstract

How do you distill a large set of search results into a focused IP report that meets the needs of your client?

This presentation will showcase several examples of focused patent reports developed in collaboration with patent information practitioners -- including FTO "whitespace" analysis, new publication surveillance, chemical structure review, summarizing key IP sequences, and classifying publications of interest.

We'll discuss the challenges of balancing stakeholders' stated requirements against the need to deliver reports focused on the most important aspect of a search, with the goals of streamlining manual work, minimizing error, and preserving the expert searcher's time for review and analysis.

Biography

Matt Eberle is an information professional with over ten years spent in the pharmaceutical industry before joining BizInt in 2013. He has worked with groups from early R&D to legal and commercial. He's always interested in talking about search challenges and tools to tackle them.

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Digging Deep into Patents

Ron Kaminecki, Kaminecki IP LLC

Abstract

Even though your search has yielded “killer” prior art, the work may not be done yet. There may be more information that can be gleaned from patents if you only pressed a bit more. Squeezing a turnip only goes so far, but milking a document for what it’s worth may introduce yet more compelling art.

This presentation will cover examples of alternative strategies that can be used to find information on top of what has already been found, including the use of information resident in patents found already. Focus will be on an in-depth dive into the background of intellectual property  to find information that may have been missed using traditional methods and also indicating when a search may be done.

Biography

Ron Kaminecki has worked with technical, scientific, and legal researchers in various capacities, as Manager, Advisor, and Director, mostly at Dialog under its various owners, and has been employed at several companies, always in the area of patent information. Currently, he is consulting at Kaminecki IP LLC and teaching patent searching at DePaul and the University of New Hampshire law schools.

Ron is a Patent Attorney with a BS in Chemistry, MS in Computer Science, JD with a Certificate in Patent Law and is also a Qualified Patent Information Professional.

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Painstaking Experimentation Is Not Enablement: Implications of Amgen v. Sanofi

Thomas Ehrich, Rakoczy Molino Mazzochi Siwik LLP


Abstract

In Amgen v. Sanofi, the Supreme Court considered the scope of antibody claims defined by function and held, among other things, that “painstaking experimentation to see what works … is not enablement.”  This presentation considers Amgen as it relates to antibodies, as well as to other areas of biotechnology, such as other types of polypeptides, mammalian cell culture, and methods of treatment.  It then looks at Amgen from the standpoint of those involved in prosecution, patent searching, opinion work, commercialization, and litigation.

Biography

Thomas Ehrich is Counsel at Rakoczy Molino Mazzochi Siwik LLP.  His practice focuses primarily on biotechnology and pharmaceutical patent opinion work, inter partes reviews before the USPTO, pre-litigation, and litigation.  Representative technologies include CRISPR gene editing, production and formulation of recombinant fusion proteins and monoclonal antibodies, recombinant human Factor VIII, delayed-release pharmaceutical formulations, medical devices, and methods of administering pharmaceutical products.  Prior to joining RMMS in 2013, Dr. Ehrich worked at McGuireWoods LLP and Ropes & Gray LLP.  He has also consulted for Cambia on its development of the Lens.  Dr. Ehrich received a J.D. from Northwestern University, a Ph.D. in molecular biology from Washington University in St. Louis, and a B.A. from Gustavus Adolphus College.


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Patent Mining: Excavating the Fuel to Power the AI Drug Discovery Revolution

Sam Winders, Patsnap

Abstract

The release of ChatGPT 3.5 by OpenAI in November 2023 has precipitated a surge of interest in the capabilities of generative API in many domains, including drug discovery. However, whilst GPT 3.5 was trained on 175 billion parameters (and GPT 4 a whopping 100 trillion – effectively the whole of the internet), in contrast, AI in drug discovery world is suffering from a data famine. The 19,000 FDA approved drugs (which are typically published with comprehensive pharmacokinetic, pharmacodynamic and other datapoints) make up a tiny subsection of pharmaceutical research, whilst the internal data generated by large pharmaceutical companies may historically not have been published to FAIR standards (requiring extensive processing to be used), and may be difficult to locate and access, even for their own employees! By far the largest publicly available dataset of experimental data, is therefore to be found within the patent literature, yet this too is not without significant challenges.

Through case studies in antibodies and RNAi, we will explore the significant challenges - and massive opportunity - in systematically mining and extracting this information from patents, the least “FAIR” of any dataset, and leveraging it to fuel the AI drug discovery revolution.

Biography

Sam Winders is the lead representative for the healthcare and life sciences team at PatSnap. One of the organization’s longest serving employees, Sam works closely with our leading customers and the PatSnap product development team to ensure that our customers’ needs our met and that PatSnap continues to rapidly expand the technical frontier within the evolving patent information space.

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Plant Patents Color Image Site - Background and Technical Challenges

Russ Allen, PTRC

Abstract

Purpose: This project puts color images of the majority of plant patents online. It allows full

search, with browse of major categories. “Disclaimer: For legal use, these images MUST be

ordered from https://certifiedcopycenter.uspto.gov/

Background: Patenting of plants reproduced asexually began in 1931. Those before 1976 can

be searched by issue date or either CPC1 or USPC classification in USPTO and other free web

databases, with inventor names back to about 1920. All free databases currently have only

black and white images. Historically, USPTO has claimed that online PP color image quality is

not reliable, but patentcenter.uspto.gov now allows 1 by 1 view of them in supplemental content back to about 2009.

The Project: In 2014 UMD Libraries organized a team from several departments, to design a

database, scan color images2, collect and clean data, and create web pages and visualizations

of the data. They had major problems working with different formats, and Russ Allen helped

supply missing data and cleaned up inconsistent formats.The work is ongoing and currently

plant patents through PP34350, issued June 14, 2022, are available at

https://digital.lib.umd.edu/plantpatents

Biography

Russ Allen is a recently retired Java programmer whose interest in patents stems from

his use of antique tools, some of which are marked with patent dates. He's a developer and

data steward for datamp.org, a searchable web site of over 80,00 tool patents. He is also the

webmaster for the Patent and Trademark Resource Center Association's site ptrca.org. Through that association, he became involved with the University of Maryland Libraries’

Plant Patents Digitization.


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Look Back on the First Two Years

Kathleen Kalafus, Supervisory Technical Information Specialist, STIC, USPTO


Abstract

July 1, 2024 will mark two years since the implementation of WIPO Standard ST.26 worldwide.  ST.26 sets forth the rules for when, and how, biological sequence disclosures must be included in a sequence listing. 

The overarching goal of ST.26 was to provide a clear, comprehensive set of rules, compatible with INSDC requirements, that would be enforced consistently among all IP offices. 

This presentation, that will be given by a United States Patent and Trademark representative, will discuss the successes and challenges of ST.26, the lessons learned, and plans for ST.26 going forward.  In addition, the most common mistakes made by applicants when filing ST.26 sequence listings will be discussed, along with practical advice for avoiding these pitfalls.

Biography

Kathleen Kalafus is a member of the Scientific and Technical Information Center (STIC) where she provides subject matter expertise in the development of policies and IT systems for the processing and dissemination of biological sequence data.  Kathleen has been a member of the USPTO ST.26 Task Force since 2014.  In this role, she has worked closely with international partners to develop policies that will benefit IP Offices worldwide, as well as the scientific community.  Kathleen began her career as a patent agent in a boutique IP law firm, drafting and prosecuting patent applications for a wide variety of biotech clients, with a particular emphasis on biologics and genetic engineering.

Kathleen holds a PhD in Genetics and Molecular Biology from Baylor College of Medicine and a B.S. in Biology from Cornell University. 

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ElasticBLAST: Using the Cloud to Accelerate Sequence Searching

Anne Marie Clark, Senior Scientist, CAS IP Services and Christiam Camacho, Technical Lead, NCBI


Abstract

Conducting bulk/batch biosequence searches can be difficult on most search platforms. ElasticBlast, developed by NCBI (National Center for Biotechnology Information) is a powerful tool that allows users to run high-volume, proprietary sequence searches without bioinformatics expertise. ElasticBLAST can handle thousands of queries by running searches in parallel on thousands of virtual CPUs. For ease of access, the tool is supported on Amazon Web Services and Google Cloud Platform. Cloud costs are reduced through native orchestration tools and by deleting resources when no longer needed. ElasticBLAST can search BLAST databases provided by NCBI or user databases and is useful for complex patent validity searches.

Biographies

Anne Marie is a Senior Scientist with CAS IP Services who previously held IP information and management roles at Long Eaton LLC, Bausch & Lomb, and Pfizer. She holds a doctorate in biophysical chemistry from the University of Louisville, and is a member of PIUG, Licensing Executive Society, Women in Bio, and Association for Research in Vision and Ophthalmology. She specializes in chemically modified biosequence, biotechnology, pharmaceutical and small molecule searching and analysis.

Christiam Camacho is the technical lead of the team that supports the Basic Local Alignment Search Tool (BLAST) at the National Center for Biotechnology Information (NCBI) in Bethesda, MD. He has worked on its web, cloud, and command line applications, databases, and core algorithms and infrastructure. His background is in Computer Science with an specialization in distributed software systems. Before NCBI, he worked in a fingerprint identification system used by police departments worldwide.


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