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Recent Trends in the Use and Market for Patent Information in the United States


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This presentation was given in Seoul, South Korea at the 2011 PATINEX conference. I covered USPTO patent databases as well as other markets for patent information in the United States.

This presentation was given in Seoul, South Korea at the 2011 PATINEX conference. I covered USPTO patent databases as well as other markets for patent information in the United States.

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  • 1. -Attorney Confidential- 3LP Advisors Recent Trends in the Use and Market for Patent Information in the United States Anthony Trippe – Director, IP Analytics / Chair, PIUG September, 2011 – PATINEX Conference Copyright 3LP Advisors - 2008Copyright 3LP Advisors - 2011 1
  • 2. -Attorney Confidential- Topics covered  Brief overview of 3LP Advisors  USPTO & EPO Cooperative Patent Classification (CPC) – What is the CPC? – How will it be implemented?  Increased value from free services – Google patents – Patent Lens – Patent Calls – PriorSmart  Continued advances from for-fee services – Thomson Innovation – STN International – Questel – ProQuest/Dialog  Brief overview of PIUGCopyright 3LP Advisors - 2011 2
  • 3. -Attorney Confidential- Who we are 3LP Partner Team 3LP Directors Kevin Rivette  Former VP of IP Strategy for IBM David Morland  At 3LP, leads buy-side and sell-side IP  Former Chairman of the USPTO advisory work oversight committee  Formerly Project Leader at BCG  Author: Rembrandts in the Attic  Project work with technology and life  Executive advisor to BCG for IP Strategy sciences companies on a broad range of  Founder/CEO - Aurigin Systems – IP strategic issues analytics firm  Formerly Business Development at  Named to IP Hall of Fame Cubist Pharmaceuticals and Strategic  Patent attorney Marketing at Symantec Corporation Mark Blaxill  25 years of advisory experience; As SVP, Tony Trippe  Director of IP Analytics at 3LP led Strategy Practice at BCG  Current Chairman of Patent Information  Extensive experience in technology User’s Group (PIUG) clients  Prior to 3LP, Sr. Innovation Manager at  Led several top global client service CAS teams  Professional background in organic  Launched IP Strategy Practice & chemistry recruited core BCG team  Masters degree in synthetic organic  Author: The Invisible Edge chemistry Ralph Eckardt  Led BCG’s IP Strategy practice Matt Stack  Leads patent investment work, buy-side  Led IP acquisition programs in advisory and captive fund management semiconductors, fuel cells, alt. energy IP  Formerly Project Leader at BCG in  Principal inventor of N-Compass IP Boston and New York offices analysis tool  Project work focused on tech M&A,  MBA, CPA, 14 yrs professional service growth strategy, post-merger integration experience  Background in healthcare IT, hardware  Author: The Invisible Edge electronics, electrical engineeringCopyright 3LP Advisors - 2011 3
  • 4. -Attorney Confidential- Our Business IP Transaction Services Valuation and Due Diligence Technology Patent Brokerage and Patent & IP Technology Technology Divestitures & Acquisition Patent Deal Valuation Due Diligence Modeling & Restructuring Execution Valuation $ Strategic Advisory 3LP Capital M&A Strategy Competitive Corporate IP Deal Sourcing Deal Execution Strategic Sales Planning Landscaping StrategyCopyright 3LP Advisors - 2011 4
  • 5. -Attorney Confidential- How our approach differs Begin with the business perspective, not the IP perspective Combination of multiple disciplines •Intellectual property strategy •Financial analysis and business strategy •Tool development and implementation Customized, results-based solutions Significant advantage in domain specific analytical techniques, databases and information tools •Pioneered the field of IP analytics, with sustained investment in methods & tools •Proprietary analytical tools (patents granted and pending)Copyright 3LP Advisors - 2011 5
  • 6. -Attorney Confidential- We leverage a suite of proprietary tools and processes Themescape™ Patent NCompass™ Network AutoClassifier™ Landscaping Analysis Technology Clustering  Technology  Proprietary tool  Used to find “needles landscaping provides developed while at in haystacks” instant macro-view BCG  Clusters 1,000’s of  Widely adopted by  Provides immediate patents into pre- patent community citation navigation  Developed by Kevin  Used to quickly defined groups, relevance ranked while at Aurigin, identify targets of  Used during buy-side since acquired by interest and visually due diligence Thomson display collaboration patterns NLP-Part-of-Speech™ Technology Mapping and Patent Buying Programs Claims Analysis Chokepoint Identification & Buyer’s Brokerage  Semantic web  “Bill of Materials – Bill  Systematic patent technology applied to of Technologies” identification and patent claims (BOM-BOT™) acquisition process  Quickly screen process identifies refined over many patents for specific critical technologies client engagements content within a product  Leverages proprietary  Drives claims-based  Prioritizes areas for IP tools patent valuation investment  Buyer’s broker  Developed with IBM  Identifies who owns experience: contact platform technology controlling IP through closingCopyright 3LP Advisors - 2011 6
  • 7. -Attorney Confidential- Recent 3LP Transaction Experience  Closed 15 patent transactions in the past 18 months, with cumulative transaction value of $95 million  Acquired IP portfolios with aggregate value >$30 million during the past 18 months – Large (30+ patent) portfolios from Fortune 50 companies – Small (3-4 patent) portfolios from individual inventors and small companies – End–to–end management of IP purchasing process  Lead advisor on the sale of a $50M+ IP portfolio – Executed structured auction processes – Buyer recruitment, marketing, negotiation, closing  Prior experience includes: – Ran IBM licensing program; launched marketing efforts to European SW buyers – Extensive buy-side and sell-side advisory experienceCopyright 3LP Advisors - 2011 Attorney Confidential 7
  • 8. -Attorney Confidential- 12/19/12Copyright 3LP Advisors - 2011
  • 9. -Attorney Confidential- Comparison of Patent Classification Systems USPC IPC ECLA FI Documents EPO, IPC Union classified into USPTO Japan Patent Office system by members (61) member states Subset of PCT minimum PCT minimum documentation ( EN, FR, DE US Documents language), including US documentation + Document + BE, LU, NL JP documents Coverage ~ 6 million non- (various countries + US documents from 1920 AT, AU, CA first filing + ) residents (+ NPL) Statistical Relationship to ECLA are extensions to FI are extensions to Concordance of --- IPC IPC IPC USPC to IPC Pre Grant Publications Invention information Focus for Disclosed Invention Disclosed Invention Disclosed Invention classification Grants Claimed subject matter IPC Guide + Rules for First Place IPC Guide + IPC Guide Deep Indexing with F- classification Priority Rule Art Specific Rules terms 9Copyright 3LP Advisors - 2011
  • 10. -Attorney Confidential- …moving to an IPC-based system  Aligns with EPO and USPTO common strategic goals ˃ Implement IPC-based classification system at USPTO ˃ Accelerate classification harmonization of USPTO, EPO, JPO, KIPO, and SIPO in IP5 Common Hybrid Classification (CHC) foundation project ˃ Promote resource sharing  Improves harmonization for examination and search ˃ Classification is the foundation for all harmonization efforts  Increases document coverage for classified search ˃ Access PCT minimum collection using single classification search Note: USPTO is currently the only major IP office not using an IPC-based primary classification system 10Copyright 3LP Advisors - 2011
  • 11. -Attorney Confidential- Cooperative Patent Classification (CPC)  USPTO/EPO agree to co-operate on a joint classification system USPTO and EPO Work Toward Joint Patent Classification System derived from IPC-based "In view of the significant benefit to stakeholders of developing a transparent and harmonized approach to a global classification system for patent documents; in order to ECLA (October 2010) make the search process more effective; and in the belief that cooperation between their two offices will facilitate progress in undertaking classification harmonization projects under the IP5 Common Hybrid Classification initiative, the USPTO and the EPO have agreed together to work toward the formation of a partnership to explore the development  USPTO to move from of a joint classification system based on the European Classification system (ECLA) that will incorporate the best classification practices of the two offices. This system would be USPC to CPC; EPO to aligned with the World Intellectual Property Organization (WIPO) classification standards and the International Patent Classification (IPC) structure. Accordingly, they have initiated move from ECLA to CPC discussions on governance and operational aspects of such a partnership. The IP5 partner offices will be continually apprised of progress at appropriate IP5 forums. Stakeholders will receive regular updates on the substance and progress of classification  CPC planned to be bi- partnership discussions between the two offices." laterally operational at EPO and USPTO by end of December 2012 11 October 25, 2010Copyright 3LP Advisors - 2011
  • 12. -Attorney Confidential- CPC Overview CPC is a bi-lateral classification system managed and maintained by EPO and USPTO  Initially based on ECLA  Incorporates best classification practices of EPO and USPTO  Includes US documents and non-US documents  More categories than IPC, and about the same number as USPC (70k in IPC v. 150k in USPC) 12Copyright 3LP Advisors - 2011
  • 13. -Attorney Confidential- ECLA Benefits for CPC Development  ECLA is based on IPC  ECLA includes USPTO documents (1920 - )  ECLA includes big part of PCT minimum documentation  Enables complete search with one set of symbols (no various IPC editions to search)  ECLA has been continuously maintained 13Copyright 3LP Advisors - 2011
  • 14. -Attorney Confidential- Transition from ECLA to CPC  CPC will include: ˃ All ECLA/ICO titles and active subdivisions (one-to-one match) ˃ Hierarchical structure of ECLA A61B10/00 Other methods or instruments for diagnosis, e.g. instruments for taking a cell K61B10/00 Other methods or instruments for diagnosis sample, for biopsy, for vaccination diagnosis (vaccination prophylaxis, vaccination therapy A61B17/20); Sex determination; Ovulation-period K61B10/00A . including means for analysis by an unskilled person [N9511] determination (menstruation tables G06C3/00); Throat striking implements [C9902] Note Attention is drawn to group A61F13/15 which provides for swabs K61B10/00A2 . . involving a colour change [N9511] A61B10/00L . [N: Devices for taking samples of body liquids (devices for taking blood K61B10/00B . Testing for drug or alcohol abuse [N9902] samples A61B5/14B)] K61B10/00D . Ovulation-period determination A61B10/00L1 . . [N: for taking amniotic fluid samples] K61B10/00D2 . . based on measurement of electric currents, e.g. A61B10/00L2 . . [N: for taking saliva or sputum samples (devices for receiving spittle conductivity tests A61J 9/00)] [N9908] A61B10/00L4 . . [N: for taking sperm samples (artificial insemination A61B17/43; for animals A61D19/02B; genital receptacles for the male member A61F5/453; K61B10/00D4 . . based on measurement of temperature [N9908] massage of the genitals A61H19/00)] [C9709] K61B10/00D6 . . based on measurement of viscosity or visco-elasticity A61B10/00L6 . . [N: for taking sweat or sebum samples (measuring sweat production [N9908] A61B5/00E)] K61B10/00D8 . . based on analysis of crystalisation structure [N0011] A61B10/00L8 . . [N: for taking urine samples (measuring urological functions A61B5/20; genital receptacles A61F5/451; urinals for bed-ridden persons K61B10/00D10 . . based on time measurement [N0101] A61G9/00U)] [C9412] K61B10/00D12 . . based on measurement of pH-value [N0207]Copyright 3LP Advisors - 2011
  • 15. -Attorney Confidential- Transition from ECLA to CPC  CPC will use IPC type numbering; ECLA letters after the “/” will be replaced by digits ˃ e.g. H01L 21/0276 instead of H01L 21/027B IPC ECLA CPC H01L21/027 H01L21/027 H01L21/027 H01L21/027B H01L21/0276 H01L21/027B2 H01L21/0282 H01L21/027B6 H01L21/0288 H01L21/027B6B H01L21/0294 H01L21/027B6B2 H01L21/03 H01L21/027B6B4 H01L21/0306 H01L21/027B6C H01L21/0312 H01L21/027B6D H01L21/0318 H01L21/027B6E H01L21/0324 H01L21/033 H01L21/033 H01L21/033 15Copyright 3LP Advisors - 2011
  • 16. -Attorney Confidential- Classification Harmonization  EPO and USPTO will jointly promote CHC harmonization in IPC fiveIPoffices  USPTO and EPO will jointly present and promote CPC 16Copyright 3LP Advisors - 2011
  • 17. -Attorney Confidential- CPC Benefits More comprehensive patent document search using single classification system  Improves access to more prior art document collections  Permits search of multiple language document collection  Collaborative maintenance of CPC  EPO and USPTO will undertake revision projects jointly  More frequent updates and revisions than USPC 17Copyright 3LP Advisors - 2011
  • 18. -Attorney Confidential- Key CPC Transition Activities at USPTO  Develop art specific training including input from EPO expertise  CPC Quality Assurance Program – for training purposes  USPTO Search Tool Transition Plans 18Copyright 3LP Advisors - 2011
  • 19. -Attorney Confidential- Key CPC Transition Activities  Develop training  Training material based on FCRs shared with USPTO  IT upgrade at USPTO and EPO  IT changes at USPTO and EPO  ECLA housekeeping  Work on CPC IPC-compliancy  Develop detailed Field-Specific Classification Rules (FCRs) in  Freeze ECLA scheme on 1 July 2012 around 600 fields  Prepare for launch of the CPC Jan 2011 Jan 2012 Dec 2012 Start of project Freeze ECLA discussions between scheme revisions Launch of CPC EPO and USPTO 19Copyright 3LP Advisors - 2011
  • 20. -Attorney Confidential- December 2012 CPC Functionality  Classification of pre-grant publications using CPC  CPC for Prior Art Search (USPTO + EPO Collections)  All CPC reclassification/revision done cooperatively with EPO in CPC  CPC available for use by other IP offices  Legacy USPC Classifications will continue  Design classifications in Dnn classes  Plant classifications in PLT classes 20Copyright 3LP Advisors - 2011
  • 21. -Attorney Confidential- Contact 21Copyright 3LP Advisors - 2011
  • 22. -Attorney Confidential- Free Services – Google Patents   Google and the USPTO have entered into an agreement to make bulk patent and trademark data available to the public at no charge  Quick search allows searching by patent or publication number  Publication number searching requires year/publication number format (2002/123456 for instance) where most other systems would only require yearpublication number (2002123456)  US only  Spotty coverage of pre-grant publications  Provides claims, images and citations readily  Uses Google Book technology to allow for searching and highlighting of text within the body of the patents  Advanced search also availableCopyright 3LP Advisors - 2011 22
  • 23. -Attorney Confidential- Free Services – Google Patents – ImagesCopyright 3LP Advisors - 2011 23
  • 24. -Attorney Confidential- Free Services – Patent Lens   Patent search interface in Chinese ( 中文 ), English, Russian (Русский), and French  Full text of PCT applications now searchable in Chinese, English, French, German, Japanese, Korean, Russian and Spanish  Full text of EPO patents now searchable in English, French and German  Search for lapsed, abandoned or expired US Patents  Visualize Patent Families with new graphical trees as PDFs – Unique feature – A pretty good attempt at a difficult concept  Includes Patent Family and Status including link to Public PAIR  Free Full-text Worldwide Patent Searching - 10,702,297 patent documents - updated Dec 21, 2010Copyright 3LP Advisors - 2011 24
  • 25. -Attorney Confidential- Free Services – Patent Lens – ImageCopyright 3LP Advisors - 2011 25
  • 26. -Attorney Confidential- Free Services – Patent Lens – Image Family TreeCopyright 3LP Advisors - 2011 26
  • 27. -Attorney Confidential- Free Services – Patent Calls  - Patent Calls  Patent Calls™ combines expert IP research and state of the art software search and analysis tools - Connecting Patents to ProductsSM.  Provides maintenance information with “stop-light” indicators  Provides information on post-issuance documents  Allows comparison of applied for claims vs. granted claims – One of the few sites that do this – Very powerful for quickly seeing the effects of examination on the original claims  Provides PDF images, citations, references and prior art  US patents and applications onlyCopyright 3LP Advisors - 2011 27
  • 28. -Attorney Confidential- Free Services – Patent Calls – ImageCopyright 3LP Advisors - 2011 28
  • 29. -Attorney Confidential- Free Services – PriorSmart   Best known for US litigation daily email – Let me know if you would like an invitation  Provides free searching  Provides list of new patent litigations in the US  Provides list of patent related Twitter activity  Provides list of patent related blog posts  Other services available by requestCopyright 3LP Advisors - 2011 29
  • 30. -Attorney Confidential- Free Services – PriorSmart – ImageCopyright 3LP Advisors - 2011 30
  • 31. -Attorney Confidential- For-Fee Services – Thomson Innovation   Thomson Innovation is a single, integrated solution that combines intellectual property, scientific literature, business data and news with analytic, collaboration and alerting tools in a robust platform  Includes Worldwide patent data including full-text content of many countries  Includes Derwent World Patents Index  Includes scientific literature and business documents as well as patents  Forms based searching  Subscription service – Multiple users can subscribe at various levels with various features – Analyst level provides all analytical features and most liberal ability to download information for analysis in Excel • Includes ThemeScape – Thematic mapping application • Includes citation trees • Includes text-clustering feature • Includes charting and graph serviceCopyright 3LP Advisors - 2011 31
  • 32. -Attorney Confidential- For-Fee Services – Thomson Innovation – ImageCopyright 3LP Advisors - 2011 32
  • 33. -Attorney Confidential- For-Fee Services – STN International  – STN International in North America  CAS STN databases offer the largest collection and depth of chemical and related information compared to other commercial web based databases. In addition, CAS is the only company that has a unique, proprietary, chemical structure searching capability using its STN Express software. No other source can successfully meet the USPTOs requirements.  Best system for chemical structure based searching  Command line, Boolean based searching system  Includes nearly 200 databases including CAS, DWPI, patent, and non- patent databases  Provides access to STN AnaVist for advanced analysis and visualization of patent and non-patent records from CAplus, DWPI and selected patent databases  Subscription service – pay by connect hour, search terms and display feesCopyright 3LP Advisors - 2011 33
  • 34. -Attorney Confidential- For-Fee Services – STN International – ImageCopyright 3LP Advisors - 2011 34
  • 35. -Attorney Confidential- For-Fee Services - Questel   Provides command line driven interface as well as new form based interface called  Provides MMS system for searching Markush chemical structures from French Patent Office (INPI) and Derwent (Thomson)  Also provides chemical structure searching  Analysis products allow: – Analyze documents by date, country, priority country, publication, and priority country timeline – Detect assignees colaboration and top assignees – Measure technologies, assignees, etc. by IPCs – Identify cited and citing patents.Copyright 3LP Advisors - 2011 35
  • 36. -Attorney Confidential- For-Fee Services – Questel – ImageCopyright 3LP Advisors - 2011 36
  • 37. -Attorney Confidential- For-Fee Services – ProQuest Dialog   The new ProQuest Dialog™ offers an intuitive interface which simplifies access to our breadth of content for researchers of all kinds. It is an exciting approach to precision search based on relevancy, transparency, control and completeness.  Provides command line driven interface as well as new form based interface  Provides more than 200 databases including many popular patent databases  Includes most comprehensive collection of non-patent databasesCopyright 3LP Advisors - 2011 37
  • 38. Patent Information Users Group, Inc.The International Society forPatent Information2011 Update 38
  • 39. -Attorney Confidential- 3LP Advisors Who are PIUG members?  PIUG has over 700 active members from 27 countries with the largest concentration of members from the USA, Europe and Japan – PIUG members are patent attorneys, patent agents, licensing professionals, patent information researchers, patent information vendors, and patent information and documentation experts – PIUG members are employed in performing patentability, freedom-to-practice, and validity patent searches for Fortune 500 / multinational companies, leading universities and major IP law firms – PIUG members produce many of the tools used for39 patent searching and analysisCopyright 3LP Advisors - 2009
  • 40. -Attorney Confidential- 3LP Advisors What benefits does PIUG provide?  PIUG has an active Discussion Forum that is featured on the PIUG wiki, a global collaborative tool with over 1350 subscribers worldwide – Members access to conference presentations, etc.  PIUG schedules three annual meetings that provide education and networking opportunities  PIUG is developing training materials and working in collaboration with other professional patent organizations towards international certification  Chinese chapter with over 100 members – 3LP Advisors - 2009
  • 41. -Attorney Confidential- 3LP Advisors Upcoming PIUG events  PIUG NE Conference – New Brunswick, NJ – 10-14 October 2011  PIUG Fundamentals of Patent Searching Course – New Brunswick, NJ – 13-14 October 2011  PIUG Biotech Meeting – Boston, MA – 06-08 February 2012  PIUG Annual Conference – Denver, CO – 28 April-03 May 201241Copyright 3LP Advisors - 2009