The Franklin Pierce Law Center: Practice-Based Program in Patent Database Mining and Patent Information Management Delivered at PIUG Annual Meeting 2009

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 Librarian
Stanley 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.

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

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:
1. Mining Patent Data
2. ITTI Clinic, first semester
3. ITTI Clinic, second semester
Students proceed from:
1. Fundamentals
2. Application
3. 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

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
Try different field restrictors:
Class
Spec
Abstract
Title
Mix & match with keywords
Bibliographic file

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.

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.
• 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

28. 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.

29. 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.

30. Spring 2009 Team

31. 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.

33. ITTI Patent Landscape Clinic
Insect Resistant Sweet Potato with CGIAR
Codon optimized genes
Codon Optimization
Transformation
Cry7Aa1, Cry3Ca1 & ET33-34 genes

34. ITTI Patent Landscape Clinic
HIV Project with UC Davis (PIPRA)

35. 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).

36. 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

37. ITTI Patent Landscape Clinic
Analytics now used:
Delphion
MicroPatent
Patent INSIGHT Pro
Aureka ThemeScape
Excel

38. ITTI Patent Landscape Clinic
HIV DNA Vaccine Patents Assignees

39. ITTI Patent Landscape Clinic
HIV DNA Vaccine Patents Assignees

40. ITTI Patent Landscape Clinic
HIV Adenoviral Vaccine Patent Applic. Filing Trend (PIP)

41. ITTI Patent Landscape Clinic
HIV Adenoviral Vaccine Patent Publication Trend (PIP)

42. ITTI Patent Landscape Clinic
HIV Adenoviral Patent Assignee, Manual Count

43. ITTI Patent Landscape Clinic: HIV DNA Vaccine Patent
Landscape: Top 6 Assignees

44. ITTI Patent Landscape Clinic: HIV DNA Vaccine
Patent Landscape: Aureka ThemeMap

45. ITTI Patent Landscape Clinic: Semester Work
Product Report

46. Patent Searching Curriculum
Comprehensive, full year program:
1. Mining Patent Data
2. ITTI Clinic, first semester
3. ITTI Clinic, second semester
Students proceed from:
1. Fundamentals
2. Application
3. leadership and management roles.

47. Patent Searching Curriculum Success
• Approximately 250 networked patent
professionals have complete Mining and/or ITTI

48. Patent Searching Curriculum:
Unique
Comprehensive
Focused
Practice-based
Thank you …. Q&A