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PIUG Conference, Minneapolis, May 2006
World Patent Information 28 (2006) 358–359 www.elsevier.com/locate/worpatin
Conference report PIUG Conference, Minneapolis, May 2006 The popular annual PIUG Conference was once again both well organised and well attended. The delegate list included nearly 300 people, the majority from the USA, but with significant contingents from Europe and Asia. Within the overall title of ‘Patent information: overcoming pitfalls and enhancing productivity’, the conference was organised into a number of sessions. For each session I have listed some typical presentations, and then amplified those where further explanation is needed or which I found particularly interesting. 1. Strategic planning for patent search groups Presentations here included: Do You Truly Leverage What You Already Know? (Keynote, Charles Dennis), The Ever-Changing Role of Information Analysts in Pharmaceutical R&D (Doreen Alberts), and 3M Information Research and Solutions in 2010 – Mapping and Driving the Future of a Corporate Information Organization (Martha Ellison). 2. Enhancing productivity – from search to report Typical presentations were: Open Patent Review Initiative – OPRI (Bill McGinnis), How to Optimize Search Reports for Clients – Tips From an Independent Search Firm (Allison Taylor), Patent Analysis and Visualization for Technology Assessment (Yateen Pargaonkar), and Searching for Needles in Sewing Boxes: Advantages of Subject Specific Databases Over Uncontrolled Free Text Files (Edlyn Simmons). The OPRI is a joint action by the USPTO and several partners, including IBM, to improve the US patent system in a number of respects and to ensure that the system is more consistent with what is expected in the world community. Specifically, the OPRI includes: (a) Community Patent Review, in which expert reviewers receive notification alerts of newly published patent application. (b) Open source materials to be made more available as prior art. (c) Patent quality index, which is academically driven, to be established taking account of various aspects of the patent preparation and examination process. doi:10.1016/j.wpi.2006.06.001
Edlyn Simmons’ presentation provided a timely reminder of the value of controlled keywords in specific patent databases, when compared to the uncontrolled free text environment. 3. Nuts and bolts: mechanical/device patent searching The speakers in this session covered, for example, Tools and Techniques for Finding Device Patents: Pumps, Valves, and Dispensers (Jane List) and Automated Patent Portfolio Analysis and Categorization (Steven Sampson). Searching for device patents is an area that is not very often covered, so Jane List’s clear presentation was very useful, and pointed up the difficulties when compared to chemistry, where there are formulae and controlled language to help. In looking at what future developments could alleviate this situation, she mentioned the possibilities of image recognition software. She also spoke about the analogies between the requirement for patent models in the 19th century with current device inventions that are created in 3D in CAD/CAM packages, but then still have to be reduced to 2D form for patent applications.1 4. Patents on campus: the role of patent information in academia With introductory remarks from Michael White on The Role of Patent Information in Academic Research, Teaching, Learning and Technology Transfer, Susan McFadden Patow presented an Overview of Academic Patenting and Licensing, while Nancy Spitzer spoke on Patents 101: Teaching Patents to Engineering Students. 5. Product reviews and Vendor panel Following a number of product reviews, a vendor panel discussed the topic of Simplicity out of Chaos: IPC Reform from the Vendor Perspective. 6. Current events: challenges and pitfalls Some presentations in this session included: the Application of Text Mining in the Analysis of Patent Literature 1 We have explored some aspects of this area in an article by Durack [1] and a discussion paper by Adams [2].
Conference report / World Patent Information 28 (2006) 358–359
(Christophe Beguel), To Pastures New – A Searcher’s Guide to Less Well-Used Fields of Data (Stephen Adams), Tips for Cost Effective and Efficient MMS Searching (Judy Johnson Philipsen), Are Long Chemistry-Patent Publications by Definition Difficult to Understand and Analyze? (Lawrence DeBolt), and Thomson Scientific Solutions: Meeting Business Needs Through an Integrated Information Solution (Stuart Dodd). Stephen Adams gave an interesting talk on some of the byways of online databases, such as the analysis of the attorney name data, since this can often give a clue to subject matter, a similar analysis of the USPC Art Units linked to patent examining groups, and making use of the location indicators at the beginning of EPO application numbers. Judy Johnson Philipsen tackled the difficult topic of Markush searching, with some practical recommendations on both the initial work of assessing a search request and ensuring that the search subject is properly defined, and on the later stage of devising and running suitable search strategies. 7. Current events: patent offices Amongst the presentations here were: requiring PreFiling Patentability Searches and Examination: an Emerging USPTO Policy (Joe Ebersole), Search Strategies and the Reformed IPC (Pasquale Foglia), and The IPC and Other Animals (Dan Shalloe). Some new initiatives aimed at solving the USPTO’s continuing problems with search backlog/quality issues were described by Joe Ebersole, and these include the proposed requirement that applicants should provide a pre-filing search and examination, limitations on the number of claims in each patent application, and the use of search templates specifying the required sources, both patent and non-patent, for each area of subject matter. Pasquale Foglia provided a good picture of the practicalities of the reformed IPC (IPC 8), and its implementation and use in search strategies, especially with respect to patentability searches. Dan Shalloe’s presentation provided an update on progress in the EPO’s patent information efforts, particularly items following on from discussions at their Patent Information Conference in Budapest last November [3], e.g. nanotechnology tagging [4], Chinese patent information helpdesk established, and improvements to the treatment of ‘complex’ applications. Several of the presentations are likely to form the basis for future articles here, for example those on Markush searching, searching device patents, search strategies and the reformed IPC, and the USPTO’s emerging policy on pre-filing patentability searches.
359
The three day main conference was preceded and followed by a number of workshops and training sessions spread over three days. Awards made during the conference included the Brian Stockdale Memorial award to Meredith Saba of Indiana University, and PIUG Service Awards to Cynthia Yang, Helen Yun, Marty Goffman and, posthumously, to Richard Kurt. The exhibitors included: Thomson Scientific, Questel*Orbit, BizInt, Elsevier MDL, Fiz Karlsruhe, Prous Science, TPRI, CAS, EPO, IFI Patent Intelligence, Intellevate, IP.com, KIPI, Minesoft, Omniviz, PatentInformatics, RWS, Search Technology, Vantage Point, Swedish Patent and Registration Office, Active Motif, and Temis. The conference dinner took place in the interesting setting of the Science Museum of Minnesota and the visit included a viewing of the amazing ‘Body Worlds’ exhibition with superb human anatomical displays; the dinner and visit were sponsored by Thomson Scientific. Once again, Nancy Lambert produced a fine entertainment on the second evening, with the IFFI Players latest production. Overall the conference provided a good mix of presentations, rightly catering primarily for the experienced patent searchers and analysts, but also including some material of a less challenging nature. As usual it was a pleasant and friendly conference. If you missed it this year, make an early date in your diary for next May – see www.piug.com for further information.
References [1] Durack K. Tacit knowledge in patent applications: observations on the value of models to early US Patent Office practice and potential implications for the 21st century. World Patent Inform 2004;26(2): 131–6. [2] Adams S. Electronic non-text material in patent applications – some questions for patent offices, applicants and searchers. World Patent Inform 2005;27(2):99–103. [3] Blackman M. EPO Patent Information Conference, Budapest, Hungary, November 2005. World Patent Inform 2006: 28(2):179–80. [4] Scheu M, Veefkind V, Verbandt Y, Molina Galan E, Absalom R, Fo¨rster W. Mapping nanotechnology patents: the EPO approach. World Patent Inform 2006;28(3):204–11.
Michael Blackman 45, Kenwood Drive Beckenham, Kent BR3 6QY United Kingdom Tel.: 44 208 658 0637 E-mail: mblackmanwpi@tiscali:co:uk
Conference report PIUG Conference, Minneapolis, May 2006 The popular annual PIUG Conference was once again both well organised and well attended. The delegate list included nearly 300 people, the majority from the USA, but with significant contingents from Europe and Asia. Within the overall title of ‘Patent information: overcoming pitfalls and enhancing productivity’, the conference was organised into a number of sessions. For each session I have listed some typical presentations, and then amplified those where further explanation is needed or which I found particularly interesting. 1. Strategic planning for patent search groups Presentations here included: Do You Truly Leverage What You Already Know? (Keynote, Charles Dennis), The Ever-Changing Role of Information Analysts in Pharmaceutical R&D (Doreen Alberts), and 3M Information Research and Solutions in 2010 – Mapping and Driving the Future of a Corporate Information Organization (Martha Ellison). 2. Enhancing productivity – from search to report Typical presentations were: Open Patent Review Initiative – OPRI (Bill McGinnis), How to Optimize Search Reports for Clients – Tips From an Independent Search Firm (Allison Taylor), Patent Analysis and Visualization for Technology Assessment (Yateen Pargaonkar), and Searching for Needles in Sewing Boxes: Advantages of Subject Specific Databases Over Uncontrolled Free Text Files (Edlyn Simmons). The OPRI is a joint action by the USPTO and several partners, including IBM, to improve the US patent system in a number of respects and to ensure that the system is more consistent with what is expected in the world community. Specifically, the OPRI includes: (a) Community Patent Review, in which expert reviewers receive notification alerts of newly published patent application. (b) Open source materials to be made more available as prior art. (c) Patent quality index, which is academically driven, to be established taking account of various aspects of the patent preparation and examination process. doi:10.1016/j.wpi.2006.06.001
Edlyn Simmons’ presentation provided a timely reminder of the value of controlled keywords in specific patent databases, when compared to the uncontrolled free text environment. 3. Nuts and bolts: mechanical/device patent searching The speakers in this session covered, for example, Tools and Techniques for Finding Device Patents: Pumps, Valves, and Dispensers (Jane List) and Automated Patent Portfolio Analysis and Categorization (Steven Sampson). Searching for device patents is an area that is not very often covered, so Jane List’s clear presentation was very useful, and pointed up the difficulties when compared to chemistry, where there are formulae and controlled language to help. In looking at what future developments could alleviate this situation, she mentioned the possibilities of image recognition software. She also spoke about the analogies between the requirement for patent models in the 19th century with current device inventions that are created in 3D in CAD/CAM packages, but then still have to be reduced to 2D form for patent applications.1 4. Patents on campus: the role of patent information in academia With introductory remarks from Michael White on The Role of Patent Information in Academic Research, Teaching, Learning and Technology Transfer, Susan McFadden Patow presented an Overview of Academic Patenting and Licensing, while Nancy Spitzer spoke on Patents 101: Teaching Patents to Engineering Students. 5. Product reviews and Vendor panel Following a number of product reviews, a vendor panel discussed the topic of Simplicity out of Chaos: IPC Reform from the Vendor Perspective. 6. Current events: challenges and pitfalls Some presentations in this session included: the Application of Text Mining in the Analysis of Patent Literature 1 We have explored some aspects of this area in an article by Durack [1] and a discussion paper by Adams [2].
Conference report / World Patent Information 28 (2006) 358–359
(Christophe Beguel), To Pastures New – A Searcher’s Guide to Less Well-Used Fields of Data (Stephen Adams), Tips for Cost Effective and Efficient MMS Searching (Judy Johnson Philipsen), Are Long Chemistry-Patent Publications by Definition Difficult to Understand and Analyze? (Lawrence DeBolt), and Thomson Scientific Solutions: Meeting Business Needs Through an Integrated Information Solution (Stuart Dodd). Stephen Adams gave an interesting talk on some of the byways of online databases, such as the analysis of the attorney name data, since this can often give a clue to subject matter, a similar analysis of the USPC Art Units linked to patent examining groups, and making use of the location indicators at the beginning of EPO application numbers. Judy Johnson Philipsen tackled the difficult topic of Markush searching, with some practical recommendations on both the initial work of assessing a search request and ensuring that the search subject is properly defined, and on the later stage of devising and running suitable search strategies. 7. Current events: patent offices Amongst the presentations here were: requiring PreFiling Patentability Searches and Examination: an Emerging USPTO Policy (Joe Ebersole), Search Strategies and the Reformed IPC (Pasquale Foglia), and The IPC and Other Animals (Dan Shalloe). Some new initiatives aimed at solving the USPTO’s continuing problems with search backlog/quality issues were described by Joe Ebersole, and these include the proposed requirement that applicants should provide a pre-filing search and examination, limitations on the number of claims in each patent application, and the use of search templates specifying the required sources, both patent and non-patent, for each area of subject matter. Pasquale Foglia provided a good picture of the practicalities of the reformed IPC (IPC 8), and its implementation and use in search strategies, especially with respect to patentability searches. Dan Shalloe’s presentation provided an update on progress in the EPO’s patent information efforts, particularly items following on from discussions at their Patent Information Conference in Budapest last November [3], e.g. nanotechnology tagging [4], Chinese patent information helpdesk established, and improvements to the treatment of ‘complex’ applications. Several of the presentations are likely to form the basis for future articles here, for example those on Markush searching, searching device patents, search strategies and the reformed IPC, and the USPTO’s emerging policy on pre-filing patentability searches.
359
The three day main conference was preceded and followed by a number of workshops and training sessions spread over three days. Awards made during the conference included the Brian Stockdale Memorial award to Meredith Saba of Indiana University, and PIUG Service Awards to Cynthia Yang, Helen Yun, Marty Goffman and, posthumously, to Richard Kurt. The exhibitors included: Thomson Scientific, Questel*Orbit, BizInt, Elsevier MDL, Fiz Karlsruhe, Prous Science, TPRI, CAS, EPO, IFI Patent Intelligence, Intellevate, IP.com, KIPI, Minesoft, Omniviz, PatentInformatics, RWS, Search Technology, Vantage Point, Swedish Patent and Registration Office, Active Motif, and Temis. The conference dinner took place in the interesting setting of the Science Museum of Minnesota and the visit included a viewing of the amazing ‘Body Worlds’ exhibition with superb human anatomical displays; the dinner and visit were sponsored by Thomson Scientific. Once again, Nancy Lambert produced a fine entertainment on the second evening, with the IFFI Players latest production. Overall the conference provided a good mix of presentations, rightly catering primarily for the experienced patent searchers and analysts, but also including some material of a less challenging nature. As usual it was a pleasant and friendly conference. If you missed it this year, make an early date in your diary for next May – see www.piug.com for further information.
References [1] Durack K. Tacit knowledge in patent applications: observations on the value of models to early US Patent Office practice and potential implications for the 21st century. World Patent Inform 2004;26(2): 131–6. [2] Adams S. Electronic non-text material in patent applications – some questions for patent offices, applicants and searchers. World Patent Inform 2005;27(2):99–103. [3] Blackman M. EPO Patent Information Conference, Budapest, Hungary, November 2005. World Patent Inform 2006: 28(2):179–80. [4] Scheu M, Veefkind V, Verbandt Y, Molina Galan E, Absalom R, Fo¨rster W. Mapping nanotechnology patents: the EPO approach. World Patent Inform 2006;28(3):204–11.
Michael Blackman 45, Kenwood Drive Beckenham, Kent BR3 6QY United Kingdom Tel.: 44 208 658 0637 E-mail: mblackmanwpi@tiscali:co:uk