Today’s topics at PIUG focused on techniques for patent searching and valuation and on changes at the USPTO.  The conference attendees were very eager to hear the speakers cover these topics!   In the sessions titled “Tips and Techniques from the Experts”, “Techniques for Special Subject Areas”, and “Valuable Patents – Techniques for Identification and Quantification”, the following presenters covered the highlights:

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  Adrienne Shanler from Wyeth covered techniques for gene sequence searches.  She compared reviewed BLAST vs. text searches on a variety of online services.  (BLAST stands for “Basic Local Alignment Search Tool” – it is an algorithm for comparing gene sequence information).  She concluded that there is no one database or type of search that is adequate for a prior art or freedom to operate search.  There is a a great deal of overlap between databases, but each database unique content.
• Two speakers covered search patent classification searching.  Sue Cullen from Thomson Scientific discussed enhancing search precision using the reformed International Patent Classification system, better known as “IPC-R” or “IPC8” (it’s sometimes known as IPC8 because is the eighth version of IPC).  IPC-R went into effect at the beginning of 2006.  New patents were published with IPC-R classifications, but it took time to reclassify the backfile (i.e., the older patents).  The backfile is now largely reclassified.  Searchers can now take advantage of the greater detail in IPC-R and its more frequent updates.   Terence Mackey from the USPTO covered the history of the class system and its current goals of automation, competitive sourcing, and international harmonization.  He noted that USPTO classification is entering the 21^st century.  J
• CK Rao of SciTech Patent Art Services covered claim based search experiments on latent semantic patent search engines.  He noted that very few databases use latent semantic indexing even though it shows promise for increasing the power of patent searching.  He noted that Boolean searching requires the use of exact search terms, whereas latent semantic searching provides concept searching.  He tested two online services, PatentCafe and FreePatentsOnline.  PatentCafe uses latent semantic analysis and FreePatentsOnline uses Boolean with term vector based indexing.  He tested 10 subject matter categories.  He concluded that, in some categories, the search results were acceptable, but in others they were not.  He recommended that users experiment to find the best service for their needs.
• Three speakers covered the topic of patent valuation.  Susanne Hantos of Davies Collison Cave , an Australian IP law firm, examined the features of patent research and analysis in support of patent acquisition, licensing or investment.  She noted that thorough research and knowledge of business objectives are the guiding principles to follow.   Don Walters of Thomson Scientific covered his research in how to recognize a valuable patent as opposed to an unimportant patent.  Interestingly, he found that there are no reliable characteristics that identify valuable patents.  He concluded that value is demonstrated over time by market acceptance of the products created from the patents.   In the last presentation on this topic, Barry Barger of Perception Partners, a firm that specializes in quantitative and qualitative tools for patent analysis, communicated a different view from that of Don Walters.  He provided examples demonstrating that commonly available patent data can be used to measure patents’ geographic strength, seminality, leadership, growth impact and value chain contribution.   Clearly, techniques for patent valuation are still in development.   I’m sure there will be more on this topic in future PIUG conferences.

   

Issues in recent USPTO proposed rule changes and court cases were highlighted in a panel discussion moderated by Marty Goffman of SequenceBase Corporation.  The following experts participated in the discussion:

• Ric Henschel of IP law firm Foley & Lardner explained that the proposed USPTO rule changes for biological deposits are unlikely to be finalized because they contain the same flaw that the district court found in the continuation and claims rules – they involve substantive change mandated by an agency with no substantive rulemaking authority.
• Ron Kaminecki of Thomson Reuters discussed the recent cases KSR Int’l Co. v. Teleflex and MedImmune, Inc. v. Genentech and their effect on various patent rules and tests.
• Rick Neifeld of law firm Neifeld PLC discussed the Tafas v. Dudas case, the issue of limiting continuations and claims, and the potential impact on the USPTO’s appeals process.
• Roy Zimmerman of Medtronic, in his inimitable style, told us that “combining incompetent top PTO management, ill-considered and probably illegal patent practice rule changes, and the Patent Reform bills in Congress makes a dangerous witches’ brew threatening patent attorneys, patent searchers, and the value of patents in the ”  He was alarmed by the extent to which the proposed changes would shift work from the USPTO to the patent applicant.  He recommended that applicants “sharpen their claims speed reading skills”.  J