1. Bridge the gap- Parsing the Databases for Applied IP legal research Dana Neacsu edn13@Columbia.edu

2. What if your summer job involves IP research?.
What if your summer job involves IP research?
Do you know how to search
for patent applications?
for IP law.?
Do you know how to assess a company’s financial ability to commercialize a patent;
What about ways to search for technology research grants subsequently patented and argue for Bayh-Dole license to a third party?
Let’s use Lexis Advance’s Practice Advisor,
Westlaw’s Practical Law, and
Bloomberglaw’s Business Intelligencer.

3. Lexis IP practice Center & IP Practice Advisor
If you were to oppose Elon Musk’s patent what would you do?
Patent Prosecution: Conduct Patentability Searches
• Determine the Scope and Limitations of the Claims
• Advise your client accordingly
Patent Searches & Patent Application Drafting

4. Where to Find Lexis Practice Advisor

5. Practice advisor a) Ways to search for patent applications;
Let’s use it
Elon Musk’s SpaceX is the leader in reusable takeoff and landing rockets. It’s tested a vertical take-off and landing of a small-scale rocket numerous times, and has begun including a vertical landing gear on its satellite launches. It has also landed a full-size rocket. But someone else has the patent on this kind of technology: Blue Origin, the space exploration company founded by Amazon CEO Jeff Bezos. While the company hasn’t developed its technology as far as SpaceX, which already is launching satellites for commercial and government clients, it has been proceeding with a contract from NASA to develop a rocket-and-spacecraft combination.
SpaceX is challenging the Blue Origin patent in court, arguing that the idea of launching a rocket and landing it vertically is an old one, with plenty of available prior art, and that the Blue Origin patent doesn’t actually lay out any unique technology that would be needed to execute this method. The reason for the filing is clear: If SpaceX succeeds in developing a vertical-landing rocket, Blue Origin could troll them with this patent, forcing litigation, settlement, or a licensing fee.
If SpaceX would be your client what your line of argument be? Same question if Blue Origin were your argument. What if both companies were developing their technology with government funding, would that change your line of argument?
a) Ways to search for patent applications;
b) Ways to assess the company’s financial ability to commercialize a patent;
c) Ways to search for technology research grants subsequently patented and argue for Bayh-Dole license to a third party;
d) Ways to search for IP law.

6. Practice advisor Intellectual Property & Technology
·   Expert forms and practice notes on 11 topics including advertising & marketing, copyright, internet & e-commerce, IP and IT in corporate transactions, media & entertainment, patents, privacy & data security, right of publicity, technology transactions, trademarks and trade secrets.
·   Hundreds of expert forms and clauses that include annotations such as drafting notes and alternate and optional clauses that provide expert guidance and the ability to customize the document to a customer’s specific situation.
·   Hundreds of practice notes written by experienced practitioners who provide step-by-step guidance and know-how on the wide array of complex tasks that IP practitioners handle.
·   Practice notes and forms written by specialists from leading law firms, including, among many others, Arnold Porter Kaye Scholer, Baker Botts, Cooley, Greenberg Traurig, O’Melveny & Myers, and Venable.
·   Hundreds of checklists and charts to guide the practitioner with drafting, compliance, counseling, and litigation support tasks.
·   Relevant excerpts from leading Matthew Bender® treatises, such as Horwitz on Patent Litigation.
·   Links to relevant statutes, cases, and administrative materials and regulations, which enable practitioners to easily review primary source materials.

7. Patent Workflow 1 6 2 5 3 4 1. Track 2. Screen 6. Optimize 5. Protect
New Technologies
Patent Activity
Competitive Intelligence monitoring
R&D investment/white space analysis
2. Screen
Patentability
Novelty
Freedom to Operate
State of the Art
Infringement
6. Optimize
Derive new strategies for realizing patent value
Maximize licensing opportunities 1 6 2
5. Protect
SWOT analysis
Case Assessment
Discovery
Research
Intelligence gathering
Trial Preparation 5 3
3. Evaluate
Patent document structural analysis
Patent portfolio analysis
Patent search results pattern analysis
Analysis of patent law developments
Analyze examiner and art unit trends 4
4. Procure
Application drafting & review
Forms practice
Foreign practice

8. Patent Workflow – other than TotalPatent® and PatentOptimizer™
1. Track + Forms
Mealey’s IP
Law360
Non Provisional Patent Applications (BAYH- Dole)
2. Screen
TotalPatent® (not in law school)
6. Optimize
Licensing treatises & agreements
Global IP Law Service 1 6 2
5. Protect
CaseMap
Patent case law and agency materials including BPAI, PTAB & ITC
Shepard’s ® Citations Service 5 3
3. Evaluate
Industry-leading, authoritative treatises, including., Chisum on Patents, Milgrim on Trade Secrets, Baxter World Patent Law
Patent Advisor reports 4
4. Procure
Matthew Bender Treatises and Forms

9. Westlaw Practical Law Enhancements and Business Law Center Bayh-Dole (Marching Rights) Litigation
But what about PTC Patent applications?

10. Practical Law

11. Where to Find Practical Law

12. PRACTICAL LAW
Our expert team of attorney editors creates and maintains thousands of up-to-date, practical resources so you don’t have to.
Practical Law provides legal know-how that gives lawyers a better starting point.
Why Practical Law?
1. Depth and quality of the editorial team. Our quality starts with our people
ATTORNEY EDITORS = EXPERTS! Our team of 175+ full time attorney editors have worked at the world’s leading law firms and in-house departments, so you can trust that Practical Law is always accurate and current so you can practice more efficiently, improve client service and add more value.
a. Extensive review and vetting process. (Practical Law materials are rigorously edited and cross-checked to ensure they meet strict know-how and consistency standards)
b. Always up-to-date. (Being current is a key feature of Practical Law and a priority for Practical Law editors. We continuously update our content to keep up with legal, regulatory and practice developments)
2. Know-how created specifically for our service and not available anywhere else.
Practical Law is not a content aggregator; the Practical Law team creates original know-how resources based on what our expert attorney editors would have wanted when they were in practice.
3. Unyielding focus on practical know-how.
You won’t find treatises or typical forms on Practical Law. Our Practice Notes cover the issues from the perspective of an expert practitioner, without unnecessary academic analysis. Our sophisticated Standard Documents and Clauses feature extensive annotations with drafting and negotiating guidance, opposing positions, alternative clauses and more. Similarly, our Checklists include timelines, flowcharts, tables and checklists to give you a thorough yet concise overview of important considerations.
4. Easy to use search and functionality.
The Practical Law search and functionality are extremely easy to navigate and feature cross-references and links to related content. 12

13. PRACTICAL LAW CORE RESOURCES
Attorney editors create and maintain thousands of up-to-date, practical resources.
Quickly draft or benchmark agreements, deals, filings and more using Practical Law Precedents
Clear explanations of current law and practice, ranging from primers to expert analysis
Ensure you’ve covered all the bases with Practical Law timelines, flowcharts and checklists
Search, compare, and analyze agreements and public filings summarized by our experts
Instantly understand and compare state-specific requirements on a variety of key topics
Annotated Standard Documents and Clauses
Focus on Client
Practice Notes
Checklists
What’s Market
State Q&A
Core “know-how” Resources
Depth and breadth of practice areas.
Benefits
(1)
Practical Law content is created with the front-line lawyer in mind. Our trusted resources include Practice Notes, Standard Documents and Clauses, Checklists, Toolkits, legal updates, state-specific guidance, and more.
a. Annotated Standard Documents and Clauses – Quickly draft or benchmark agreements, deals, filings and more using Practical Law Precedents
b. Practice Notes - Clear explanations of current law and practice, ranging from primers to expert analysis
c. Checklists - Ensure you’ve covered all the bases with Practical Law timelines, flowcharts and checklists
d. What’s Market - Search, compare, and analyze agreements and public filings summarized by our experts
e. State Q&A - Instantly understand and compare state-specific requirements on a variety of key topics
(2)
We offer resources across all major practice areas:
Antitrust
Bankruptcy
Capital Markets & Corporate Governance
Commercial*
Corporate and M&A*
Employee Benefits & Executive
Compensation
Estate Planning*
Finance
Labor & Employment*
Litigation*
Real Estate*
Tax
Intellectual Property & Technology
International Arbitration
(If the practice area has a ‘*’ next to it, that means that state specific content is also available)
(3)
Practical Law subscribers recognize that an investment in Practical Law pays for itself over and over in saved costs, maximized efficiency and more.
Our subscribers include approximately 85% of the Am Law 200, hundreds of small and mid-size firms and over 1,300 legal departments. 13

14. Practical Law: Intellectual Property and Technology
Our Intellectual Property & Technology service provides resources across a range of Intellectual Property matters including: Copyright General IP Information Technology Internet IP and IT in Corporate Transactions Patents Privacy and Data Security Right of Publicity Trademarks Trade Secrets

15. Practical Law: Practice Notes
Practice Notes are the straight forward how to guidance that provide clear explanations of the current law and practice.

16. Practical Law: Checklists
Checklists, timelines, flowcharts make sure you have covered all your bases and know your next steps.

17. Practical Law: Toolkits
Toolkits are the One-stop-shop for a collection of continuously maintained resources for core areas of legal risk and compliance.

18. Practical Law: Featured Updates
Latest legal and market
developments to keep
you updated.

19. PracticAL Law
Let’s use it
Elon Musk’s SpaceX is the leader in reusable takeoff and landing rockets. It’s tested a vertical take-off and landing of a small-scale rocket numerous times, and has begun including a vertical landing gear on its satellite launches. It has also landed a full-size rocket. But someone else has the patent on this kind of technology: Blue Origin, the space exploration company founded by Amazon CEO Jeff Bezos. While the company hasn’t developed its technology as far as SpaceX, which already is launching satellites for commercial and government clients, it has been proceeding with a contract from NASA to develop a rocket-and-spacecraft combination.
SpaceX is challenging the Blue Origin patent in court, arguing that the idea of launching a rocket and landing it vertically is an old one, with plenty of available prior art, and that the Blue Origin patent doesn’t actually lay out any unique technology that would be needed to execute this method. The reason for the filing is clear: If SpaceX succeeds in developing a vertical-landing rocket, Blue Origin could troll them with this patent, forcing litigation, settlement, or a licensing fee.
If SpaceX would be your client what your line of argument be? Same question if Blue Origin were your argument. What if both companies were developing their technology with government funding, would that change your line of argument?
a) Ways to search for patent applications;
b) Ways to assess the company’s financial ability to commercialize a patent;
c) Ways to search for technology research grants subsequently patented and argue for Bayh-Dole license to a third party;
d) Ways to search for IP law.

20. BloombergLaw Business Intelligencer & IP Portfolio
Ability to commercialize the patent: SpaceX or Blue Origin? Patent infringement anybody?

21. BloombergLaw Practice Centers

22. BloombergLaw Practice Centers – Patents

23. BloombergLaw Business Intelligence & IP Portfolio
Let’s use it
Elon Musk’s SpaceX is the leader in reusable takeoff and landing rockets. It’s tested a vertical take-off and landing of a small-scale rocket numerous times, and has begun including a vertical landing gear on its satellite launches. It has also landed a full-size rocket. But someone else has the patent on this kind of technology: Blue Origin, the space exploration company founded by Amazon CEO Jeff Bezos. While the company hasn’t developed its technology as far as SpaceX, which already is launching satellites for commercial and government clients, it has been proceeding with a contract from NASA to develop a rocket-and-spacecraft combination.
SpaceX is challenging the Blue Origin patent in court, arguing that the idea of launching a rocket and landing it vertically is an old one, with plenty of available prior art, and that the Blue Origin patent doesn’t actually lay out any unique technology that would be needed to execute this method. The reason for the filing is clear: If SpaceX succeeds in developing a vertical-landing rocket, Blue Origin could troll them with this patent, forcing litigation, settlement, or a licensing fee.
If SpaceX would be your client what your line of argument be? Same question if Blue Origin were your argument. What if both companies were developing their technology with government funding, would that change your line of argument?
a) Ways to search for patent applications;
b) Ways to assess the company’s financial ability to commercialize a patent;
c) Ways to search for technology research grants subsequently patented and argue for Bayh-Dole license to a third party;
d) Ways to search for IP law.

24. Questions?