Recent Trends in the Use and Market for Patent Information in the United States

Copyright 3LP Advisors - 2011

-Attorney Confidential-


Recent Trends in the Use and Market for Patent Information in the United States

Anthony Trippe – Director, IP Analytics / Chair, PIUGSeptember, 2011 – PATINEX Conference

3LP Advisors

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Brief overview of 3LP Advisors

USPTO & EPO Cooperative Patent Classification (CPC)– What is the CPC?– How will it be implemented?

Increased value from free services– Google patents– Patent Lens– Patent Calls– PriorSmart

Continued advances from for-fee services– Thomson Innovation– STN International– Questel– ProQuest/Dialog

Brief overview of PIUG

Topics covered

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Former VP of IP Strategy for IBM Former Chairman of the USPTO

oversight committee Author: Rembrandts in the Attic Executive advisor to BCG for IP

Strategy Founder/CEO - Aurigin Systems

– IP analytics firm Named to IP Hall of Fame Patent attorney

Kevin Rivette

Ralph Eckardt Led BCG’s IP Strategy practice Led IP acquisition programs in

semiconductors, fuel cells, alt. energy IP

Principal inventor of N-Compass IP analysis tool

MBA, CPA, 14 yrs professional service experience

Author: The Invisible Edge

25 years of advisory experience; As SVP, led Strategy Practice at BCG

Extensive experience in technology clients

Led several top global client service teams

Launched IP Strategy Practice & recruited core BCG team

Author: The Invisible Edge

Mark Blaxill

3LP Partner Team

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At 3LP, leads buy-side and sell-side IP advisory work

Formerly Project Leader at BCG Project work with technology

and life sciences companies on a broad range of strategic issues

Formerly Business Development at Cubist Pharmaceuticals and Strategic Marketing at Symantec Corporation

David Morland

Matt Stack Leads patent investment work, buy-side advisory and captive fund management

Formerly Project Leader at BCG in Boston and New York offices

Project work focused on tech M&A, growth strategy, post-merger integration

Background in healthcare IT, hardware electronics, electrical engineering

Director of IP Analytics at 3LP Current Chairman of Patent

Information User’s Group (PIUG) Prior to 3LP, Sr. Innovation

Manager at CAS Professional background in

organic chemistry Master's degree in synthetic

organic chemistry

Tony Trippe

3LP DirectorsWho we are



Competitive Landscaping

Patent & IP Valuation

Our Business

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Technology Divestitures

& Restructuring

Patent Acquisition

Brokerage and Patent

Deal Execution

IP Transaction Services

Technology Due Diligence

Technology Modeling & Valuation

Valuation and Due Diligence

3LP Capital

M&A Strategy Planning

Corporate IP Strategy

Strategic Advisory

Deal Sourcing Deal Execution

Strategic Sales

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How our approach differs

Begin with the business perspective, not the IP perspective

Combination of multiple disciplines•Intellectual property strategy•Financial analysis and business strategy•Tool development and implementation

Customized, results-based solutions

Significant advantage in domain specific analytical techniques, databases and information tools

•Pioneered the field of IP analytics, with sustained investment in methods & tools•Proprietary analytical tools (patents granted and pending)

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We leverage a suite of proprietary tools and processes

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Themescape™ Patent Landscaping

NCompass™ Network Analysis

AutoClassifier™ Technology Clustering

NLP-Part-of-Speech™ Claims Analysis

Technology landscaping provides instant macro-view

Widely adopted by patent community

Developed by Kevin while at Aurigin, since acquired by Thomson

Proprietary tool developed while at BCG

Provides immediate citation navigation

Used to quickly identify targets of interest and visually display collaboration patterns

Used to find “needles in haystacks”

Clusters 1,000’s of patents into pre-defined groups, relevance ranked

Used during buy-side due diligence

Semantic web technology applied to patent claims

Quickly screen patents for specific content

Drives claims-based patent valuation

Developed with IBM platform technology

Technology Mapping and Chokepoint

Identification

Patent Buying Programs& Buyer’s Brokerage

“Bill of Materials – Bill of Technologies” (BOM-BOT™) process identifies critical technologies within a product

Prioritizes areas for IP investment

Identifies who owns controlling IP

Systematic patent identification and acquisition process refined over many client engagements

Leverages proprietary tools

Buyer’s broker experience: contact through closing



Recent 3LP Transaction Experience

Closed 15 patent transactions in the past 18 months, with cumulative transaction value of $95 million

Acquired IP portfolios with aggregate value >$30 million during the past 18 months

– Large (30+ patent) portfolios from Fortune 50 companies– Small (3-4 patent) portfolios from individual inventors and small companies– End–to–end management of IP purchasing process

Lead advisor on the sale of a $50M+ IP portfolio– Executed structured auction processes– Buyer recruitment, marketing, negotiation, closing

Prior experience includes:– Ran IBM licensing program; launched marketing efforts to European SW buyers– Extensive buy-side and sell-side advisory experience

Attorney Confidential 7



04/07/23



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Comparison of Patent Classification Systems

USPC IPC ECLA FIDocuments

classified into system by

USPTO IPC Union members (61)

EPO, member states

Japan Patent Office

Document Coverage

US Documents+

~ 6 million non-US documents

PCT minimum documentation

(various countries from 1920

+ )

Subset of PCT minimum documentation ( EN, FR, DE

language), including US+

BE, LU, NL+

AT, AU, CA first filing residents(+ NPL)

JP documents

Relationship to IPC

Statistical Concordance of

USPC to IPC--- ECLA are extensions to

IPCFI are extensions to

IPC

Focus for classification

Pre Grant PublicationsInvention information

GrantsClaimed subject matter

Disclosed Invention Disclosed Invention Disclosed Invention

Rules for classification

First Place Priority Rule IPC Guide IPC Guide +

Art Specific Rules

IPC Guide + Deep Indexing with

F-terms



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…moving to an IPC-based system

Note: USPTO is currently the only major IP office not using an IPC-based primary classification system

˃ Accelerate classification harmonization of USPTO, EPO, JPO, KIPO, and SIPO in IP5 Common Hybrid Classification (CHC) foundation project

˃ Promote resource sharing

Increases document coverage for classified search

Improves harmonization for examination and search

Aligns with EPO and USPTO common strategic goals

˃ Classification is the foundation for all harmonization efforts

˃ Access PCT minimum collection using single classification search

˃ Implement IPC-based classification system at USPTO



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Cooperative Patent Classification(CPC)

USPTO/EPO agree to co-operate on a joint classification system derived from IPC-based ECLA (October 2010)

USPTO to move from USPC to CPC; EPO to move from ECLA to CPC

CPC planned to be bi-laterally operational at EPO and USPTO by end of December 2012

USPTO and EPO Work Toward Joint Patent Classification System "In view of the significant benefit to stakeholders of developing a transparent and harmonized approach to a global classification system for patent documents; in order to make the search process more effective; and in the belief that cooperation between their two offices will facilitate progress in undertaking classification harmonization projects under the IP5 Common Hybrid Classification initiative, the USPTO and the EPO have agreed together to work toward the formation of a partnership to explore the development of a joint classification system based on the European Classification system (ECLA) that will incorporate the best classification practices of the two offices. This system would be aligned with the World Intellectual Property Organization (WIPO) classification standards and the International Patent Classification (IPC) structure. Accordingly, they have initiated discussions on governance and operational aspects of such a partnership.

The IP5 partner offices will be continually apprised of progress at appropriate IP5 forums. Stakeholders will receive regular updates on the substance and progress of classification partnership discussions between the two offices."

October 25, 2010



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CPC Overview

CPC is a bi-lateral classification system managed and maintained by EPO and USPTO

Initially based on ECLA

Incorporates best classification practices of EPO and USPTO

Includes US documents and non-US documents

More categories than IPC, and about the same number as USPC (70k in IPC v. 150k in USPC)



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ECLA Benefits for CPC Development

ECLA is based on IPC

ECLA includes USPTO documents (1920 - )

ECLA has been continuously maintained

Enables complete search with one set of symbols (no various IPC editions to search)

ECLA includes big part of PCT minimum documentation



Transition from ECLA to CPC

CPC will include:˃ All ECLA/ICO titles and active subdivisions (one-to-one match)˃ Hierarchical structure of ECLA

K61B10/00 Other methods or instruments for diagnosis

K61B10/00A . including means for analysis by an unskilled person [N9511] [C9902]

K61B10/00A2 . . involving a colour change [N9511]

K61B10/00B . Testing for drug or alcohol abuse [N9902]

K61B10/00D . Ovulation-period determination

K61B10/00D2 . . based on measurement of electric currents, e.g. conductivity tests

[N9908]

K61B10/00D4 . . based on measurement of temperature [N9908]

K61B10/00D6 . . based on measurement of viscosity or visco-elasticity [N9908]

K61B10/00D8 . . based on analysis of crystalisation structure [N0011]

K61B10/00D10 . . based on time measurement [N0101]

K61B10/00D12 . . based on measurement of pH-value [N0207]

A61B10/00 Other methods or instruments for diagnosis, e.g. instruments for taking a cell sample, for biopsy, for vaccination diagnosis (vaccination prophylaxis, vaccination therapy A61B17/20); Sex determination; Ovulation-period determination (menstruation tables G06C3/00); Throat striking implements

Note Attention is drawn to group A61F13/15 which provides for swabs

A61B10/00L . [N: Devices for taking samples of body liquids (devices for taking blood samples A61B5/14B)]

A61B10/00L1 . . [N: for taking amniotic fluid samples]

A61B10/00L2 . . [N: for taking saliva or sputum samples (devices for receiving spittle A61J 9/00)]

A61B10/00L4 . . [N: for taking sperm samples (artificial insemination A61B17/43; for animals A61D19/02B; genital receptacles for the male member A61F5/453; massage of the genitals A61H19/00)] [C9709]

A61B10/00L6 . . [N: for taking sweat or sebum samples (measuring sweat production A61B5/00E)]

A61B10/00L8 . . [N: for taking urine samples (measuring urological functions A61B5/20; genital receptacles A61F5/451; urinals for bed-ridden persons

A61G9/00U)] [C9412]



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Transition from ECLA to CPC

CPC will use IPC type numbering; ECLA letters after the “/” will be replaced by digits

˃ e.g. H01L 21/0276 instead of H01L 21/027B

IPC H01L21/027 H01L21/033

ECLA H01L21/027 H01L21/027B H01L21/027B2 H01L21/027B6 H01L21/027B6B H01L21/027B6B2 H01L21/027B6B4 H01L21/027B6C H01L21/027B6D H01L21/027B6E H01L21/033

CPC H01L21/027 H01L21/0276 H01L21/0282 H01L21/0288 H01L21/0294 H01L21/03 H01L21/0306 H01L21/0312 H01L21/0318 H01L21/0324 H01L21/033



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fiveIPoffices

USPTO and EPO will jointly present and promote CPC

EPO and USPTO will jointly promote CHC harmonization in IPC

Classification Harmonization



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CPC Benefits

More comprehensive patent document search using single classification system Improves access to more prior art document collections Permits search of multiple language document collection

Collaborative maintenance of CPC EPO and USPTO will undertake revision projects jointly More frequent updates and revisions than USPC



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Key CPC Transition Activities at USPTO

Develop art specific training including input from EPO expertise

CPC Quality Assurance Program – for training purposes

USPTO Search Tool Transition Plans



Jan 2011

Start of project discussions between EPO and USPTO

Dec 2012Jan 2012

Develop training

IT upgrade at USPTO and EPO

ECLA housekeeping

Develop detailed Field-Specific Classification Rules (FCRs) in around 600 fields

Launch of CPC

Training material based on FCRs shared with USPTO

IT changes at USPTO and EPO

Work on CPC IPC-compliancy

Freeze ECLA scheme on 1 July 2012

Prepare for launch of the CPC

Freeze ECLA scheme revisions

Key CPC Transition Activities

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December 2012 CPC Functionality

Classification of pre-grant publications using CPC

CPC for Prior Art Search (USPTO + EPO Collections)

All CPC reclassification/revision done cooperatively with EPO in CPC

CPC available for use by other IP offices

Legacy USPC Classifications will continue Design classifications in Dnn classes Plant classifications in PLT classes



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[email protected]

[email protected]



Free Services – Google Patents

http://www.google.com/patents

Google and the USPTO have entered into an agreement to make bulk patent and trademark data available to the public at no charge

Quick search allows searching by patent or publication number Publication number searching requires year/publication number

format (2002/123456 for instance) where most other systems would only require yearpublication number (2002123456)

US only Spotty coverage of pre-grant publications Provides claims, images and citations readily Uses Google Book technology to allow for searching and

highlighting of text within the body of the patents Advanced search also available

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http://www.google.com/patents



Free Services – Google Patents – Images

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Free Services – Patent Lens

http://www.patentlens.net/daisy/patentlens/patentlens.html

Patent search interface in Chinese ( 中文 ), English, Russian (Русский), and French

Full text of PCT applications now searchable in Chinese, English, French, German, Japanese, Korean, Russian and Spanish

Full text of EPO patents now searchable in English, French and German

Search for lapsed, abandoned or expired US Patents Visualize Patent Families with new graphical trees as PDFs

– Unique feature– A pretty good attempt at a difficult concept

Includes Patent Family and Status including link to Public PAIR Free Full-text Worldwide Patent Searching - 10,702,297 patent

documents - updated Dec 21, 2010

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http://www.patentlens.net/daisy/patentlens/patentlens.html



Free Services – Patent Lens – Image

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Free Services – Patent Lens – Image Family Tree

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Free Services – Patent Calls

http://patentcalls.com/ - Patent Calls

Patent Calls™ combines expert IP research and state of the art software search and analysis tools - Connecting Patents to ProductsSM.

Provides maintenance information with “stop-light” indicators Provides information on post-issuance documents Allows comparison of applied for claims vs. granted claims

– One of the few sites that do this– Very powerful for quickly seeing the effects of examination on the

original claims Provides PDF images, citations, references and prior art US patents and applications only

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http://patentcalls.com/



Free Services – Patent Calls – Image

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Free Services – PriorSmart

http://news.priorsmart.com/

Best known for US litigation daily email– Let me know if you would like an invitation

Provides free searching Provides list of new patent litigations in the US Provides list of patent related Twitter activity Provides list of patent related blog posts Other services available by request

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http://news.priorsmart.com/



Free Services – PriorSmart – Image

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For-Fee Services – Thomson Innovation http://www.thomsoninnovation.com/

Thomson Innovation is a single, integrated solution that combines intellectual property, scientific literature, business data and news with analytic, collaboration and alerting tools in a robust platform

Includes Worldwide patent data including full-text content of many countries Includes Derwent World Patents Index Includes scientific literature and business documents as well as patents Forms based searching Subscription service

– Multiple users can subscribe at various levels with various features– Analyst level provides all analytical features and most liberal ability to download

information for analysis in Excel• Includes ThemeScape – Thematic mapping application• Includes citation trees• Includes text-clustering feature• Includes charting and graph service

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http://www.thomsoninnovation.com/



For-Fee Services – Thomson Innovation – Image

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For-Fee Services – STN International

http://www.cas.org – STN International in North America

CAS' STN databases offer the largest collection and depth of chemical and related information compared to other commercial web based databases. In addition, CAS is the only company that has a unique, proprietary, chemical structure searching capability using its STN Express software. No other source can successfully meet the USPTO's requirements.

Best system for chemical structure based searching Command line, Boolean based searching system Includes nearly 200 databases including CAS, DWPI, patent, and non-

patent databases Provides access to STN AnaVist for advanced analysis and visualization of

patent and non-patent records from CAplus, DWPI and selected patent databases

Subscription service – pay by connect hour, search terms and display fees

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http://www.cas.org/



For-Fee Services – STN International – Image

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For-Fee Services - Questel

http://www.questel.com/emailing/emailing_200909_ecommunique_Patents.htm

Provides command line driven interface as well as new form based interface called orbit.com

Provides MMS system for searching Markush chemical structures from French Patent Office (INPI) and Derwent (Thomson)

Also provides chemical structure searching Analysis products allow:

– Analyze documents by date, country, priority country, publication, and priority country timeline

– Detect assignees colaboration and top assignees– Measure technologies, assignees, etc. by IPCs– Identify cited and citing patents.

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For-Fee Services – Questel – Image

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For-Fee Services – ProQuest Dialog

http://www.dialog.com/products/guide/ip.shtml

The new ProQuest Dialog™ offers an intuitive interface which simplifies access to our breadth of content for researchers of all kinds. It is an exciting approach to precision search based on relevancy, transparency, control and completeness.

Provides command line driven interface as well as new form based interface

Provides more than 200 databases including many popular patent databases

Includes most comprehensive collection of non-patent databases

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http://www.dialog.com/products/guide/ip.shtml

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Patent Information Users Group, Inc.The International Society for Patent Information2011 Update


-Attorney Confidential- 3LP Advisors

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Who are PIUG members? PIUG has over 700 active members from 27 countries

with the largest concentration of members from the USA, Europe and Japan– PIUG members are patent attorneys, patent agents,

licensing professionals, patent information researchers, patent information vendors, and patent information and documentation experts

– PIUG members are employed in performing patentability, freedom-to-practice, and validity patent searches for Fortune 500 / multinational companies, leading universities and major IP law firms

– PIUG members produce many of the tools used for patent searching and analysis



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What benefits does PIUG provide? PIUG has an active Discussion Forum that is featured

on the PIUG wiki, a global collaborative tool with over 1350 subscribers worldwide– Members access to conference presentations, etc.

PIUG schedules three annual meetings that provide education and networking opportunities

PIUG is developing training materials and working in collaboration with other professional patent organizations towards international certification

Chinese chapter with over 100 members – http://piug.org.cn



Upcoming PIUG events

PIUG NE Conference – New Brunswick, NJ– 10-14 October 2011

PIUG Fundamentals of Patent Searching Course – New Brunswick, NJ– 13-14 October 2011

PIUG Biotech Meeting – Boston, MA– 06-08 February 2012

PIUG Annual Conference – Denver, CO– 28 April-03 May 2012

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Recent Trends in the Use and Market for Patent Information in the United States

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