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The Franklin Pierce Law Center: Practice-Based Program in Patent Database Mining and Patent Information Management

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by Stanley P. Kowalski, J.D., Ph.D., Director, International Technology Transfer Institute (ITTI), and Jon R. Cavicchi, Intellectual Property Librarian, ...

by Stanley P. Kowalski, J.D., Ph.D., Director, International Technology Transfer Institute (ITTI), and Jon R. Cavicchi, Intellectual Property Librarian,
Assistant Professor of Research, Franklin Pierce Law Center, Concord, New Hampshire, U.S.A.

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The Franklin Pierce Law Center: Practice-Based Program in Patent Database Mining and Patent Information Management Presentation Transcript

  • 1. The Franklin Pierce Law Center: Practice-Based Program in Patent Database Mining and Patent Information Management Jon R. Cavicchi, JD, LLM (IP), Professor & IP LibrarianStanley P. Kowalski, PhD, JD, Professor and Director ITTI©2009
  • 2. XV
    Training the next generation of patent data & searching literate legal professionals
  • 3. Pierce Law’s Unique Program
    Anecdotal reports from vendors, librarians and law school sites indicate that our programmatic approach to teaching intensive, practice-based patent informatics is unique.
    Many law school professors don’t even encourage students to learn patent searching (don’t believe that patent lawyer needs to know how to search!).
    What patent professors teach about the law/practice use of patent data is equally murky.
  • 4.
  • 5. Goal of educating practice ready patent lawyers
    First law school in the U.S. to offer patent practice program – others only black letter law
    First to offer Patent Practice Clinics
    Educational emphasis has always been on integrating law and practice
    Prior art searches were part of that curriculum
  • 6. Pierce is a “Law Center”
    Law school J.D. & LL.M.
    Interdisciplinary MIP & DIP
    Non-lawyer professionals from industry and government
    Global perspective: many students from developing countries
    Institutes and Programs
    International Tech Transfer Institute
    Kenneth J. Germeshausen Center for the Law of Innovation and Entrepreneurship
  • 7.
  • 8.
  • 9.
  • 10.
  • 11. Pierce Law IP Library: Core Resource
    Established in 1992
    Only dedicated academic IP Library in the Western Hemisphere.
    Specialized repository of wide range of IP-related. resources ranging from highly scholarly to practice.
    Only dedicated law school IP Librarian (lawyer with LL.M.)
    Offering students a concentration of elective patent searching courses
  • 12. Patent Searching Curriculum: from novice to mastery:
    Mining Patent Data in the New Millennium
    ITTI Patent Landscape Basic Clinic
  • 13. Patent Searching Curriculum
    Comprehensive, full year program:
    Mining Patent Data
    ITTI Clinic, first semester
    ITTI Clinic, second semester
    Students proceed from:
    Fundamentals
    Application
    leadership and management roles.
  • 14. Mining Patent Data in the New Millennium
    Started 1993
    Unique academic offering
    Cross platform “consumer” survey course
    Transferable skills: information literacy
    Patent and non-patent literature records
    Taught in collaboration with vendors and guest speakers
    Hands on
    Work product is a novelty report
  • 15.
  • 16. Mining Patent Data: Class themes
    Multiplicity of sources
    Types of sources
    Applications
    Multiple access points to same data
    Who uses patent data sources
    Why use patent data sources
    Factors to choose access points
    Search approach
  • 17. Mining Patent Data: Questions
    Who drives the dollar chain?
    Free…low fee..premium?
    In house v. outsource searches?
    Who to perform searches?
    What is the standard of care?
    How to deal with questions of integrity
    Evolving role of web in search?
  • 18. Mining Patent Data: Stepwise Instruction
    Themes
    World patent documents and World Patent Index
    Bootcamp: class and keywords: 7 Step Strategy
    Hybrid searching
    Familiar platforms: Lexis & Westlaw
    Project based platforms
    Power searching strategies
    Presentation & analytics options
  • 19. Novelty search approaches
    Case by case basis…totality of the circumstances
    No model approach…no best practices per se
    Basics
    Descriptive
    Function
    How it works
    How it is structured
    Results produced
    Steps involved
    Problem solved
  • 20. Broaden & narrow search…
    Unrestricted full text
    Bibliographic file
    Try different field restrictors:
    Class
    Spec
    Abstract
    Title
    Mix & match with keywords
  • 21. Unique aspects of searching patent documents
    “Capture & Cull” process
    Precision and recall
    Patent searchers hope to find nothing, but by finding nothing they cannot be sure whether or not the job is really finished
    Keyword Obfuscation
    Short, meaningless titles and abstracts
    Patent documents notorious for vagueness
    Language may be abstract - patent attorney own lexionographer
  • 22. Other challenges…
    Patent classifications
    Strengths & weaknesses
    How and when to use them
    Hybrid approach
    U.S. Patents Riddled With Mistakes
    Survey: 98% of approved U.S. patent applications contain mistakes ranging from simple spelling errors to omitted claims.
  • 23.
  • 24. Patent Analytics
  • 25. Non-curricular opportunities on campus
  • 26. ITTI Patent Landscape Clinic
  • 27. ITTI Patent Landscape Clinic
    The International Technology Transfer Institute (ITTI)
    Capacity building resource at the Franklin Pierce Law Center
    Mission: to advance innovation in developing countries
    • Think-tank for analyzing policy, strategy and options for implementing accelerated international development.
    • 28. Foster human and institutional capabilities in IP management, technology transfer and knowledge resource access.
    • 29. Research and teaching related to patent information management, with particular focus on innovations in health and agriculture for developing countries: ITTI Patent Landscape Clinic
  • ITTI Patent Landscape Clinic
    Practical application of principles learned in Mining Patent Data in the New Millennium:
    • Application of the iterative approach to patent data mining
    • 30. Hybrid search strategies used to mine data bases
    • 31. Cross referencing of non-patent scientific literature to define and narrow field of search
    • 32. Value added each semester: research and teaching build capacity.
  • ITTI Patent Landscape Clinic
    Student team approach:
    • Teams of up to 10 students work on project
    • 33. Teams organized into “corporate” work units, each assigned a component of the technology under analysis.
    • 34. Data are analyzed redundantly, by individuals, teams and then the class as a whole.
    • 35. Data assembled into final work product.
  • Spring 2009 Team
  • 36. ITTI Patent Landscape Clinic
    Topics are directly related to real world challenges in Health and Agricultural Innovation Management.
    Patent Landscapes for technologies with direct applicability to advancing the public interest in developing countries.
  • 37.
  • 38. Codon optimized genes
    Cry7Aa1, Cry3Ca1 & ET33-34 genes
    Codon Optimization
    Transformation
    ITTI Patent Landscape ClinicInsect Resistant Sweet Potato with CGIAR
  • 39. ITTI Patent Landscape ClinicHIV Project with UC Davis (PIPRA)
  • 40. ITTI Patent Landscape Clinic
    Initial pool of possibly relevant patents, analyzed and culled.
    Typically ca. 2,000 or more patent documents resolved to likely relevant for a given area of the technology (e.g., ca. 350).
  • 41. ITTI Patent Landscape Clinic
    Work product is patent landscape/FTO report:
    • Executive Summary
    • 42. Disclaimer
    • 43. About the Technology
    • 44. HIV Vaccines
    • 45. Clinical Trial Overview
    • 46. Patent Search Methodology and Results
    • 47. Patent Search Tables
    • 48. Master Spreadsheet
    • 49. Patent Search Analytics: e.g., Patent Count vs. Inventor
    • 50. Appendices: Scientific Papers, Description of Patent Databases Used, U.S., IPC and Derwent Classifications , Derwent Manual Codes , Authors’ Curriculum Vitae. MicroPatent Summary Report for Relevant Patents
  • ITTI Patent Landscape Clinic
    Analytics now used:
    Delphion
    MicroPatent
    Patent INSIGHT Pro
    Aureka ThemeScape
    Excel
  • 51. ITTI Patent Landscape Clinic
    HIV DNA Vaccine Patents Assignees
  • 52. ITTI Patent Landscape Clinic
    HIV DNA Vaccine Patents Assignees
  • 53. ITTI Patent Landscape Clinic
    HIV Adenoviral Vaccine Patent Applic. Filing Trend (PIP)
  • 54. ITTI Patent Landscape Clinic
    HIV Adenoviral Vaccine Patent Publication Trend (PIP)
  • 55. ITTI Patent Landscape Clinic
    HIV Adenoviral Patent Assignee, Manual Count
  • 56. ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: Top 6 Assignees
  • 57. ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: AurekaThemeMap
  • 58. ITTI Patent Landscape Clinic: Semester Work Product Report
  • 59. Patent Searching Curriculum
    Comprehensive, full year program:
    Mining Patent Data
    ITTI Clinic, first semester
    ITTI Clinic, second semester
    Students proceed from:
    Fundamentals
    Application
    leadership and management roles.
  • 60. Patent Searching Curriculum Success
    • Approximately 250 networked patent professionals have complete Mining and/or ITTI
  • Patent Searching Curriculum:Unique ComprehensiveFocused Practice-based
    Thank you …. Q&A