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

XVTraining 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:1. Mining Patent Data2. ITTI Clinic, first semester3. ITTI Clinic, second semesterStudents proceed from: 4. Fundamentals5. Application6. 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

Try different field restrictors:

Class

Spec

Abstract

Title

Mix & match with keywords

Bibliographic file

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.

ITTI Patent Landscape ClinicInsect Resistant Sweet Potato with CGIAR

Codon optimized genes

Codon Optimization

Transformation

Cry7Aa1, Cry3Ca1 & ET33-34 genes

ITTI Patent Landscape ClinicHIV Project with UC Davis (PIPRA)

ITTI Patent Landscape ClinicInitial 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 ClinicWork 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

MicroPatentPatent INSIGHT ProAureka 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: Aureka ThemeMap

ITTI Patent Landscape Clinic: Semester Work Product Report

Patent Searching Curriculum

Comprehensive, full year program:1. Mining Patent Data2. ITTI Clinic, first semester3. ITTI Clinic, second semesterStudents proceed from: 4. Fundamentals5. Application6. leadership and management roles.

Patent Searching Curriculum Success• Approximately 250 networked patent

professionals have complete Mining and/or ITTI

Patent Searching Curriculum:

Unique Comprehensive

Focused Practice-based

Thank you …. Q&A