Reporting from the 2013 Patent Information Users Group (PIUG) Annual Conference – Plenary Session Notes
I spent the last week in Alexandria, VA (Home of the USPTO) participating in the 2013 Patent Information Users Group’s (PIUG) Annual Conference. The description of the event from the PIUG website describes the meeting as follows:
The conference will feature world-renowned experts on patent information for technology research and planning, for legal organizations, and for overall corporate IP management (technology licensing and related activities). The conference will include many opportunities for discussion and part of Tuesday afternoon will be dedicated to visiting the exhibit hall. Many workshops will also be held in conjunction with the conference (before, during and after the technical sessions).
The final attendance for this year’s event was 243 participants and preliminary feedback suggests that the conference was very well received and of high value to the attendees. The theme of the conference was Celebrating our Past 25 Years… Preparing for Our Future: Best Practices for Keeping Up with the Rapidly Changing Patent Landscape.
I kept running notes on all of the presentations during the plenary session that are provided below. I was also tweeting during the event, at #piug2013, and will put together a subsequent post with the entire Twitter feed for the event. Details on each talk can be found in the Twitter feed. The speakers name has been bolded to make it easier to see these tweets.
The following are some highlights from the plenary session:
Plenary Day 1 Notes
Keynote Presentation – The USPTO: Transformation and Engagement – AIA Highlights, the Importance of IP to the US economy – Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO
Acting Director Rea discussed the jobs report published by the office a few years ago that showcases the enormous contribution that IP related jobs have had on the US economy. IP related positions are responsible for creating a large number of jobs in the US. Acting Director Rea also covered the multi-track examination system, the third-party submission system and the various post-grant review procedures from the USPTO. She did a nice job of showcasing the tremendous changes that have taken place at the USPTO over the past few years and how those changes impact patent information professionals.
Using Multiple Online and Single Country Legal Status Databases to Resolve Licensing Fee Issues – Carol E. Bachmann, 3M
Discussed issues and sources for legal status information. This was applied to a practical business example where a client needed to know what family members were still in-force and which ones had expired in order to determine if 3M needed to continue paying licensing fees for patents within the portfolio. As a result of the work, 3M was able to get a refund on some of the royalties they had already paid and reduced their ongoing payment. It was stressed that in many cases National Registry for each family member needed to be consulted for accurate legal status data.
Patent Informatics in a Filter Bubble Age – Kristine Atkinson, A/A Patent Investigations
Searchers need to be concerned about saved strategies and how information is filtered by various internet-based services so the results that the search engine providers want you to see get prioritized higher than the results you might most be interested in. This talk provided ways to search in an anonymous fashion so sensitive data isn’t saved and in such a way that the most relevant results are retrieved as opposed to the sponsored links.
Into the Future Together: The Challenges for Providers and Users of Patent Information in Today’s Fast-moving World and How to Meet Them – Cynthia Murphy, Thomson Reuters
Cynthia discussed the application of patent information to additional business centers within individual companies and how patent information professionals are required to transform good content into actionable intelligence and ultimately to insight. This process helps patent information professionals increase their value and importance within their organizations and allows them to reach new audiences beyond the legal and R&D communities.
Overcoming the language barrier – The EPO’s Patent Translate service – Richard Flammer, European Patent Office
Richard provided an overview of the machine translation services being supplied on Espacenet in conjunction with Google. Twenty-two languages are currently being supported with the eventual goal of supporting all of the languages provided for in the written patents of all EU member states. The talk provided details on how information is passed between the EPO and Google and what processes they have to follow in order to reach the standards they have for each new language before they release it.
Understanding Machine Translation and the Challenge of Patents – John Tinsley, IP Translator
Provided background on some of the methods and practical considerations that go into building machine translation systems. In particular, the presentation discussed the differences between word by word translations versus phrase to phrase translations. Which method gets used by the various systems will depend on the differences between the target and source languages and how they are grammatically assembled.
Debabelizing the Portfolio: Embedding Patent Analysis in Your Patent Portfolio Processes – Mark Stignani – Schwegman, Lundberg & Woessner
Analytics should be inserted into as many places as possible in the patent prosecution lifecycle. Patent considerations should be made at the highest level of management within a company especially with the CFO and CTO but should be explainable and include the engineers as subject matter experts. Mark shared with the audience that he is often able to justify additional prep and prosecution work to the Chief Financial Officers of a company since he has used analytics to support the decision-making process and the development of a patent strategy aligned with corporate business goals.
Updating our Patent Search and Analysis Tools – David Weber, Corning Incorporated
This presentation outlined the process Corning went through when they decided to find another corporate-wide patent searching tool which would be used by both the professional patent searchers and the stakeholders interested in patents throughout the company. Three patent searching tools were evaluated against more than a dozen criteria which were weighted due to importance for the company in order to make a decision on which tool would be chosen for the Corning. A multidisciplinary team including IT people, patent information professionals and key client group made up the collection of evaluators. In addition to looking at a new patent searching tool, Corning also evaluated several patent analysis tools and separately chose a new analysis tool for the company as well.
Plenary Day 2 Notes
Historical Impact of Major Patent Authorities on Chemical Information in CAS REGISTRY and CAplus – A 20-Year Examination – Matt McBride, Science IP
The chemical information databases from CAS is one of the key collections required by patent searchers when conducting a comprehensive chemical search. While there was no one country which seems to provide the highest impact from a chemical perspective it is clear that PCT documents provide the most chemical content followed by the US and EP. China is important but there are not as many compounds indexed from there.
Understanding And Locating Extended Patent Terms For Pharmaceuticals – Natalie Pilote, Novartis
Patent professionals need to concern themselves with various extensions and adjustments that can impact the life of a patent and the period of market exclusivity. There is a difference between regulatory based extensions versus ones that are put in place to provide incentives for orphan and pediatric drugs. This presentation looked at the situation in the US and Europe and the difference between systems in these countries as well as extensions from other countries around the world.
Global Pharmaceutical Innovation: Using Patents to Track the Past and Predict the Future – Yali Friedman, ThinkBiotech
Discussed the market economics associated with biotech and pharmaceutical drugs and how critical strong patent protection is to ensuring a return on investment from these compounds. Also made the point that the majority of the inventors on drug patents still come from developed nations. In China, for instance, very few marketed drugs appear to have been developed by inventors who reside in that country. There was also a cautionary tale about incomplete data from countries that don’t report on a regular basis to the international sources.
Leverage Text Analytics Tool in Patent Analysis to Empower Business Decisions – A Patent Landscape Project Using I2E for Kinase Assay Technology Platform Analysis – Yun Yun Yang, Bristol-Myers Squibb
Used linguistic processing to identify relationships between technologies used, therapeutic areas and different types of kinase enzymes. Started with patent families from PatBase, analyzed the documents using Linguamatics I2E system and then visualized the results initially in Excel and then with other tools such as Spotfire. This was a large, multi-disciplinary project that provided key insights into the company and its competitors.
Duck Season. Rabbit Season. Chemistry Search. Biology Search – Kim Miller, Novartis
Comprehensive searching requires the use of many different methods. In biotech for instance some substances may have been covered as a structure as well as a sequence and will have keywords associated with them as well. Understanding the needs of the client is critical to being able to provide the appropriate information for their processes. In this presentation several practical examples were provided where comprehensive results could only be achieved by using multiple searching methods.
Applications of Data Cleaning in Patent Analytics – Matthew Luby, Landon IP
The need to standardize owners (assignee), families and year type is absolutely essential to provide accurate statistical measures. In a lot of ways, all of this is being done to tell a story to your client, a decision maker with limited experience, in a way that they can easily understand. Comparisons were made between the different approaches to cleaning up each of these individual fields and their consequences.
What to Look for When Using US Public PAIR – Anthony Trippe, Patinformatics, LLC
This presentation provided a view into the experiences associated with publishing a blog related to best practice in patent analytics. Two examples of recent studies in patent analytics were provided. The first was associated with the signals of value that users can find when they conduct a forensic analysis of individual patent prosecution cases as found in the USPTO Public PAIR system. A second example was discussed pertaining to issues discovered in the counting of forward citations, especially since US pre-grant publications have become more popular. Finally, some fun posts associated with recent patent litigation cases were discussed.
There’s a New U.S. Patent and Trademark Data Host in Town! – Dave Abbott, Reed Technology and Information Services Inc
The hosting of the full collection of USPTO data is transitioning from Google to Reed Technology and they will begin putting some of the data online in a beta test by the end of May. They hope to launch the full collection with the exception of some of the Public PAIR files by the end of June. It is complicated to put the full image file wrapper (IFW) data online so this will likely come a little bit later.
Plenary Day 3 Notes
Improving the Use of Patent Information – KIPO’s IP Information Services – Hee-tae Kim, Korean Intellectual Property Office (KIPO)
Provided an overview of the various systems being made available by the Korean Patent Office. The databases involved are the same ones used by the examiners. Mobile delivery of patent information is very popular among end-users and the Office is working to provide additional access to machine translations. A few people have commented that Korean translation in to other languages is a key issue and it is being addressed.
The CPC Browser in Espacenet and USPTO’s CPC Experience – Nigel Clarke & Pierre Held, European Patent Office; Christopher Kim, USPTO
Officials from the USPTO and EPO provided an update on the implementation and launch of the new Cooperative Patent Classification (CPC) system. EPO is classifying all new documents published since January 1st, using the CPC while the US is publishing ~60% of the pre-grant applications this way. The USPTO has a goal of transitioning away from the USPC by the end of 2014. There was also a demonstration of the various browsers for identifying qualifying CPC codes from both the USPTO and from Espacenet.
Summarizing Sequence Results by Patent Family – John Willmore, BizInt Solutions
When dealing with complicated patent families and situations where the individual family members can have different content in them it is important to be able to summarize these changes within the larger family context. Examples of this using biosequences and legal status were provided. The issue is very complicated and work is ongoing to create methods that take advantage of automated methods but also allow for manual review and additional entries.
PatBase: Adding Value And Preserving Quality In A Global Patent Database – Elan Raday, Minesoft
Discussed several different examples of data fields where errors can be identified by machine but typically have to be corrected by hand in order to make sure that the users can retrieve the content and that it is essentially correct. Assignee names from Japan and China were also discussed and how Minesoft enhances this data by translating these names without waiting for a latin equivalent. This provides critical data about Asian companies to their clients weeks or months before they would see them otherwise.
Applying Landscaping Tools to Determine Competitive Opportunities – Miguel Iglesias and Joe Terlizzi, Questel
Used the example of a particular organization in the swimming pool cleaning field to demonstrate how a variety of patent analysis tools can be used to provide insight to support business decision-making. A five-step methodology was suggested for gaining insight from raw data and the example used walked through this process and demonstrated what analysis tools could be used at each step.
The New STN Platform: Revolutionizing Patent Searching for Professionals – TJ Bowen, STN
The New STN platform has been redesigned to make large comprehensive queries easier to perform while giving the users the ability to filter the corresponding results. The philosophy appears to revolve around the concept of being able to search as broadly and as quickly as possible and providing useful features for narrowing the large sets based on the specific needs and requirements of the users. Refinement of searches and general ability to explore and navigate large collections of data appear to be key features of the new system.
WIPO’s Patent Landscape Project and Patentscope – Lutz Mailänder, WIPO and Iustin Diaconescu, WIPO
WIPO has embarked on a patent landscaping project primarily to help developing nations understand and take advantage of patent information and use it to drive policy discussions on various topics of interest. The process of soliciting bids, evaluating them and delivering the subsequent reports was covered. The Patentscope system was also demonstrated with an emphasis on the multi-language search features and the various analysis capabilities associated with the tool.
Patent Searching: A Game of Imperfect Information – Dominic DeMarco, DeMarco IP
Typical decision-making around the world of patent information involves being able to do so without perfect or complete information. This talk suggested that game theory might provide a method for understanding the decisions that need to be made, the opponents involved in the scenario and how to weigh the possible outcomes of the different scenarios.
Update on US Patent Law and Practice – Focus on Board Proceedings – Richard Neifeld, Neifeld IP Law, PC
The Patent Trial and Appeals Board has started new trial procedures to help determine the validity of patent documents before they are used in District and Federal courts. In this presentation the various proceedings were discussed and details were provided on the most popular proceeding thus far, the Inter Partes Review.
US Patent Office Information Technology Developments – Marla Grossman, Coalition for Patent and Trademark Information Dissemination
There are major concerns about the new “Dirty OCR” process being implemented by the USPTO, theoretically without human intervention and it may have an impact on the quality of the information published by the USPTO in the future. There were issues raised with regards to a proposed change to the application system where applicants will have to file in XML format. Finally, there was a discussion on why the USPTO is being impacted by sequester cuts when the funds are generated by private user fees and how these cuts will impact the programs at the office.
Advances in Non-Patent Literature Searching: 25 Years of Information Distilled to 140 Characters – Ron Kaminecki
A discussion of non-patent literature and some of the implications of using this particular source. For instance, searchers should look for a good date even if you have to dig a little further to find the real date of publication. New sources, especially with the use of the internet and social media are coming online all the time and should also be considered especially with regards to how they are archived. As usual the talk was very entertaining and provided some practical advice on using NPL for conducting prior art searches.