Patent Information Users Group (PIUG)
2005 Annual Conference, May 21-26
Hyatt Regency Hotel, Arlington, Virginia
Conference Report
PIUG Overview and History
History: PIUG established in 1988 in the U.S.; renamed
“international” in 2003 to reflect growing international
membership.
Profile: Non-profit volunteer organization for patent information
professionals dedicated to the improvement of the retrieval,
analysis and dissemination of patent information worldwide.
Membership: 452 (386 U.S. and 66 non-U.S.); representing 250
corporations, law firms, patent offices, universities, consulting
firms, and commercial vendors. Membership has declined from
~600 in 2003.
E-mail list: Open list with 1,400+ subscribers. Subscriptions
have declined from ~1,600 in 2003.
Web site: http://www.piug.org
2005 Conference Highlights
2005 Attendees: 325, including ~100 vendor representatives. (Best attendance to date.)
2005 Vendors: Chemical Abstracts Service; Dialog (Thomson);
Elsevier MDL; European Patent Office; FIZ Karlsruhe/STN; IFI
Claims; IP.com; LexisNexis Univentio; Micropatent (Thomson);
Minesoft; Questel*Orbit; Thomson Scientific; Questel*Orbit,
LexisNexis Univentio. See PIUG web site for complete list of
sponsors and vendors.
Past conferences: Baltimore (2004); Chicago (2003); Berkeley (2002);
Arlington (1988-2001)
Future conferences: Minneapolis (2006)
Pre and PostConference Workshops: 1. Statistics 101: Making sense of patent analysis
2. Questel*Orbit: FAMPAT – the invention at the heart of the family
3. MicroPatent: Wide IP management and analysis in 2005
4. Thomson-Dialog: Searching chemical prior art on Dialog
5. CAS: Structure Searching in the CAS database
6. FIZ Karlsruhe: Structure Searching Derwent WPI using STN
Express
7. Derwent: Enhancing productivity via integrated solutions
Summary

USPTO is preparing to award the first of several contracts for patent searching services,
patent classification services and reclassification projects. These contracts are an integral
part of the USPTO’s 21st Century Strategic Plan to modernize and improve processes.
Contracts are expected to be awarded in late summer.

USPTO will receive a record 376,000 new patent applications in FY2005. It has a backlog
of about 750,000 pending applications with 500,000 awaiting first action by an examiner.

USPTO will hire 840 new patent examiners in FY2005. The new hires will take 4-6 years
to train and achieve full productivity.

USPTO now processes all patent applications electronically. Examiners can access more
than 800,000 patent applications. The public can access the status information and
contents of published patent applications pending on or after June 30, 2003 via the
USPTO web site.

USPTO is allocating $80 million to improve its patent electronic application filing system,
which currently handles less than 2 percent of all patent applications. The USPTO’s
trademark electronic application system, launched in 1998, now handles over 70 percent
of all trademark applications and renewals.

EPO will implement multipage printing and downloading in its espacenet international
patent database service. Espacenet contains bibliographic and full text date for more
than 50 million patent documents published by 70 national and regional patent offices.
U.S. coverage begins in 1836; most major European countries start the early 20th
century.

EPO will enable linking to full text documents from non-patent literature records in
espacenet. (Scientific papers, books, etc.) The EPO added about 1 million NPL records
to espacenet in 2004.

WIPO will implement the 8th edition of the International Patent Classification on Jan. 1,
2006. The IPC is used by more than 100 national patent offices. This edition marks a
fundamental change in the structure and organization of the IPC. The 8th edition will
comprise a core and advanced level of classifications; reclassification of worldwide patent
collections according to the current edition and the establishment of a Master
Classification Database containing classification data of the worldwide patent
documentation and managed by the EPO.

Change continues to roil the patent information industry. Established vendors such as
Thomson and Questel*Orbit and start ups such as IP.com continue to acquire and
launch new tools for searching, retrieving and analyzing patent data. In the last few years
Thomson has acquired MicroPatent, Delphion, Dialog and Aureka. IFI Claims was
acquired by Kluwer. Earlier this year, LexisNexis acquired Univentio, the world’s
largest supplier of electronic full-text patent information. For an overview of the patent
information biz, see Richard Poynder’s two-part investigative report in the May and June
2004 issues of Information Today (www.infotoday.com).

Representatives of two patent information industry associations, the Coalition for Patent
and Trademark Information Dissemination (U.S.) and PATCOM, the European
Commercial Patent Services Group (www.patcom.org), attended the conference.
There is considerable overlap in membership and goals between the two associations.
Both CPTID and PATCOM have objected to patent information being made available on
the Internet. Washington attorney Joseph Ebersole represented CPTID. PATCOM was
represented by Willem-Geert Lagemaat, CEO of Univentio, a LexisNexis copmany.
U.S. Patent and Trademark Office

In January, Undersecretary of Commerce for Intellectual Property and Director of the
USPTO Jon Dudas appointed a new patent management team. Departing were Edward
Kazenske, deputy commissioner for patent resource and planning; Esther Kepplinger,
deputy commissioner for patent operations; Nicholas Godici, commissioner of patents;
and Steve Kunin, deputy commissioner for patent examination policy. Joseph Rolla is
the new deputy commissioner for patent examination policy; John Doll is the new deputy
commissioner for patent resource and planning; and Margaret Focarino is the new
deputy commissioner for patent operations. All three are career USPTO employees.

In March, David Freeland, former deputy commissioner for management information
systems at the Texas Human Services Dept. became the USPTO’s new CIO in March.
He replaced Doug Bourgeois, a former FedEx IT manager who served as CIO from Nov.
2001 to Nov. 2004.

USPTO will hire 860 patent examiners in FY2005, bringing the total number of examiners
to 4,400. The USPTO has 6,800 federal employees and 3,600 contract employees. The
new hires will take 4-6 years to reach full productivity. More hires are expected in FY2006.
New examiners are well acclimated to the electronic environment. They have access to
myriad commercial sci-tech databases, digital journals and books, and the Internet.

USPTO will complete move to new campus in Alexandria, Virginia in late 2005 or early
2006. The agency formerly occupied 18 buildings located in a sprawling commercial and
residential neighborhood called Crystal City in Arlington, Virginia. The new Public Search
Facility, which combined the Patent Search Room and Trademark Search Library,
opened in September 2004. The new facility has approximately 300 public workstations
that provide access to USPTO internal patent and trademark search systems. The paper
collection of classified patents was discarded in 2003-2004. Plant patent paper copies
were not discarded, nor were paper copies of the Official Gazette and Annual Index of
Patents. (The OG ceased publication in paper in Sept. 2002. It is now published on the
USPTO web site and on DVD. The Annual Index is also published on DVD.)

USPTO will receive approximately 376,000 new patent applications in fiscal year 2005.
This is a six percent increase over 2004. There are currently 756,000 pending
applications and more than 500,000 awaiting first action by a patent examiner. A patent
application on average takes about 27 months to issue. For some technologies, such as
computer hardware and data processing, the processing time is more than forty months.

USPTO will issue approximately 190,000 patents in FY2005; in FY2004, 187,000 patents
were issued. The USPTO published approximately 268,000 patent applications in
calendar year 2004, a 13 percent increase over 2003. Since March 15, 2001, more than
820,000 utility and plant patent applications have been published. These documents are
known as PGPubs or pre-grant publications.

USPTO has been very successful in implementing an end-to-end electronic filing system
for trademarks. Launched in 1998, the award-winning Trademark Electronic Application
System (TEAS) handles more than 70% of all trademark applications and renewals. The
USPTO is implementing financial incentives (fee surcharge for paper applications) to
encourage more applicants to use TEAS. In FY2006, $17 million is allocated for
additional improvements.

USPTO has not been successful in creating an end-to-end electronic filing system for
patents. The current system, based on software licensed from the European Patent
Office, handles less than 2% of all new patent applications. Applicants must obtain a PKI
encryption certificate in order to use the system. Unlike trademark applications, patent
applications are confidential until published 18 months after the date of filing. Patent
attorneys and inventors complain that the current system is too difficult and cumbersome.
In FY2006, $80 million is allocated for revamping this system.

In November 2004, the USPTO signed a memorandum of understanding with the EPO
and JPO. The three offices pledged to seek greater cooperation and harmonization in
order to reduce duplication and inefficiency. This will include standardizing patent
statistics, sharing patent search reports on applications covering the same invention and
cooperative patent classification projects.
Mike’s comment: several professional patent searchers expressed the view that redundancy is
sometimes a good thing. Independent searches on the same invention performed by the EPO,
JPO and USPTO may discover better prior art than one search performed by one office. Not
because the search is incomplete or incompetently done, but because the offices have different
search tools and techniques.]
USPTO 21st Century Strategic Plan
In 2002, the USPTO published its 21st Century Strategic Plan, a blueprint for modernizing its
business processes and overcoming its workload crisis. Under the plan, which was modified in
2003, the agency will concentrate on its core functions of examining and granting patents and
trademarks by outsourcing support services such as classification and searching. The agency will
replace inefficient paper-based systems with end-to-end electronic processing systems. The
agency will also seek greater cooperation and coordination with other patent offices to eliminate
redundant processes and inefficiencies. USPTO is committed, among other things, to improving
patent quality, decreasing patent application pendency to 18 months or less, and expanding egovernment services.
The USPTO is a fully fee-funded federal agency that receives no appropriations from Congress.
However, Congress is still able withhold funds from the agency and divert them to other
government programs during the annual appropriations process. Approximately $1 billion in
patent and trademark fees has been diverted since 1991. The Bush administration has pledged to
end this practice. However, the Senate is still reluctant to give up its budget oversight authority.
See the Intellectual Property Owners Association web site at http://www.ipo.org for complete
coverage of this issue.
The USPTO will award several major outsourcing contracts this summer:

Patent Search Services
USPTO will award the first contract for patent searching services. The purpose of this
pilot program is to demonstrate whether or not searches by commercial entities of the
available prior art relating to the subject matter of inventions claimed in Patent
Cooperation Treaty (PCT) patent applications are accurate and meet or exceed the
standards of searches conducted by and used by the U.S. Patent and Trademark Office
during the patent examination process. The USPTO may impose a $500 prior art search
surcharge on patent applications; however, the agency can pay commercial contract
searchers more than $500 per search. Congress has also limited the pilot program to U.S.
companies and citizens.
[Mike’s comment: This is anathema to many patent examiners who feel that prior art searching is
an integral part of the examination process. POPA, the union representing examiners, has argued
that the best way to improve quality and reduce pendency is to hire more examiners and increase
the amount of examination time per application. Currently, examiners at full production are
required to process about 100 applications per year; this works out to about 20 hours per
application. The USPTO wanted this contract to apply to all prior art searches but Congress
required a scaled-down pilot project. In FY2004 the USPTO received ~45,000 PCT applications.]

Pre-Grant Publication Classification Services
USPTO will award the first contract for pre-grant publication classification services.
Multiple contracts will be issued for the classification of new patent applications.

Patent Reclassification Projects
USPTO will award the first contract for patent reclassification services. These services
include the reorganization of technological areas of subject matter, such as patents and
pre-grant published applications, into an optimal structure for classifying, searching, and
retrieving patent information.
[Mike’s comment: The outsourcing of patent classification is welcome in light of the USPTO’s
downsizing of classification operations over the last ten years. In 2001-2002, the USPTO
reorganized its classification division and eliminated full-time patent classifier positions in favor of
hybrid examiner-classifier positions. Full-time classifiers were given the option of reassignment as
patent examiners or retirement. Commercial vendors and professional searchers have been
critical of the quality of U.S. patent classification in recent years.]
European Patent Office
Dr. Nigel Clarke, director of marketing and promotion, announced several upcoming
improvements to the esp@cenet international patent database system.

Non-patent literature (NPL) records in espacenet will be linked to full text documents if
your institution is a current subscriber and uses e-rights authentication software. NPL
includes papers published in scholarly journals and conference proceedings. The EPO
added more than 1 million NPL records to espacenet in October 2004.

Multipage printing and downloading will be implemented in June. This will allow users to
print and download entire patent documents. Currently, users must print and save patent
documents one page at a time. There may be some limitations on the number of pages
or documents printed at one time in order to curb excessive use.

EPO would like to expand espacenet’s historical backfile to include more 19th century
patents. It is in discussions with several offices include the UK Patent Office to add pre1900 documents. Currently, Switzerland and Germany have coverage back to the late
1800s.
International Patent Classification Reform
The World Intellectual Property Organization is preparing to implement the 8 th edition of the
International Patent Classification on January 1, 2006. The IPC was created in the 1970s to
facilitate the classification and searching of patent documents worldwide. More than 50 countries
are members of the Strasbourg Agreement, the treaty governing the IPC, but IPC codes are used
by more than 100 countries. Although widely applied, the IPC has never been a popular or
practical search tool because it is updated in five year increments – too long for emerging
technologies; there is no retrospective reclassification – searchers must consult all previous
editions in order to do comprehensive searches; it has too few classifications - 70,000 compared
to 180,000 for the U.S. patent classification system; and it has few classification definitions.
The 8th edition will comprise a core and advanced level of classifications; reclassification of
worldwide patent collections according to the current edition and the establishment of a Master
Classification Database containing classification data of the worldwide patent documentation
and managed by the EPO. The specifications for the 8th edition will be published in June 2005 to
give commercial database providers time to integrate the changes into their products.
Submitted to the Engineering Libraries Division of ASEE by:
Michael White
Public Services Librarian for Research Services
Engineering and Science Library
Queen’s University, Kingston, Ontario
June 1, 2005