The emergence of competitors to the Science Citation Index and the Web of Science

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Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties

Persistent commentary contends that the Patent Office is issuing patents that appropriate public domain concepts at an alarming frequency. Complaints of low patent quality enjoy growing resonance with regard to business methods, computer software, and other inventions for which patents were not traditionally sought. In this article, Professor Jay Thomas explains how the judiciary\u27s lenient view of patentable subject matter and utility standards, along with miserly congressional funding policies, have rendered the Patent Office an increasingly porous agency. Professor Thomas next reviews existing proposals for improving patent quality, including the conventional wisdom that adoption of an opposition system will contribute meaningfully to the solution of our patent quality problem. Exploring the political economy of patent challenges, Professor Thomas reasons that oppositions do little to solve collective action problems, the possibility of collusion between the prior art holder and patentee, and the existence of the first inventor defense. Professor Thomas instead proposes that the Patent Office recruit members of the public to act as private patent examiners. By awarding prior art informants with a bounty assessed against applicants, the Patent Office can restore order to the patent system and reduce its social costs

Thoughts on Patents and Information Literacy

Patents are an under-used information source, in part because of an often-narrow focus by patent librarians on the tools and techniques of patentability searching. This approach can ignore a range of potential applications of patent information, using patents in their contexts as technical, design, historical, legal, and commercial documents. This paper suggests the adoption of a flexible approach, viewing patents and patent information in the greater context of information literacy, including that of the Association of College and Research Libraries’ Framework for Information Literacy for Higher Education, more commonly known as the ACRL Framework

PIUG: Patent Information Users Group, Inc.: A History of The International Society for Patent Information Professionals

Efforts to view and analyze patents began soon after the first patents were filed in the novel system founded in the U.S. Constitution. In the succeeding 200 plus years, classification and indexing tools have evolved from paper to digital, with searching demanding ever-higher skills. Answering the need of patent researchers and analysts for advocacy, scholarship, and professional education, leading searchers founded the Patent Information Users Group, Inc., now the pre-eminent professional organization for patent searchers in the United States. It offers formal coursework for prospective patent searchers, colloquia, and conferences where novice searchers can master their craft. Searchers, who often work in isolation, benefit from the support network and collegiality of PIUG. Patent searching is both challenging and rewarding. It is vital for individuals seeking to secure rights to intellectual property and contributes to research in many fields: history, economics, finance, management, sociology, law, medicine, and government policy. It is a career path for academic and special librarians with knowledge of the sciences behind the inventions and is a core skill for those preparing for careers in the sciences and technology fields. Skills and applications for patent knowledge receive little treatment in college curriculum, leaving it to the individual to discover the range of tools, strategies, and practical uses of patents. This article describes the developments in patent searching technology and the work of PIUG’s founders and members that led to its creation, growth, and successes in professional education, advocacy, and outreach. Keywords: PIUG, patent searchers, professional education, librarian

Preliminary Report on Patent Literature, Search Methodology and Patent Status of Medicines on the WHO EML 2009

Over the past several decades the World Health Organization (WHO) has produced the Essential Medicines List (EML) to assist countries in deciding what medicines should be essential and available in National Essential Medicine Lists.1 WHO, through the work of regional offices, supports nations using the EML to ensure the quality, availability, and affordability of pharmaceuticals required to promote and advance public health in nations across the globe. However in some cases, access to EML pharmaceuticals might be complicated by existing patents, i.e., where issued, patent rights might pose obstacles to access and inclusion in national EMLs. Indeed, in developed and emerging economy national jurisdictions patent protection may be in effect for a not insignificant number of the WHO EML pharmaceuticals (Figure 2A). However, in developing countries, it is uncertain whether these patents have been filed or issued. Without patent data predicated on an established, reproducible protocol for accessing and assembling patent information on the EML pharmaceuticals, discussions, debates and strategic approaches to understanding and managing patents with regard to access and delivery to developing countries remain in the dark. Indeed, it is absurd to make policy and formulate strategy without solid patent information: the critical foundation for rational debate. To analyze the degree and scope of patenting of EML pharmaceuticals, WIPO (with WHO) approached the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law, specifically the International Technology Transfer Institute (ITTI) to generate a preliminary overview of patents appurtenant to recently added pharmaceutical updates to the EML.2 As part of this work, with inputs from WHO and WIPO, ITTI developed novel methodology and a detailed protocol for identifying EML pharmaceutical patents in national jurisdictions, with an easily reproducible yet cost effective template. Herein is described the development of such a protocol and a preliminary pool of patent information that illustrates its utility. The protocol yields data in a layered approach thereby allowing a user to quickly and effectively obtain both broad and detailed patent information for medications on the WHO EML. In addition, the protocol can be used as an initial path for targeted strategic analysis of potentially relevant patent information in national jurisdictions. In sum, the objectives for this project were: To develop a robust methodology to assess the patent status of medicines on the WHO Model List of Essential Medicines; To place in the public domain a detailed report on the present (2010) patent status of medicines that were on patent in 2003 and those medicines added to the Model List since 2003 by country and level of development; and To analyze the patent status of these Essential Medicines by the development status of countries. The report describes the development of the protocol and presents a preliminary list of EML and corresponding patents in certain jurisdictions to illustrate the utility of the approach. Results will be discussed both in terms of global access and patents, and in the context of establishing standard, systematic, protocols for periodic patent searches related to EML content. 1 WORLD HEALTH ORGANIZATION, CONTINUITY AND CHANGE IMPLEMENTING THE THIRD WHO MEDICINES STRATEGY 2008--‐2013 20 (WHO Press, 3rd ed. 2009). 2 This report covers the EML up to and including updates until 2009

Patent Clutter

Patent claims are supposed to clearly and succinctly describe the patented invention, and only the patented invention. This Article hypothesizes that a substantial amount of language in patent claims is in fact not about the core invention, which may contribute to well-documented problems with patent claims. I analyze the claims of 40,000 patents and applications, and document the proliferation of “clutter”—language in patent claims that is not about the invention. Although claims are supposed to be exclusively about the invention, clutter appears across industries and makes up approximately 25% of claim language. Patent clutter may contribute several major problems in patent law. Extensive clutter makes patent claims harder to search. Excessive language in patent claims may be the result of over-claiming—when patentees describe potential corollaries they do not possess—thereby making the patent so broad in scope as to be invalid. More generally, it strains the comprehensibility of patents and burdens the resources of patent examiners. After arguing that patent clutter may contribute to these various problems, this Article turns to reforms. Rejections based on prolix, lack of enablement, and lack of written description can be crafted to dispose of the worst offenders, and better algorithms and different litigation rules can allow the patent system to adapt (and even benefit from) the remaining uses of excess language. The Article additionally generates important theoretical insights. Claims are often thought of as entirely synonymous with the invention and all elements of the claim are thought to relate equally strongly to the invention. This Article suggests empirically that these assumptions do not hold in practice, and offers a framework for restructuring conceptions of the relationship between claims and the invention

Applicant and Examiner Citations in US Patents: An Overview and Analysis

Researchers studying innovation increasingly use indicators based on patent citations. However, it is well known that not all citations originate from applicants--patent examiners contribute to citations listed in issued patents--and that this could complicate interpretation of findings in this literature. In 2001 the US Patent and Trademark Office (USPTO) began reporting examiner and applicant citations separately. In this paper, we analyze the prior art citations of all patents granted by the USPTO in 2001-2003. We show that examiner citations account for 63 per cent of all citations on the average patent, and that 40 per cent of patents have all citations added by examiners. We use multivariate regression and analysis of variance to identify the determinants of examiner shares. Examiner shares are highest for non-US applicants and in electronics, communications, and computer-related fields. However, most of the variation is explained by firm-specific variables, with the largest patent applicants having high examiner shares. Moreover, a large number of firms are granted patents that contain no applicant prior art. Taken together, our findings suggest that heterogeneity in firm-level patenting practices, in particular by high-volume applicants, has a strong influence on the data. This suggests that analysis of firm-level differences in patenting strategies is an important topic for future research.Technology, patents, patent examiners, prior art, citations

Rethinking Novelty in Patent Law

The novelty requirement seeks to ensure that a patent will not issue if the public already possesses the invention. Although gauging possession is usually straightforward for simple inventions, it can be difficult for those in complex fields like biotechnology, chemistry, and pharmaceuticals. For example, if a drug company seeks to patent a promising molecule that was disclosed but never physically made in the prior art, the key possession question is whether a person having ordinary skill in the art (PHOSITA) could have made it at the time of the prior disclosure. Put differently, could the PHOSITA rely on then-existing knowledge in the field to fill in any missing technical details from the prior disclosure? This Article argues that existing novelty jurisprudence mishandles the possession question in two ways. First, it tends to overestimate the PHOSITA\u27s then-existing knowledge by failing to fully appreciate the complex nature of certain technologies. Second, the current examination framework vitiates the presumption of novelty by placing proof burdens on the would-be inventor that can thwart innovation and frustrate important objectives of the patent system. To resolve these problems and to fill a gap in patent scholarship, this Article proposes a new paradigm that reframes the novelty inquiry during patent examination. Its implementation will not only improve the quality of issued patents, but also make the patent literature a more robust source of technical information. This Article contributes to broader policy debates over patent reform and joins a larger effort to bridge the disconnect between patent law and the norms of science

Patent Landscape of Influenza A Virus Prophylactic Vaccines and Related Technologies

Executive Summary: This report focuses on patent landscape analysis of technologies related to prophylactic vaccines targeting pandemic strains of influenza. These technologies include methods of formulating vaccine, methods of producing of viruses or viral subunits, the composition of complete vaccines, and other technologies that have the potential to aid in a global response to this pathogen. The purpose of this patent landscape study was to search, identify, and categorize patent documents that are relevant to the development of vaccines that can efficiently promote the development of protective immunity against pandemic influenza virus strains. The search strategy used keywords which the team felt would be general enough to capture (or “recall”) the majority of patent documents which were directed toward vaccines against influenza A virus. After extensive searching of patent literature databases, approximately 33,500 publications were identified and collapsed to about 3,800 INPADOC families. Relevant documents, almost half of the total, were then identified and sorted into the major categories of vaccine compositions (about 570 families), technologies which support the development of vaccines (about 750 families), and general platform technologies that could be useful but are not specific to the problems presented by pandemic influenza strains (about 560 families). The first two categories, vaccines and supporting technologies, were further divided into particular subcategories to allow an interested reader to rapidly select documents relevant to the particular technology in which he or she is focused. This sorting process increased the precision of the result set. The two major categories (vaccines and supporting technologies) were subjected to a range of analytics in order to extract as much information as possible from the dataset. First, patent landscape maps were generated to assess the accuracy of the sorting procedure and to reveal the relationships between the various technologies that are involved in creating an effective vaccine. Then, filings trends are analyzed for the datasets. The country of origin for the technologies was determined, and the range of distribution to other jurisdictions was assessed. Filings were also analyzed by year, by assignee, and by inventor. Finally, the various patent classification systems were mapped to find which particular classes tend to hold influenza vaccine-related technologies. Besides the keywords developed during the searches and the landscape map generation, the classifications represent an alternate way for further researchers to identify emerging influenza technologies. The analysis included creation of a map of keywords, as shown above, describing the relationship of the various technologies involved in the development of prophylactic influenza A vaccines. The map has regions corresponding to live attenuated virus vaccines, subunit vaccines composed of split viruses or isolated viral polypeptides, and plasmids used in DNA vaccines. Important technologies listed on the map include the use of reverse genetics to create reassortant viruses, the growth of viruses in modified cell lines as opposed to the traditional methods using eggs, the production of recombinant viral antigens in various host cells, and the use of genetically-modified plants to produce virus-like particles. Another major finding was that the number of patent documents related to influenza being published has been steadily increasing in the last decade, as shown in the figure below. Until the mid-1990s, there were only a few influenza patent documents being published each year. The number of publications increased noticeably when TRIPS took effect, resulting in publication of patent applications. However, since 2006 the number of vaccine publications has exploded. In each of 2011 and 2012, about 100 references disclosing influenza vaccine technologies were published. Thus, interest in developing new and more efficacious influenza vaccines has been growing in recent years. This interest is probably being driven by recent influenza outbreaks, such as the H5N1 (bird flu) epidemic that began in the late 1990s and the 2009 H1N1 (swine flu) pandemic. The origins of the vaccine-related inventions were also analyzed. The team determined the country in which the priority application was filed, which was taken as an indication of the country where the invention was made or where the inventors intended to practice the invention. By far, most of the relevant families originated with patent applications filed in the United States. Other prominent priority countries were the China and United Kingdom, followed by Japan, Russia, and South Korea. France was a significant priority country only for supporting technologies, not for vaccines. Top assignees for these families were mostly large pharmaceutical companies, with the majority of patent families coming from Novartis, followed by GlaxoSmithKline, Pfizer, U.S. Merck (Merck, Sharpe, & Dohme), Sanofi, and AstraZeneca. Governmental and nonprofit institutes in China, Japan, Russia, South Korea and the United States also are contributing heavily to influenza vaccine research. Lastly, the jurisdictions were inventors have sought protection for their vaccine technologies were determined, and the number of patent families filing in a given country is plotted on the world map shown on page seven. The United States, Canada, Australia, Japan, South Korea and China have the highest level of filings, followed by Germany, Brazil, India, Mexico and New Zealand. However, although there are a significant number of filings in Brazil, the remainder of Central and South America has only sparse filings. Of concern, with the exception of South Africa, few other African nations have a significant number of filings. In summary, the goal of this report is to provide a knowledge resource for making informed policy decisions and for creating strategic plans concerning the assembly of efficacious vaccines against a rapidly-spreading, highly virulent influenza strain. The team has defined the current state of the art of technologies involved in the manufacture of influenza vaccines, and the important assignees, inventors, and countries have been identified. This document should reveal both the strengths and weaknesses of the current level of preparedness for responding to an emerging pandemic influenza strain. The effects of H5N1 and H1N1 epidemics have been felt across the globe in the last decade, and future epidemics are very probable in the near future, so preparations are necessary to meet this global health threat

The course of lectures on discipline “Intellectual property” (for the 5 year students of the specialty 8.03060101 “Management”)

Затверджено на засіданні кафедри менеджменту інноваційної діяльності та підприємнцтва. Протокол No 1 від 27 серпня 2015 р. Рекомендовано методичною комісією факультету управління і бізнесу у виробництві ТНТУ імені Івана Пулюя. Протокол No 6 від 26 лютого 2016 р.У методичних вказівках, у відповідності до робочої програми, сформовано лекційний матеріал з дисципліни “Інтелектуальна власність” для іноземних студентів спеціальності 8.03060101 “Менеджмент організацій та адміністрування”.Методичні вказівки призначені для допомоги іноземним студентам при вивченні курсу “Інтелектуальна власність”. У методичних вказівках містяться загальні теоретичні відомості, необхідні до вивчення даного курсу. Рекомендовано для іноземних студентів спеціальності 8.03060101 “Менеджмент організацій та адміністрування” з метою закріплення, поглиблення і узагальнення знань, одержаних студентами за час навчання та їх застосування до комплексного вирішення конкретного фахового завдання із дисципліни “Інтелектуальна власність”. Складено з урахуванням робочої програми вивчення курсу, методичних розробок інших вузів, а також матеріалів літературних джерел, наведених у рекомендованій літературі