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This is probably a familiar topic to many of you and one that might deserve revisiting within the new wiki space. If this topic has already be revisited within the wiki space, please just guide to me where it is. In 2007, PIUG List Archives, Michelle Tallin raised a question to the PIUG group about the lack of assignee information on US applications and there were a number of replies to her post, some of which I have included below. My question is, has there been any improvements been made (since 2007) to quickly gather assignee information on US patent applications for competitive analysis?
Thanks,
Bob March
DuPont
From: Michelle Tallin [mailto:michelle_at_crimsoncanary.com]
Sent: Thursday, August 16, 2007 11:02 AM
http://www.questel.com/piug/piugl2007/0329.html
To: piug_discussion_list_at_v2.listbox.com
Subject: [PIUG List] Patent Assignees on US Applications
I've been ploughing through a lot of US applications lately to create competitive analyses and I've noticed that many US Patent Applications do not have Assignee information on them - just inventor and attorney.
I presume this is either a) an oversight or b) a ploy by companies not
to divulge who's patenting the application.
Does anyone have any background on why the Assignee information is often missing?
Of course it isn't exactly hard to find out who has filed for the application - if you don't have equivalents then all you need to do is an inventor search. It's just rather time consuming and annoying to have to go through that process for a whole bunch of patents.
Michelle
Michelle Tallin PhD, MBA
Pharma and Biotech Competitor Services
CrimsonCanary.com
300 Heinz St, C222
Pittsburgh, PA
Tel: 415 235 8958
Email: michelle_at_crimsoncanary.com
From: Andy Gibbs <ag_at_patentcafe.com>
Date: Thu, 16 Aug 2007 08:27:07 -0700
http://www.questel.com/piug/piugl2007/0327.html
It¹s my understanding that statute does not require the PTO to publish applications other than ³as filed² without consideration given to amendments, subsequent filing of missing parts, etc.
So applications not filed WITH the assignments are published without assignee / applicant listed.
Andy Gibbs
ag_at_patentcafe.com
PatentCafe®
441 Colusa Avenue
Yuba City, CA 95991
From: Zimmermann, Roy <roy.zimmermann_at_medtronic.com>
Date: Thu, 16 Aug 2007 10:17:40 -0500
http://www.questel.com/piug/piugl2007/0328.html
Michelle, the absence of assignee information when US Pregrants publish isn't primarily a result of applicants' stealthy behavior. The problem arises due to different offices within the USPTO not communicating effectively. That is, the assignment branch and the publication branch of the PTO are separate and seem divided by a chasm, given that the majority of US published applications publish without a listed assignee, even though the majority of them have actually had assignments filed with the PTO, often months prior to publication of their applications.
In test cases from my employer that I investigated by checking assignments at the PTO assignments search site, I found that assignments had often been filed within 90 days of filing our applications, yet at 18 months, those applications published without listing an assignee.
Roy Zimmermann
Medtronic
From: Brown, Jim <Jim.Brown_at_wolterskluwer.com>
Date: Thu, 16 Aug 2007 11:26:45 -0500
http://www.questel.com/piug/piugl2007/0325.html
Hi Michelle,
You are correct - most US applications are published without assignee information. The amount of US applications published with assignee information is less than 30%. IFI has added a separate field in our CLAIMS databases (available on Dialog, STN and Questel) with additional assignee information, called the Probable Patent Assignee field. IFI fills this field with information from the USPTO daily assignment file, assignee information from the granted patent, or company information from the Agent/Legal Rep field. With this additional information, the CLAIMS databases contain assignee information for about 86% of all US applications published.
For more information, please feel free to call IFI Patent Intelligence at (800) 331-4955. Thank you.
Jim
Jim Brown
Customer Services Manager
IFI Patent Intelligence
3202 Kirkwood Highway Suite 203
Wilmington, DE 19808
(800) 331-4955
(302) 633-7201
Jim.Brown_at_wolterskluwer.com
Comments (11)
Jun 23, 2009
Donna Hopkins says:
One of the vendors that attended PIUG (and I'm not sure which, but perhaps they ...One of the vendors that attended PIUG (and I'm not sure which, but perhaps they will pop up here) had a field for tentative assignee as one of their value-added features. Based on inventor name, technology, and previous patenting activity, they added that information to the US apps in their database. I think it may have been IFI, but I'm not sure. (If not them, perhaps Questel or Derwent?)
As far as I know, searching for known inventors is the only way to do this in the USPTO Apps database.
Jun 23, 2009
Darlene Slaughter says:
Donna is probably thinking of IFI's Probable Assignee field, which provides the ...Donna is probably thinking of IFI's Probable Assignee field, which provides the likely assignee name for approximately 86% of published applications in the IFI CLAIMS databases on Dialog, Questel, and STN. Without the IFI Probable Assignee, only about 30% of the published applications indicate an assignment.
For example, including the IFI Probable Assignee in your search will retrieve a total of 477 applications published in 2009 (through May 31) that are likely assigned to Intel, but without the Probable Assignee you would find only 102 apps, or about 21%.
IFI obtains this information from multiple sources, including the USPTO assignment database, the legal rep information, and assignees on corresponding granted patents. In addition to identifying the Probable Assignee for unassigned applications, IFI also applies its standardization procedures to the assignee names that are already present on applications at the time of publication.
You can search the Probable Assignee field on Dialog with PS=, or on Questel or STN with the /PPA qualifier.
If you are interested in competitive intelligence information, IFI now uses its Probable Assignee information to offer a new version of its Patent Intelligence and Technology Report designed for published applications, and available as a web tool. For more information or to request a free trial, please contact Diane Wian:
Diane Wian
703-323-0030
diane.wian@wolterskluwer.com
Jun 23, 2009
Kristin Whitman says:
Hi Donna, You are right that the IFI CLAIMS database does include a probable as...Hi Donna,
You are right that the IFI CLAIMS database does include a probable assignee field for US published applications. When I spoke to IFI representatives recently, they still described their database as having assignees listed for over 80% of US pg-pubs, as opposed to the number of these documents actually published with an assignee (which i hear is around 30%). I'm not sure if this is done manually, or by computer indexing, but they seem to be open about their methods (e.g. checking the legal correspondent field or the USPTO's assignment database).
Another tool that will predict assignees for these documents is Innography, a patent and business literature analysis tool that uses an automated process to determine the assignee. As I recall, Innography is a little less open about their exact methodology. They do offer a form for users to send them examples of possible errors in their computer's predictions. However I believe they do assert that their success rate is quite high. It just depends on whether you can afford to be trusting, I think.
Jun 23, 2009
Roy Zimmermann says:
The old unassigned US Pregrants gambit again! If only the ...The old unassigned US Pregrants gambit again! If only the USPTO would get its act together, so that when applicants file their assigment papers within a few months of filing the patent application, data from one field in one PTO database would flow into one field in another PTO database, then the lack of applicant/assignee data would largely disappear. This is a bureuacratic problem, not really the product of corporate stealth!
Currently, if and only if, the corporate patent application's sponsor/owner/eventual assignee supplies their name in a specific box of a specific PTO form, which must accompany the patent application, then and only then does the application publish with the assignee listed. Meanwhile, most companies file their assignments papers somewhat later than the actual applications, but often within 4-6 months of the filing date, long before the 18 month publicaiton. But the assignments database at the PTO seems to have no interaction with the publications database, so even though the PTO knows that application X is assigned to applicant Y, the Pregrant will publish without that fact in more than 60% of the cases.
IFI's CLAIMS databases do have their probable assignee field, which works well in chains of continuing prosecutions, Continuations, CIP, Divisionals. INNOGRAPHY uses its own algorithm to estimate the most likely assignee based on other cases by the same inventors and where they have had other assigments recently, address of inventors, etc. Lexis, which adds a range of post-issuance data to its US patents & published application databases, also adds FREQUENTLY the information from the US PTO Assignments database. Thus, Lexis will populate the assignee field with the registered assignee based on merging the post-issuance data into the fulltext databases on Lexis. I think Lexis accomplished this first, but other vendors have done so as well, including Micropatent in Patsearch Fulltext & MPI-Inpadoc.
Roy Zimmermann
Medtronic
Jun 24, 2009
Thomas Lupo says:
In many case the assignee assignment information is with the related Parent Appl...In many case the assignee assignment information is with the related Parent Applications(CIP's, Abandon Apps, Div.,.. ) and for what ever reason dont end up on the Published Application or Issued Patent..always chech the related file(s)to make sure.
I have also seen where the PTO has put the assignment request information in the file wrappers with other paper filed and ends up getting left there if its not resubmited
Thomas Lupo
Discount Patent Service
Jun 24, 2009
Edlyn Simmons says:
Nobody's mention yet that the reason US published applications don't have assign...Nobody's mention yet that the reason US published applications don't have assignee names is that US patent law recognizes the inventor as the patent owner. Patents can be assigned at any time, from the original filing of the application until they expire, but assignments don't have to be recorded at the USPTO. Many companies file the assignment paperwork just before grant, which usually results on an assignee printed on the face of the granted patent but not on the published application.
After publication of the application you can search for the assignee in the USPTO Assignments database by the publication number or the name of the inventor, and if the assignment's been recorded it will turn up there before the patent grants.
If there are foreign equivalents published by almost any other patent issuing authority, the actual owner of the patent will appear on the face of the publication, but we should remember that it's possible for rights to be assigned to different entities in different countries. Until you see the US assignment there will always be an element of doubt.
Jun 25, 2009
Manish Sinha says:
I dont think there has been much innovation in the methods to guess the Assignee...I dont think there has been much innovation in the methods to guess the Assignee for unassigned US Applications. These have already been mentioned here before:
1) Lookup INPADOC
2) Lookup US Assignments DB
3) Lookup Inventors
In case you get multiple Assignee hits on Inventor name matching, you can further match Attorney with Inventor to narrow down to the right Assignee.
Patent iNSIGHT Pro uses all the above 3 to give you a list of suggested Assignees and reasoning behind the suggestions but leaves it upto you to decide which one to select. (Although there is a Autoselect utility most advanced users like to make the decisions themselves.)
regards
Manish
Patent iNSIGHT Pro
Jun 25, 2009
Sherri Voebel says:
Manish, You are correct in saying that there is only incremental (little earth ...Manish,
You are correct in saying that there is only incremental (little earth shattering) news on the patent database development frontier. There has been tremendous progress as well as research and grant dollars spent on bioinformatics.
http://www.citeulike.org/group/3347#
https://chemsearch.almaden.ibm.com/chemsearch/SearchServlet
http://grants.nih.gov/grants/guide/search_results.htm?scope=rfa&scope=pa&year=active&text_curr=informatics
Your progrrammers can build an index and name matching program (and other criteria) that runs on each new data load from the various patent offices (something transparent running in the background on your server). Or a post-processing indexing - matching application if you are extracting free downloads.
I challenge you to perform your due diligence and create a better mousetrap.
However, until new products are introduced,thoroughly tested and proven we continue to rely on IFI features such as the probable assignee field for the best guestimate.
Sherri Voebel
[
Jun 25, 2009
Crystal Poole Bradley says:
Hello Bob, Based on customer requests, CAS has recently taken action to improve...Hello Bob,
Based on customer requests, CAS has recently taken action to improve the patent assignee information for U.S. patents in USPATFULL/USPAT2, as well as in our CA/CAplus family of databases. Customers tell us that they find this information especially useful for analysis and competitive intelligence purposes.
As you are probably well aware, most U.S. patent applications provided by the USPTO lack patent assignee information even though rights assignment may well have occurred at some point during the 18 months between application filing and publication. Earlier this year, we started to update U.S. patent application records in our USPATFULL and USPAT2 databases with assignee information soon after the initial appearance of U.S. patent application records in these databases. (Applications appear on Thursdays, and we are able to add assignee information to most of those applications on the following Tuesday.) Look for data in the new RAC field, which is part of the RAI segment. Information on reassignments, licensing, corporate name changes, mergers, etc. may also appear in this data, and the data is updated from time to time as we become aware of additional information relevant to the patent's ownership. Do keep in mind, however, that for some patent applications, rights assignment never occurs.
You are probably also aware that for CA/CAplus, bibliographic information for chemistry-relevant U.S. patent application records, including patent assignee information, is included within two days of receipt from the USPTO. For those records received without assignee information in the PA field, we add information to that field the first time it becomes available. This has been completed for 2001-2007 records, and 2008 is underway.
For more information, visit Database News.
Sep 15, 2011
Dennis P. Cronin says:
The following notice issued in November 2010 may have relevance to this topic. I...The following notice issued in November 2010 may have relevance to this topic. It may impede (competitive intelligence) searching for "inventors" with a "corporate address". Open to further discussion on this matter or for clarification.
USPTO Official Gazette - Elimination of an Inventor's Mailing Address on Patents and Application Publications [Nov 23, 2010 - Vol. 1360 - Number 4]
http://www.uspto.gov/web/offices/com/sol/og/2010/week47/TOC.htm#ref14
Sep 15, 2011
Sherri Voebel says:
Jim, Is the probably assignee matched on inventor name? If so, Is there a...Jim,
Is the probably assignee matched on inventor name? If so, Is there a minimum threshold (or minimum number of times that inventor names (s)) or inventor name + (examiner name or IPC) must appear in prior patent specifications in order to link them to the corporation name (patent assignee name)?
Sherri Voebel
Patentskill LLC