THUR - PIUG 2022 Virtual

Contents WORKSHOP: AI Patent Classification for Breakfast — How to Benefit from AI Based Classifica tion in Your Daily Work 2 IP Landscape Activities for Business Strategies Towards Sustainability Goal of Asahi Kasei Corpo ration 4 Mixed Patent/Design Databases and Families: Are We Going Towards a Comprehensive IP Infor mation System? 6 Hidden Legal Status: What the National File Inspection Doesn’t Always Tell You 8 The Role of IP Offices in Patent Information — A Personal View 10 IP Data and Insights Unleashed 12 Have We Seen This Patent Family Before? 14 PATENTSCOPE: Latest Developments and Overview of the Top Features 16 An Overview of Searching for Prior Act 18 What’s All the Fuss About — A Discussion of Web 3.0 and the Metaverse 20 Ple ary S ssions a d W kshops: THURSDAY Patent Information Users Group, Inc.

An International Conference for Patent Information Professionals  Virtual Meeting 2022 ANNUAL CONFERENCE

Meeting Book prepared by BizInt Solutions Inc., a proud sponsor of the 2022 PIUG Annual Conference

T H U R S D A Y M O R N I N G

WORKSHOP: AI Patent Classification for Breakfast —How to Benefit fromAI Based Classification in Your Daily Work Kornél Markó (Averbis) 8:10 – 9:10 am

ABSTRACT The use of artificial intelligence in patent monitoring has outgrown its infancy. In this workshop, we will show how patent specialists and users can signifi cantly reduce their workload or that of their col leagues with the help of machine learning and NLP. Furthermore, we will present various ways in which companies can integrate this AI benefits into their daily work. Be it as a “stand alone” option, tightly integrated into the system landscape, connection to Minesoft products or fully integrated in a monitoring system like RAPID5 from Centredoc.

BIOGRAPHY Kornél Markó is co-founder and managing director of Averbis GmbH. He holds a PhD in computational linguistics and has been leading the development of Averbis core components for several years. His competence is internationally recognized and docu mented in numerous publications. Kornél has strong expertise in the areas of semantics, natural language processing (NLP) and machine learning (ML) in conjunction with their operational use in literature and patent research and classification. In his younger days he was world champion (2000) in robot soccer.

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2022 Annual Conference  Virtual Meeting

AI Patent Classification for Breakfast —How to Benefit fromAI Based Classification in Your Daily Work  Kornél Markó (Averbis)

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T H U R S D A Y M O R N I N G

IP Landscape Activities for Business Strategies Towards Sustainability Goal of Asahi Kasei Corporation Sakae Nakamura and Yasushi Miyagi (Asahi Kasei Corporation) 9:10 – 9:40 am

ABSTRACT Asahi Kasei Corporation is accelerating its efforts to create value by contributing to sustainable society, with the goal of achieving carbon neutrality by 2050. In building corporate and business strategies towards the value creation, IP landscape has been playing a crucial role. In our presentation, we are introducing some of our IP landscape activities for demonstrating our approach and proposals for the value creation. Particularly, we are introducing an example where we made strategy proposals for business areas of our focus including alkaline water electrolysis business, based on analysis of a wide range of information including IP and market infor mation. We are also introducing our activities aiming to encourage sustainability efforts and idea creation for new businesses through IP analysis.

BIOGRAPHY Yasushi Miyagi is an intellectual property analyst certified by the Association of Intellectual Property Education in Japan. He engaged in strategic studies at a research division belonging to one of the big gest investment companies in Japan. Prior to that, he had worked as a patent attorney for 7 years at a law and patent firm, mainly dealing with patent applica tions by major German Companies including Bosch and Siemens. He joined Asahi Kasei in 2018 and has been engaged in research and analysis of technical information at the IP Strategic Planning Group.

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2022 Annual Conference  Virtual Meeting

IP Landscape Activities for Business Strategies Towards Sustainability Goal of Asahi Kasei Corporation  Sakae Nakamura and Yasushi Miyagi (Asahi Kasei Corporation)

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T H U R S D A Y M O R N I N G

Mixed Patent/Design Databases and Families: Are We Going Towards a Comprehensive IP Information System? GuidoMoradei (Quaestio-Patent Information Partners srl) 9:40 – 10:10 am

ABSTRACT We are often asked to search designs as prior art to challenge the validity of a previous design patent/ registration. In case of FTOs regarding a product having a shape, a texture or a GUI it is essential to cover designs as well as patents, and to know where the IPRs really exist. There are specialized sources for that and a few AI-based tools already available on the market offering reverse image search, not only browsing the web but also design patent/registra tion databases. But several classic patent databases too have a coverage of designs that seems to be ex panding. In this presentation I would like to examine the state of the art of the information about design patents/registrations included in patent databases, the different search options with particular reference to the “mixed families”, the criteria behind the art of building them and the priority regulations.

BIOGRAPHY Guido is the founder and CEO of Quaestio – Patent Information Partners srl, an Italian firm specialized in providing IP information services to attorneys, lawyers and IP departments of big companies. With more than 30 years of experience as IP information specialist and QPIP, Guido has developed special skills in searching designs prior art and information, testing databases, comparing tools, analyzing clas sifications. Guido is also a Trademarks and Designs registered attorney before the Italian and the EU Intellectual Property Offices and editor of a virtual special issue of the World Patent Information about Industrial Design Intellectual Property and Informa tion Retrieval.

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2022 Annual Conference  Virtual Meeting

Mixed Patent/Design Databases and Families: Are We Going Towards a Comprehensive IP Information System?  GuidoMoradei (Quaestio-Patent Information Partners srl)

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T H U R S D A Y M O R N I N G

Hidden Legal Status: What the National File Inspection Doesn’t Always Tell You Stephen Adams (Magister Ltd.) 10:10 – 10:40 am

ABSTRACT Patent information specialists are increasingly being called upon to locate data on the IP rights in force in less familiar, more ‘exotic’, countries. These types of request may challenge our assumptions and our background knowledge about the limits of territorial enforceability of a national or regional patent, into additional jurisdictions. Although the EPO’s system of extension and validation states is well-recognized and documented in their legal status records, there are other examples across the world where such extensions are not well represented, in either formal documentation or electronic records. This presenta tion will dig a little deeper, in order to help informa tion specialists to understand the why, the where, the when and the how of such extension of patent rights.

BIOGRAPHY Stephen Adams is the managing director of Ma gister Ltd., a UK-based consultancy specializing in patents information. Mr. Adams is a Qualified Patent Information Professional (number 20190044100092) and holds a B.Sc. in chemistry from the University of Bristol and an M.Sc. in Information Science from City University, London, as well as professional member ship of the UK’s Chartered Institute of Library and In formation Professionals (CILIP) and the Royal Society of Chemistry (RSC). He was the representative for UK user groups on the information sub-committee of the Standing Advisory Committee to the EPO (SACE PO/PDI) for many years, as well as contributing to the work of the Committee on WIPO Standards (CWS) on behalf of the PIUG. He is currently a member of the American Chemical Society’s Committee on Patents and Related Matters (CPRM). He is the author of three editions of “Information Sources in Patents”, the most recent being published in September 2020 by Walter de Gruyter KG. He received the IPI Award in 2012 for outstanding contribution to patent informa tion.

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2022 Annual Conference  Virtual Meeting

Hidden Legal Status: What the National File Inspection Doesn’t Always Tell You  Stephen Adams (Magister Ltd.)

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T H U R S D A Y M O R N I N G

The Role of IP Offices in Patent Information—A Personal View Nigel Clarke (Stanfield Clarke Associates) 10:55 – 11:25 am

ABSTRACT World Patent Information commemorated four decades years of its founding with a 40th Anniver sary Community Meeting in September 2019. One year earlier the European Patent Office celebrated a number of big patent information anniversaries in 2018. This grand conjunction of events provided reasons for me to unearth what turned out to be a rich history of public information about conferred in tellectual property rights. The publication obligation has intensified from the beginning, synergistically, symbiotically and inextricably with the evolution of intellectual property systems. This presentation is a personally researched view of the history of patent information combined with some own experiences of working in an intergovernmental IP office and as a WPI editorial board member for over 20 years. The world has changed a little since 2019, you may have noticed. So I´ll include some subjective observations on the patent information responses of IP offices regarding the COVID pandemic and climate change, and speculate (but not too much) on the future of patent information at IP offices.

BIOGRAPHY In March 2021, I set up an independent consultancy – Stanfield Clarke Associates - operating in the intellec tual property space, after 30 years at the European Patent Office, EPO. I am interested in the application of patent analytics to landscaping studies of future and emerging technologies, the evolution of the commercial patent information sector, creating awareness of IP in the STEM community, and the development of IP teaching materials. I am an edi torial board member of World Patent Information. I have recently joined the Innovation and Intellectual Property Management lab at the Institute for Manu facturing at the University of Cambridge. I am guest lecturer at Kingston University and Visiting Fellow at Oxford Brookes University. I have chartered member ships of the Royal Society of Chemistry, the Institute of Physics and the Science Council (UK). I have a BSc in physical chemistry and a PhD in Neutron Science both from the University of Exeter.

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2022 Annual Conference  Virtual Meeting

The Role of IP Offices in Patent Information—A Personal View  Nigel Clarke (Stanfield Clarke Associates)

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T H U R S D A Y M O R N I N G

IP Data and Insights Unleashed Caroline Peel and Paul Torpey (Clarivate) 11:25 – 11:45 am

ABSTRACT As the global innovation landscape changes at a rap id pace, multiple forces are reshaping the consump tion and use cases for patent information. In this new landscape, accessibility, speed to insights and the need for clean and structured data are notable emerging factors. During this presentation Clarivate will provide an update on how it enables its custom er to ensure that the value of patent intelligence is embedded within the fabric of the organization. Topics: • Introduction to IP Intelligence • Data curation – Content curation process and how Clarivate utilises advanced technology to create smart IP data. • Accessing data through a connected ecosystem – the various ways Clarivate allows its customer to consume IP data. • Speed to insights through curated dashboards.

BIOGRAPHY Dr. Caroline Peel LLM is the Content Director for IP at Clarivate and has been part of the Clarivate team for 21 years. She joined the Derwent GENESEQ editorial team after completing PhD in Cell Cycle Checkpoints and now leads the editorial teams across the globe curating patent and trademark content for products such as the Derwent World Patent Index, Derwent GENESEQ, Cortelis and the CompuMark suite of products. Caroline graduated from the University of Leicester with a BSc Hons Degree in Biological Sciences (Genetics) and a PhD in Cell Cycle Genetics from the University of Sheffield and completed her Masters in Intellectual Property Law from the Univer sity of Edinburgh in 2021. Paul has been with Clarivate for more than 20 years and has held several roles across the organization. In his current role as Sr. Director of IP Intelligence Products, Paul manages solutions that include Der went Innovation and Innography. Prior to joining the IP Intelligence team in 2010, Paul spent a significant amount of time in the Science business of Clarivate supporting platforms such as the Web of Science. In his spare time Paul is involved with the National Multiple Sclerosis Society and is a member of the Clarivate Philadelphia cycling team that participates in fund raising activities for MS research and patient care.

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2022 Annual Conference  Virtual Meeting

IP Data and Insights Unleashed  Caroline Peel and Paul Torpey (Clarivate)

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T H U R S D A Y M O R N I N G

Have We Seen This Patent Family Before? Matt Eberle (BizInt Solutions, Inc.) 11:45 am – 12:00 pm ABSTRACT Since its introduction in 1998, BizInt Smart Charts for Patents has provided tools to help patent searchers build compelling reports. Over the years, new sys tems and techniques for searching have proliferated. In this presentation, we will look at the evolution of BizInt Smart Charts capabilities over this time with a case study illustrating different techniques for de termining “have we seen this patent family before” when reviewing data from multiple sources.

BIOGRAPHY Following over ten years of experience at Wyeth, Pfizer and Sunovion as a Senior Information Scien tist and Pharmaceutical Information Analyst, since 2013 Matt has helped BizInt customers use the BizInt Smart Charts and VantagePoint tools to create new solutions to address their challenges and problems. Matt lives outside Boston, MA.

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2022 Annual Conference  Virtual Meeting

Have We Seen This Patent Family Before?  Matt Eberle (BizInt Solutions, Inc.)

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T H U R S D A Y A F T E R N O O N

PATENTSCOPE: Latest Developments and Overview of the Top Features Sandrine Ammann (WIPO) 12:00 – 12:30 pm

ABSTRACT Over the years PATENTSCOPE has evolved from a simple search system containing only published PCT applications with limited search functions to a search system containing over 70 national collections on top of the complete published PCT application collection and offering numerous search features, as well as chemical searches such as Markush. The presentation will focus on the newly added data and features as well as a review of the most useful features for patent searchers.

BIOGRAPHY Sandrine joined WIPO as a translator of PCT pub lished application abstracts. After obtaining a degree in management and communications, she moved on with her career and is now responsible for the promotion of the WIPO Global Databases.

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2022 Annual Conference  Virtual Meeting

PATENTSCOPE: Latest Developments and Overview of the Top Features  Sandrine Ammann (WIPO)

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T H U R S D A Y A F T E R N O O N

An Overview of Searching for Prior Act Ron Kaminecki (Kaminecki IP LLC) 1:00 – 1:30 pm ABSTRACT Searches have never been required but have been done in an effort to make it easier for a patent appli cation to work its way through the system and end up in a granted patent. Various changes to the law and court decisions over time have dictated what is necessary in order for a patent application to make it through the system with minimal issues. Over time the system has changed, but searching continues on, with changes in technology which will hopefully keep up with changes in patent prosecution. This presentation will look at how these changes have resulted in new ways of looking at searching.

BIOGRAPHY Ron has been involved with technical and patent information beginning with his work at IIT Research Institute and has continued at different informa tion-intensive companies including Dialog, Knight Ridder Information, Thomson Reuters, ProQuest and Questel and Abbott Laboratories. He currently teaches patent searching at the University of New Hampshire Law School and DePaul Law School, both online and in-person. He is a patent attorney with a BS in Chemistry, an MS in Computer Science and a JD with a Certificate in Patent Law and is also a Qualified Patent Information Professional. He is an inventor, a co-author of a NISO standard for an online search language and has worked as an expert witness. He also serves on various boards and committees in the patent community and on urban preservation. In his spare time, he assembles and fixes electric and acoustic bicycles.

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2022 Annual Conference  Virtual Meeting

An Overview of Searching for Prior Act  Ron Kaminecki (Kaminecki IP LLC)

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T H U R S D A Y A F T E R N O O N

What’s All the Fuss About —A Discussion of Web 3.0 and the Metaverse Tony Trippe (Patinformatics, LLC) 1:30 – 2:00 pm

ABSTRACT Web 3.0 and the Metaverse are some of the hottest topics in technology, but what do these buzz words mean exactly. Pundits say these new technologies will change the way people live their lives, entertain themselves and do business. Is this just more hype or will these technologies really be revolutionary? In this presentation, we’ll look at each of these areas and look at how they might have an impact on the patent information profession. In addition, an anal ysis of the patent landscape for these technologies will be shared.

BIOGRAPHY Anthony (Tony) Trippe is Managing Director of Pat informatics, LLC. Patinformatics is an advisory firm specializing in patent analytics and landscaping to support decision-making for technology-based busi nesses. In addition to operating Patinformatics, Mr. Trippe is also an Adjunct Professor of IP Management and Markets at the Illinois Institute of Technology teaching a course on patent analysis, and landscapes for strategic decision making. Tony is an influential thought leader in the patent analysis space, wrote the Guidelines for the Preparation of Patent Land scape Reports for the World Intellectual Property Organization, has been named one of the Top 300 IP Strategists by IAM Magazine and is the developer of ML4Patents.com the industry’s online resource for the use of machine learning and artificial intelligence in the field of Intellectual Property.

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2022 Annual Conference  Virtual Meeting

What’s All the Fuss About —A Discussion of Web 3.0 and the Metaverse  Tony Trippe (Patinformatics, LLC)

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T H U R S D A Y A F T E R N O O N

Use of Temporal Context in Identifying Fundamental Patents Kevin J. Hess (HTS LLC) 2:00 – 2:30 pm

ABSTRACT When assessing the value of patents, many factors have been proposed as contributing to the per ceived value, including: claim length, family size, prosecution time, citations, etc. While each has some merit, they do not account for the technology land scape at the time of invention. Consideration of a patent’s temporal context provides insights into how fundamental a patent is its peer group. A case study is presented to demonstrate approach es to temporal analysis and how the results may be useful in valuation or business intelligence. A tech nology development curve, or S-curve, is derived for technologies relevant to the subject patents. The relative location of the patents along the timeline suggests how fundamental a patent is to the tech nology. As a refinement, rejection analysis is used to identify patents that the Examiners consider more fundamental within the peer group. The analysis is useful to benchmark dates for further prior art search. Finally, the assessment of which assignees are leaders within the peer group is determined from analysis of citations and each company’s rela tive speed of innovation. With each approach, the business decisions that may be supported by the analysis are discussed.

BIOGRAPHY Kevin Hess is patent analyst and program manager at HTS LLC (HighTech-Solutions), a technology firm focusing on intellectual property consulting for the wireless, video, telecommunications, semiconductor, battery, and consumer electronics markets. Kevin is also a subject matter expert and founder at Patent Technics LLC which specializes in patent technical analysis for the semiconductor, LED lighting and display, and additive manufacturing (3D printing) markets. Kevin’s IP experience has spanned many stages of the IP lifecycle, including: inventing, prosecution support, market analysis and valuation, reverse engineering, claim charting, and licensing/litigation. His areas of interest are patent analytics, IP land scaping and taxonomy development. His industry experience includes R&D and product development positions at Tyrex Corporation, Freescale Semicon ductor, Motorola, Huntsman Corporation, Phillips-Su mika, ConocoPhillips, and JemPac, a semiconductor startup. Kevin is a named inventor on over 50 US and foreign patents granted in semiconductors, electron ics, and materials. He has published on patent search strategy, semiconductor device design and reliabil ity, and polymer materials formulation. Kevin holds a Ph.D. in Chemical Engineering from the University of Texas at Austin. His interests include music and guitar collecting.

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2022 Annual Conference  Virtual Meeting

Use of Temporal Context in Identifying Fundamental Patents  Kevin J. Hess (HTS LLC)

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