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

    • 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
    • XV
      Training the next generation of patent data & searching literate legal professionals
    • 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.
    • 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
    • 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
    • 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
    • Patent Searching Curriculum: from novice to mastery:
      Mining Patent Data in the New Millennium
      ITTI Patent Landscape Basic Clinic
    • 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.
    • 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
    • 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
    • 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?
    • 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
    • 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
    • Broaden & narrow search…
      Unrestricted full text
      Bibliographic file
      Try different field restrictors:
      Class
      Spec
      Abstract
      Title
      Mix & match with keywords
    • 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
    • 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.
    • Patent Analytics
    • Non-curricular opportunities on campus
    • ITTI Patent Landscape Clinic
    • 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.
      • Foster human and institutional capabilities in IP management, technology transfer and knowledge resource access.
      • 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
      • Hybrid search strategies used to mine data bases
      • Cross referencing of non-patent scientific literature to define and narrow field of search
      • 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
      • Teams organized into “corporate” work units, each assigned a component of the technology under analysis.
      • Data are analyzed redundantly, by individuals, teams and then the class as a whole.
      • Data assembled into final work product.
    • Spring 2009 Team
    • 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.
    • Codon optimized genes
      Cry7Aa1, Cry3Ca1 & ET33-34 genes
      Codon Optimization
      Transformation
      ITTI Patent Landscape ClinicInsect Resistant Sweet Potato with CGIAR
    • ITTI Patent Landscape ClinicHIV Project with UC Davis (PIPRA)
    • 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).
    • ITTI Patent Landscape Clinic
      Work product is patent landscape/FTO report:
      • Executive Summary
      • Disclaimer
      • About the Technology
      • HIV Vaccines
      • Clinical Trial Overview
      • Patent Search Methodology and Results
      • Patent Search Tables
      • Master Spreadsheet
      • Patent Search Analytics: e.g., Patent Count vs. Inventor
      • 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
    • ITTI Patent Landscape Clinic
      HIV DNA Vaccine Patents Assignees
    • ITTI Patent Landscape Clinic
      HIV DNA Vaccine Patents Assignees
    • ITTI Patent Landscape Clinic
      HIV Adenoviral Vaccine Patent Applic. Filing Trend (PIP)
    • ITTI Patent Landscape Clinic
      HIV Adenoviral Vaccine Patent Publication Trend (PIP)
    • ITTI Patent Landscape Clinic
      HIV Adenoviral Patent Assignee, Manual Count
    • ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: Top 6 Assignees
    • ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent Landscape: AurekaThemeMap
    • ITTI Patent Landscape Clinic: Semester Work Product Report
    • 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.
    • 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