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Legal Blogging (Patent)
5/21/2008 10:46:20 AM EST
Highlights from PIUG Day Two
Online Editor Intellectual Property Matthew Bender

The attendees at PIUG enjoyed another great day! Several patent professionals gave very informative overviews.  The first topic of the day was “Searching, Analysis and Reporting”.  Highlights of this session were:

  • Zhifu Shu and Henry Murray, patent researchers from ExxonMobil, gave an overview on searching Chinese patents.  The growth in the number and importance of Chinese patents is a major topic in patent research today.  Shu and Murray used a Freedom to Operate example to show different methods to identify related patents.  They also compared coverage of Chinese patents from commercial vendors and free patent information sources.
  • Yateen Pargaonkar, Senior Information Scientist at Proctor & Gamble, gave a presentation on implementing effective patent invalidity searches in view of KSR International, Co. v. Teleflex, Inc.  The KSR decision relaxed the rigid application of the “teaching, suggestion, or motivation” (TSR) rule.  Pargaonkar explained that this change presents more opportunities for finding prior art during patent invalidity searching.

The next topic was “Software and Other Tools for Patent Information”.   In this session, Brian Sweet and Richard Garner gave great presentations.  I have worked with both Brian and Richard.  Brian was my product contact at Elsevier when I managed LN’s EMBASE database.  He is now a Senior Product Manager with Chemical Abstracts Service (CAS).   As I noted in yesterday’s blog, I currently work with Richard Garner, LN Intellectual Property Product Director, supporting TotalPatent and other LN IP efforts.   Brian and Richard covered the following topics:

  • Brian discussed CAS’s plans to include exemplified prophetic substances and Asian utilty models.  .Exemplifed prophetic substances are chemical structures that are described in a patent and given a specific chemical name, but are not fully characterized or included in the claims.  Even though these substances are not being claimed, they have value for the patent researcher.
  • Richard described the process that LN Univentio uses to add value to full text patents, including the addition of English machine translations and fully searchable indexed PDFs.   He also noted that 2008 is the 25th anniversary of LN’s LEXPAT service.   He honored the late Joe Ebersole for his roled in creating LEXPAT. 

The last session was “Reports from the Patent Offices”.   Representatives from three major patent offices provided an overview of their services.  They acknowledged that, today, patents are being accessed more than ever by non-professionals. Users of the patent offices’ services are demanding easier access to patent information:  

  • Curt Edfjäll, the Vice President of the European Patenent Office (EPO), reviewed developments in the last 20 years at the European Patent Office.  He said the EPO has realized the need for a new information policy.  Changes in technology, especially free access via the internet, has allowed a large number of new users to have access to patents.  The EPO is responding with more online assistance to help users better understand patent content.
  • Juneho Jang, Senior Patent Information Officer of the World Intellectual Property Organization (WIPO) spoke on WIPO’s PATENTSCOPE search service.  WIPO is creating guides, training, and seminars for non-professional users.  It is also addressing the needs of business users by providing graphical analysis and RSS alerts. 
  •  Andrey Sekretov, Principal Specialist of the Information and Search Systems Department of the Eurasian Patent Office (EAPO) provided an overview of patent information from the EAPO.   Created only 12 years ago, the EAPO is a very young regional patent authority.  It represents , Republic of Belarus , Republic of Tajikstan , , Republic of Kazakhstan , Republic of Azerbaijan , Kyrgyz Republic , Republic of Moldova , and Republic of Armenia . Although it is young, it has created a very user friendly and robust search system called EAPATIS.   The EAPO is also working to include Eurasian data in INPADOC and DOCDB databases. 

Todays sessions were great!  I’m sure tomorrow will be even better. Stay tuned!

 

 

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