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

-Attorney Confidential-

3LP Advisors

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

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

Copyright 3LP Advisors - 2008
Copyright 3LP Advisors - 2011 1


Topics covered
 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


Who we are
3LP Partner Team 3LP Directors
Kevin Rivette  Former VP of IP Strategy for IBM David Morland  At 3LP, leads buy-side and sell-side IP
 Former Chairman of the USPTO advisory work
oversight committee  Formerly Project Leader at BCG
 Author: Rembrandts in the Attic  Project work with technology and life
 Executive advisor to BCG for IP Strategy sciences companies on a broad range of
 Founder/CEO - Aurigin Systems – IP strategic issues
analytics firm  Formerly Business Development at
 Named to IP Hall of Fame Cubist Pharmaceuticals and Strategic
 Patent attorney Marketing at Symantec Corporation

Mark Blaxill  25 years of advisory experience; As SVP, Tony Trippe  Director of IP Analytics at 3LP
led Strategy Practice at BCG  Current Chairman of Patent Information
 Extensive experience in technology User’s Group (PIUG)
clients  Prior to 3LP, Sr. Innovation Manager at
 Led several top global client service CAS
teams  Professional background in organic
 Launched IP Strategy Practice & chemistry
recruited core BCG team  Master's degree in synthetic organic
 Author: The Invisible Edge chemistry

Ralph Eckardt  Led BCG’s IP Strategy practice Matt Stack  Leads patent investment work, buy-side
 Led IP acquisition programs in advisory and captive fund management
semiconductors, fuel cells, alt. energy IP  Formerly Project Leader at BCG in
 Principal inventor of N-Compass IP Boston and New York offices
analysis tool  Project work focused on tech M&A,
 MBA, CPA, 14 yrs professional service growth strategy, post-merger integration
experience  Background in healthcare IT, hardware
 Author: The Invisible Edge electronics, electrical engineering



Our Business
IP Transaction Services Valuation and Due Diligence

Technology Patent Brokerage and Patent & IP Technology Technology
Divestitures & Acquisition Patent Deal Valuation Due Diligence Modeling &
Restructuring Execution Valuation

$

Strategic Advisory 3LP Capital

M&A Strategy Competitive Corporate IP Deal Sourcing Deal Execution Strategic Sales
Planning Landscaping Strategy



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)



We leverage a suite of proprietary tools and processes
Themescape™ Patent NCompass™ Network AutoClassifier™
Landscaping Analysis Technology Clustering
 Technology  Proprietary tool  Used to find “needles
landscaping provides developed while at
in haystacks”
instant macro-view BCG  Clusters 1,000’s of
 Widely adopted by  Provides immediate
patents into pre-
patent community citation navigation
 Developed by Kevin  Used to quickly
defined groups,
relevance ranked
while at Aurigin, identify targets of  Used during buy-side
since acquired by interest and visually
due diligence
Thomson display collaboration
patterns

NLP-Part-of-Speech™ Technology Mapping and Patent Buying Programs
Claims Analysis Chokepoint Identification & Buyer’s Brokerage
 Semantic web  “Bill of Materials – Bill  Systematic patent
technology applied to of Technologies” identification and
patent claims (BOM-BOT™) acquisition process
 Quickly screen process identifies refined over many
patents for specific critical technologies client engagements
content within a product  Leverages proprietary
 Drives claims-based  Prioritizes areas for IP tools
patent valuation investment  Buyer’s broker
 Developed with IBM  Identifies who owns experience: contact
platform technology controlling IP 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

Copyright 3LP Advisors - 2011 Attorney Confidential 7


12/19/12



Comparison of
Patent Classification Systems
USPC IPC ECLA FI
Documents EPO,
IPC Union
classified into USPTO Japan Patent Office
system by members (61) member states

Subset of PCT minimum
PCT minimum documentation ( EN, FR, DE
US Documents language), including US
documentation +
Document +
BE, LU, NL JP documents
Coverage ~ 6 million non- (various countries +
US documents from 1920 AT, AU, CA first filing
+ ) residents
(+ NPL)

Statistical
Relationship to ECLA are extensions to FI are extensions to
Concordance of ---
IPC IPC IPC
USPC to IPC
Pre Grant Publications
Invention information
Focus for Disclosed Invention Disclosed Invention Disclosed Invention
classification Grants
Claimed subject matter

IPC Guide +
Rules for First Place IPC Guide +
IPC Guide Deep Indexing with F-
classification Priority Rule Art Specific Rules terms
9


…moving to an IPC-based system

 Aligns with EPO and USPTO common strategic goals

˃ Implement IPC-based classification system at USPTO
˃ Accelerate classification harmonization of USPTO, EPO, JPO, KIPO,
and SIPO in IP5 Common Hybrid Classification (CHC) foundation project
˃ Promote resource sharing

 Improves harmonization for examination and search
˃ Classification is the foundation for all harmonization efforts

 Increases document coverage for classified search
˃ Access PCT minimum collection using single classification search

Note: USPTO is currently the only major IP office not using an IPC-based
primary classification system
10


Cooperative Patent Classification
(CPC)
 USPTO/EPO agree to
co-operate on a joint
classification system USPTO and EPO Work Toward Joint Patent Classification System

derived from IPC-based "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
ECLA (October 2010) 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
 USPTO to move from 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
USPC to CPC; EPO to aligned with the World Intellectual Property Organization (WIPO) classification standards
and the International Patent Classification (IPC) structure. Accordingly, they have initiated

move from ECLA to CPC 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
 CPC planned to be bi- partnership discussions between the two offices."

laterally operational at
EPO and USPTO by end
of December 2012
11
October 25, 2010


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 includes big part of PCT minimum documentation

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

 ECLA has been continuously maintained

13


Transition from ECLA to CPC

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

A61B10/00 Other methods or instruments for diagnosis, e.g. instruments for taking a cell K61B10/00 Other methods or instruments for diagnosis
sample, for biopsy, for vaccination diagnosis (vaccination prophylaxis,
vaccination therapy A61B17/20); Sex determination; Ovulation-period K61B10/00A . including means for analysis by an unskilled person [N9511]
determination (menstruation tables G06C3/00); Throat striking implements [C9902]
Note
Attention is drawn to group A61F13/15 which provides for swabs K61B10/00A2 . . involving a colour change [N9511]

A61B10/00L . [N: Devices for taking samples of body liquids (devices for taking blood K61B10/00B . Testing for drug or alcohol abuse [N9902]
samples A61B5/14B)]
K61B10/00D . Ovulation-period determination
A61B10/00L1 . . [N: for taking amniotic fluid samples]
K61B10/00D2 . . based on measurement of electric currents, e.g.
A61B10/00L2 . . [N: for taking saliva or sputum samples (devices for receiving spittle conductivity tests
A61J 9/00)]
[N9908]
A61B10/00L4 . . [N: for taking sperm samples (artificial insemination A61B17/43; for
animals A61D19/02B; genital receptacles for the male member A61F5/453; K61B10/00D4 . . based on measurement of temperature [N9908]
massage of the genitals A61H19/00)] [C9709]
K61B10/00D6 . . based on measurement of viscosity or visco-elasticity
A61B10/00L6 . . [N: for taking sweat or sebum samples (measuring sweat production [N9908]
A61B5/00E)]
K61B10/00D8 . . based on analysis of crystalisation structure [N0011]
A61B10/00L8 . . [N: for taking urine samples (measuring urological functions
A61B5/20; genital receptacles A61F5/451; urinals for bed-ridden persons K61B10/00D10 . . based on time measurement [N0101]
A61G9/00U)] [C9412]
K61B10/00D12 . . based on measurement of pH-value [N0207]



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 ECLA CPC
H01L21/027 H01L21/027 H01L21/027
H01L21/027B H01L21/0276
H01L21/027B2 H01L21/0282
H01L21/027B6 H01L21/0288
H01L21/027B6B H01L21/0294
H01L21/027B6B2 H01L21/03
H01L21/027B6B4 H01L21/0306
H01L21/027B6C H01L21/0312
H01L21/027B6D H01L21/0318
H01L21/027B6E H01L21/0324
H01L21/033 H01L21/033 H01L21/033
15


Classification Harmonization

 EPO and USPTO
will jointly promote
CHC harmonization
in IPC
fiveIPoffices

 USPTO and
EPO will
jointly
present and
promote
CPC
16


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

17


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

18


Key CPC Transition Activities

 Develop training  Training material based on FCRs
shared with USPTO
 IT upgrade at USPTO and EPO
 IT changes at USPTO and EPO
 ECLA housekeeping
 Work on CPC IPC-compliancy
 Develop detailed Field-Specific
Classification Rules (FCRs) in  Freeze ECLA scheme on 1 July 2012
around 600 fields  Prepare for launch of the CPC

Jan 2011 Jan 2012 Dec 2012

Start of project Freeze ECLA
discussions between scheme revisions
Launch of CPC
EPO and USPTO

19


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
20


Contact
cpc@epo.org
cpc@uspto.gov

21


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



Free Services – Google Patents – Images



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



Free Services – Patent Lens – Image



Free Services – Patent Lens – Image Family Tree



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



Free Services – Patent Calls – Image



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



Free Services – PriorSmart – Image



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


For-Fee Services – Thomson Innovation – Image



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



For-Fee Services – STN International – Image



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.



For-Fee Services – Questel – Image



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


Patent Information Users Group, Inc.
The International Society for
Patent Information
2011 Update

38

3LP Advisors

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
39
patent searching and analysis

3LP Advisors

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
40

3LP Advisors

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
41

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