PIUG Space Blog

As PIUG users would be fully aware, patent landscaping is becoming an increasingly important tool to extracting the wealth of information from the 80 odd million patent publications, with it potential to show the leading areas of activity, patent owners and patents. 

However when talking to clients, it is becoming clear that these clients want to know more than what is hot - they also want to know what is not - not yet, that is. In other words, clients want to know where the 'white spaces' that will give them an opportunity to create new IP ahead of their competitors. 

The challenge then becomes how to identify something that, by some definitions is unknown - being an absence of patent filings. 

Unless of course we prepare patent landscape maps that not only show the clusters ('hills') of patenting activity, but also provide details of the 'valleys', making it possible to positively identify the white space opportunities. Because white space, like a vacuum, is never truly empty but instead contains plenty of information.

In this case study we look a (previously published) patent landscape map for smartphones, and identify some white space patents playing a key role between clusters of activity in the mobile data access area.

Hello Everyone,

Here is a summary of a tool review I just posted on my site:

The majority of the posts on Patinformatics are directed towards the sharing and development of best practices and examples as they relate to patent analytics for organizational insight and decision-making. It has become clear recently, that several new tools and sites have either entered, or will soon be entering the patent analytics field, and it would be a service to the community to introduce these systems when they launch or when significant updates occur with existing tools and services. In this vein, this post reviews a new service called PatentHiveTM, that bills itself as a patent intelligence and analytics system . Patent Hive is focusing on corporate decision makers who are interested in licensing, mergers and acquisitions, patent litigation, maintanence and valuation.

http://www.patinformatics.com/blog/patenthivetm-a-new-patent-intelligence-and-analytics-site-directed-at-the-business-of-patents/

Have a nice weekend, Tony

Dear Members,

We are pleased to announce significant data and feature upgrades to the PatSeer search and analysis system, many of which have been driven by professional searchers. I thought I should update you on the changes that have gone in the system in the last 3 months (Mar-May 2013):

• Expanded Full Text Coverage: The full-text coverage has been expanded to include India (IN), Australia (AU), Switzerland (CH) and Austria (AT). Full text coverage now stands at 15 authorities. Details of full text collections added are included in table below:

Detailed full text coverage is available at http://patseer.com/detailed-coverage

• Search Syntax Enhancements: Proximity syntax in PatSeer gets familiar with the addition of inline proximity operators which can be used as an alternative or in addition to the existing proximity syntax. These new inline operators are w for bidirectional and wd for left-right ordered proximity.
  Valid usage is w (same as w0 meaning within 0 words), w5 (within zero to five words), w2-4 (within two to four words),w4-4 (within exactly 4 words). Similarly wd, wd5, wd2-4, wd4-4 can be used for left-to-right ordered proximity. For example: TAC:(optic* w2 fiber) will search for optic* within 2 words of fiber in appearing in any order.

Using the new syntax user can conduct nested phrase proximity queries in addition to Boolean nested proximity queries. Read details of syntax enhancements here.

• Smart Highlighting: The Speed and smartness of search keyword highlights has undergone a major improvement based on customer feedback. The system now interprets query terms and decides on the best way to assign colors to each term !

• More Export Fields:  US Records Reassignment and Maintenance information, Independent Claims, First Claims, Family ID added to the list of fields you can export. Further record number links to USPTO/ESPACE can also be automatically created in the exported file.

• Live Translations for all non-English Claims: An inbuilt live translator has been added. Non-English Claims in any language can now be translated into English and the original and translated content is presented side-by-side.

• Help & Support Portal: A new help and support system with and updated knowledge base section has been added with many articles, usage tips and more. It comes integrated with a support system that allows you to contact support instantly and help us provide better response times, There is also a feedback  system that gets your suggestions right to our technical team and keeps you updated about their status. Read Details here.

For details on above and other new capabilities at PatSeer, please visit http://patseer.com/whats-new/

Feel free to contact us at sales@patseer.com or at +1.408.689.2603 if you have any questions or to request a free trial.

Regards

Manish Sinha
Chief Technology Officer 
Gridlogics Technologies Pvt Ltd 

This year GenomeQuest has significantly augmented its acquisition of biological sequence data found in patents. In addition to our previous automated approaches for adding sequence and patent records to GQ-Pat, we have launched a manual parsing effort.

We have identified another 100,000 documents that are likely to have biological sequences in them across all authorities and plan to add them all by the end of 2014. This weekend we added a first batch of 7,000 into our GQ-Pat Gold+ and Platinum databases. We track our weekly database sizes on our content page for those interested.

STN hosts many databases suitable for the purposes of pharmacovigilance or drug safety searching.  In this e-seminar, we will look into how to make the most of the STN features and the content of some of these databases to create efficient but thorough searches. We will also look at the alert option available on STN and how to set up alerts to monitor specific drug related events.

Date: June 4, 2013

9:00 am, Eastern Daylight Time (GMT -4, New York)

2:00 pm, British Summer Time (GMT +1, London)

3:00 pm, Central European Summer Time (GMT +2, Berlin)  

To register for this e-Seminar, please visit

http://www.stn-international.com/e-seminars.html

Jim

Jim Brown

FIZ Karlsruhe, Inc.

jim.brown@fiz-k.com

Does Angelina Jolie Strengthen Myriad’s Argument? 

Whether for good or for bad, Angelina Jolie's double mastectomy announcement last week personifies Myriad's gene patenting case, Association for Molecular Pathology v. Myriad Genetics.  Depending on which background you hail from, there are a multitude of opinions regarding the gene patenting topic.  On Monday, the Wall Street Journal published an article by Kevin Kimberlin, a co-founder of Myriad Genetics, Inc., that argues the benefits of gene patenting and in particular, Myriad's contribution to women and early detection of breast and ovarian cancers.  Jolie's controversial decision adds a face (a very high profile face) to the fight that appears to benefit Myriad due to her discovery that she carries the BRAC1 mutation (doctors estimated she had an 87% risk of breast cancer and a 50% risk of ovarian cancer).  Interestingly, every comment but one negatively critiques the information provided and compares Myriad's patent to such things as paying a royalty for having a baby and a stallion sire fee. 

This case is complicated - it's part health care issue, part patent system legality, part business decision, part scientific methodology, and part a lot more.  As a ruling is expected within the next few weeks, it will be interesting to see which argument will win this round.  

You can read the Wall Street Journal article and comments here.   

 You can read Angelina Jolie's article here:  http://www.nytimes.com/2013/05/14/opinion/my-medical-choice.html?_r=1& 

-Tara Rix

The Harbor Consulting Team 

As the quantity and value of patent filings, acquisition and litigation increases rapidly, there has been an big increase in the number of specialists offering services around the analysis of patents, including Ambercite. Both the clients and service providers use a number of terms in relation to these services, such as patent landscaping, mapping, searching or portfolio analytics/analysis  - and sometimes inconsistently. 

So what do these different terms mean, in our view?

1) Patent searching is exactly that, searching for patents that meet specific criteria and something that should be very familiar to most readers.  Patent searches are often divided into novelty searches (has a given technology been disclosed in the patent literature?) and Freedom to Operate (FTO, can I make or sell a specific product or service?) searches, which aim to understand if a given technology will infringe valid patents 

Patent searching is often by done by patent attorneys  and examiners, inventors, and companies monitoring their competitor's activities. The outputs of patent searches are often lists of relevant or potentially relevant patents.

2) Portfolio assessment (or portfolio analytics) is the process of ranking patents in a portfolio in an objective manner. This can be of particular interest to IP managers or owners who want an independent opinion on the relative quality of their patents. Alternatively they might want an independent opinion on their competitors patents, and how these compare to their patents. Parties looking to acquire patent portfolios might also be interested in portfolio analytics.

The outputs of portfolio analytics tend to be table of patent numbers, with details of each patent given including indicators show the objective assessment of each patent listed.

3) Patent landscaping (also known as patent mapping, or patent technology mapping) generally refers to the process of analysing a group of patents in a specific area of technology. The purpose of patent landscaping is generally to identify key trends in the data, such as clusters of activity within this set of patents, dominant owners, dominant source of technology (such as leading countries), leading inventors, leading patent classes, age profiles etc.

Patent landscaping tends to have particular attraction to larger companies trying to understand their relative competitive position in their technologies, the activities of their competitors and to identify key patents to acquire, license or design around. Other clients can include researchers and universities.

The outputs of patent landscaping can be reports, graphs, and in some cases maps showing the leading aspects of the technology.

These different processes are compared in the table below, which also shows the Ambercite products developed for each of these processes (and which are further described in the link found here).

ORBIT Beta is available! Discover and find the new, improved and far more efficient features of ORBIT.

Go to beta.orbit.com using your existing logon.

Would like a demo? Contact help@questel.com

- Re-organised General Interface for clearer view
- New Specialist Assignee Search Interface added
- New Data field Option 
- Downloadable legal status timeline
- Quick search box with integrated Search history
- Updated Patent Copies interface 
- Forward Citation Graphs and new citation and co-assignment
- Added Business information
- One click landscape map download
- Data rule upgrade
- Filter your search with the new IP Business Intelligence Filter
- Select what you want to see and add information with the ‘Color By’ Control 
- Custom Filter your search choosing fields to be displayed in results list
- Keyword highlighting for non Latin languages
- German original language full text applications

Slide presentations from the two workshops by the USPTO and EPO, which were given on Thursday, May 2, after the PIUG Annual Conference, have been provided by the patent offices and are open to all interested parties to read and share:

AIA Workshop by the USPTO: "First Inventor to File Final Rules and Guidelines"

CPC Workshop by USPTO and EPO

Members-only access to the PIUG 2013 Annual Conference Plenary and Business Meeting presentations is described elsewhere.

Tom Wolff,
PIUG Wikimaster, wikimaster @ piug.org

The two INPADOC files on STN, INPADOCDB and INPAFAMDB, offer a great variety of patent analysis options. While INPADOCDB provides an optimized environment for application-based patent statistics, the patent family database INPAFAMDB supports statistics looking at the number of inventions. This e-Seminar exemplifies techniques to perform statistical analysis in both databases and answers fundamental questions like “which parameters to choose for which patent analysis”. Examples also illustrate how legal status information could help in statistical analysis. Typical questions are:

■ Which are the top companies in a certain technology area?

■How do the filing activities of the top companies compare in major patent countries?

■How can I determine the grant rate in major patent countries?

■How long does company A maintain patent protection in particular countries?

■How innovative is company A in comparison with company B over the last ten years?

■Who is opposing patents of company A and whose patents is company A opposing?

This intermediate session will be of interest to new and experienced STN searchers, providing a variety of tips and advice for effective patent analysis in the INPADOC files on STN.  

Date: May 16, 2013  

9:00 am, Eastern Daylight Time (GMT -4, New York)

02:00 pm, British Summer Time (GMT +1, London)  

3:00 pm, Central European Summer Time (GMT +2, Berlin)

Date: May 23, 2013

11:00 am, Pacific Daylight Time (GMT -7, Los Angeles)  

1:00 pm, Central Daylight Time (GMT -5, Chicago)  

2:00 pm, Eastern Daylight Time (GMT -4, New York)  

7:00 pm, British Summer Time (GMT +1, London)  

8:00 pm, Central European Summer Time (GMT +2, Berlin)  

To register for this e-Seminar, please visit

http://www.stn-international.com/e-seminars.html

Jim

Jim Brown

FIZ Karlsruhe, Inc.

jim.brown@fiz-k.com

MaxVal is excited to announce the release of the improved Patent Family Tree Generator (“PFTG”). PFTG provides the user a visually appealing graphical output of the family relationships for any given patent. Given one patent number in a family, PFTG automatically identifies all the related applications and maps them along a timeline. This mapping also includes abandoned and unpublished applications that are identified from the priority details.

This enhanced version provides better visibility and clarity, even for large families (50 or more members). The print to PDF option is also now enabled with high resolution.

Patent Family Tree Generator (“PFTG”)

PFTG extracts family details from various public sources such as USPTO, EPO, INPADOC, etc., and presents the information in a user friendly graphical format.

The intelligence built into the tool automatically color codes the records by country and type and also connects related patents based on priority details.

Each node is populated with bibliographic details extracted from the public domain. Clicking on the patent will display the bibliographic details along with the current legal status (INPADOC).

The inclusion of legal status and extended family information also retrieves additional links, e.g., for divisional applications, continuations, continuations in part or national publications of first filings of PCT (international) applications, where the priority links are often missing.

Patent Family Tree Generator (“PFTG”) is an update driven by customer needs and feedback and is part of MaxVal’s commitment to provide value added and cost-effective solutions using continuous process innovations. Patent Family Tree Generator (“PFTG”) is available for immediate use at http://www.maxval.com/patent-tools-patent-family-tree.html.

Founded in 2005, MaxVal is the global leader in IP services and tools. The company offers a wide range of products and services designed to serve the needs of all patent practitioners.

For more information, contact:

Bala Krishnan

650-472-1523 x 216

external_communications@maxval-ip.com

For more information on Patent Family Tree Generator follow the link below:

http://www.maxval.com/patent-tools-patent-family-tree.html

In this Thomson Reuters and STN session we’ll show you how to learn efficiently search for chemical structures in the Derwent World Patents Index (DWPI) on STN using STN Express. It will be both a refresher/update for experts, and a useful introduction for those who are less familiar with the capabilities of DWPI on STN. The session will cover two specific types of DWPI chemical structure searching:

■Standard STN structure searching using the Derwent Chemistry Resource (DCR)

■Chemical Fragmentation Code searching using text strategies generated by STN Express

Get practical tips and tricks for both forms of searching, along with some advice on how to combine DWPI results with answers found using CAS Registry and CAplus databases on STN. We will also show you how to further focus your result set by linking the structures to their role in the invention (for example method of producing the compound or component of a composition), their pharmaceutical/agrochemical activities, or the area of technology they are being used in.  

Date: May 14, 2013

9:00 am, Eastern Daylight Time (GMT -4, New York)

2:00 pm, British Summer Time (GMT +1, London)

3:00 pm, Central European Summer Time (GMT +2, Berlin)

Date: May 14, 2013

11:00 am, Pacific Daylight Time (GMT -7, Los Angeles)

1:00 pm, Central Daylight Time (GMT -5, Chicago)

2:00 pm, Eastern Daylight Time (GMT -4, New York)

7:00 pm, British Summer Time (GMT +1, London)

8:00 pm, Central European Summer Time (GMT +2, Berlin)

To register for this e-Seminar, please visit

http://www.stn-international.com/e-seminars.html

Jim

Jim Brown

FIZ Karlsruhe, Inc.

jim.brown@fiz-k.com

I posed a question at the annual meeting plenary session regarding ePCT private services.  PIUG officers asked me to post the question here.  The question was whether ePCT private services will be updated to 'allow' an ePCT private services account associated with a legal entity, such as a corporation or law firm.  WIPO should update ePCT private services for the following reasons. 

BACKGROUND

ePCT private servcies is organized, and ePCT private service accounts are set up, and ePCT private service accounts are advertized by WIPO, to be real person accounts, individualized to a particular real person.  ePCT is based upon a 'WIPO centric' viewpoint that is in tension with the real world requirements for law firms and businesses to employ procedures to review and ensure compliance with docketing procedures to safeguard rights to inventions of PCT application for which they are responsible.  WIPO did not contemplate the use of ePCT private services by an organization responsible for many PCT applications and including many patent practitioners.  ePCT private services is user specific. 

I am a patent practitioner and I manage a small IP law firm.  I (and my firm) are at the forefront of use of electronic resources for managing intellecutal property.  One such resource is ePCT private services.  ePCT private services currently provides for associattion (in ePCT) of PCT applications filed by an individual practitioner with an ePCT private services account created by that practitioner.  ePCT private services allows the 'owner' of that account, to provide access to a PCT application associated with that account, to other accounts.  The way that works is that the ePCT proviate services account holder first sends a 'handshake' request to other account holders username, and if the other account holder accepts, then the two accounts have an association in ePCT private services.  Then, the ePCT private service account holder can grant, for any PCT application for which the ePCT private services account is the owner, various authorization levels, such as eOwner, or eViewer.  This is on an application by application basis.  Once the original eOwner of a PCT application provides for example eViewer status to another ePCT account, that other ePCT account can set notifications for actions occuring in that PCT application. And that PCT application will appear in a list of PCT applications in that other ePCT account.

ePCT private services therefor allow patent practitioners (agents or attorneys) that each file PCT applications to become ePCT owners of the PCT applications that they each respectively file, and then to assign eViewer rights to each other or to any ePCT account with which they have an established handshake.  There are defects in that procedure from a multi person organization perspective. 

First, the practitioner must assign eViewer rights to some other ePCT account (charged with docket control of an organization's PCT applications) for each PCT application.   What happens if the practitioner fails to assign eViewer rights to the other ePCT account? Then that other ePCT account has no knowledge of PCT applications filed and therefore lacks a basis to conduct post filing docket review and cross check against the organizations local docketing system's list of requirements for PCT filings (for example client notificaction, formalities requirements, nationals stage entry reminders, invoicing, file content and organization, completion of Paris priroity certified document transmittal).  Of course, the practitioner should have gone through an internal docketing process to create a docket record for a PCT application, pre filing, from which docketing actions are keyed.  However, an organization's docket control would have no way to detect failure by the practitioner to create such a docket record.  

Second, ePCT does not provide for efficient business practices when a non practitioner person charged with docket control of an organization leaves that organization.  This is because ePCT private service accounts are tied to an individual. In an organization, that means an individual domain user account having username and password, domain email address tied to that domain user account, and a specific machine having the user's WIPO digital certificate installed.  Normal organization practice requires the termination of the domain user account when the user leaves the organization, and does not provide for storing the users ePCT username and password.  Consequently the ePCT private service account for that user is lost to the organization, when the user leaves the organization.   

Third, ePCT does not provide for transmission of email notifications to a role based account at an organization.  What I mean by this is a domain account having a domain email address used by the organization for a business role. An example is a role for docketing.  A domain account docketing and a domain address docketing@organization.com.  Email notifications in ePCT can be sent to any ePCT user, but WIPO does not support of recommend creation of role based ePCT accounts.  In response to a long chaing of emails between myself and  WIPO officials discussing my concerns on this point, WIPO's Senior Business Analyst, PCT Business Development Division (name withheld due to privacy concerns) stated "

"For the reasons outlined previously, we do not support/recommend the creation of a “general” account that is not in the name of an individual. A possible way forward would be to have one of your docketing clerks set up an account in their own name with their own certificate and ensure that this person be automatically assigned access rights (even eViewer is sufficient) to all your firm’s applications in order to monitor all the incoming notifications. He/she should ensure that all their Notifications preferences are ticked, see below."

There are two problems with that suggestion.  I specified one problem in item "Third".  The second problem is that a user's personal email account in an organization is the wrong place for receiving automated notifications triggering docketing requirements.  Transmission of emails (ePCT notifications) to such an email address is unreliable due to the volume of other emails and the inability to track those other emails in a personal user's account.

On April 1, 2013, the USPTO published several rule changes to Patent Term Adjustment (PTA) in order to implement the changes found in the AIA Technical Corrections Act enacted on January 14, 2013.  These rules took effect immediately although the USPTO will consider written comments received on or before May 31, 2013.  Changes to 37 C.F.R. 1.702, 1.703, and 1.705 apply to any patent granted on or after January 14, 2013.

Among the changes to PTA in the new rules is a change to the start date for the 14-month clock for mailing a first office action or notice of allowance in international patent applications filed under the Patent Cooperation Treaty.  Under the old rule this USPTO A delay began 14 months after the fulfillment of all of the requirements of 35 U.S.C. 371.  The new rule changes the start date for the 14-month clock to the commencement of the national stage.  This brings international applications in line with applications originally filed in the US and may increase patent term in patents where all of the requirements of 35 U.S.C. 371 were not initially met.  While the AIA Technical Corrections Act similarly changed the 3-year B delay clock to begin at the commencement of the national stage, the USPTO already interpreted the clock to start at this point so no changes have been made.

Another change is the removal of the requirement that the USPTO notify applicants of patent term adjustment determinations at Notice of Allowance.  Under the old rules patent term adjustment was calculated twice, once at notice of allowance and again at issuance.  This led to a situation where applicants had to check patent term twice and potentially petition the USPTO’s calculations twice since applicants could only petition errors found in the original PTA determination before the payment of the issue fee.  Under the new rules the USPTO will provide an indication of the patent term adjustment with the issue notification, but the patent term adjustment indicated on the patent will be the official notification of the Office’s patent term adjustment determination.  This will reduce the cost and burden on the applicants by allowing them to calculate patent term adjustment once at issuance when all adjustments are known.
 
Applicants are still given two months from the issuance of the patent to petition the PTA determination.  However, the new rules now allow this period to be extended by up to five additional months with the payment of extension of time fees.

One potentially negative change for applicants is to 37 C.F.R. 1.705(c) which provides the opportunity to request the reinstatement of PTA reduced by an applicant delay if in spite of all due care, the applicant was unable to reply within three months of the Office communication.  The new rule now limits this request to before the issuance of the patent with no extension of time available.  Applicants should note that much less time is available for this since the USPTO will not calculate PTA until issue notification.

MaxVal provides Patent Term Adjustment verification services. Click here to contact us about more information.

FIZ Karlsruhe and CAS invite you to the STN User Day 2013 in London!

STN User Day 2013

Date/Time
Tuesday, June 11, 2013, 10:15 – 15:30

Agenda

• What's new on STN classic?
• Preview of Version One of new STN
• Tools and Techniques for handling large answer sets on STN
• Tips from the Helpdesk
• STN Current Awareness Update

Venue
76 Portland Place, London W1B 1NT
www.76portlandplace.com/location/

Registration
Although this STN User Day is free of charge, pre-registration is mandatory:

http://www.stn-international.com/stn_user_day_registration_form.html 

We are looking forward to seeing you in London!