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Jessica Chesher

Managing Editor


Innovation eReview

February 2005 Edition


In This Issue:



Inaugural Message from the NYS-STLC


Greetings and welcome to the inaugural issue of the New York State Science and Technology Law Center’s monthly electronic newsletter, NYS Innovation e-Review. As you may know, the Syracuse University College of Law is the proud recipient of a three-year grant from NYSTAR to serve as the Science and Technology Law Center (STLC) for the next three years. The role of the NYS-STLC is to provide legal education, information, research and support services for the NYSTAR-supported research centers across the state. One of the responsibilities of the NYS-STLC is to produce a monthly electronic newsletter, and this is the first edition of what we hope is an enjoyable and useful source of information.

To ensure that you, our readers, understand the mission that NYSTAR had laid out we thought we would provide you with the actual language in the NYSTAR RFP, reproduced below.

Producing and distributing a monthly electronic newsletter on relevant legal and economic development issues to update the Research Centers and interested representatives from technology transfer or sponsored research/grants offices in academic research institutions in New York State. Information to be reported in the newsletter includes, but is not limited to, new State and Federal tax incentives applicable to high-technology companies (in consultation with the New York State Department of Taxation and Finance and appropriate Federal agencies); sources of assistance to new and/or expanding high-technology businesses (in consultation with the New York State Empire Development Corporation, the Federal Small Business Administration, etc.) relevant court decisions concerning technology based legal issues such as intellectual property protection; any new State or Federal laws that may impact technology transfer or academic research; ethical issues confronting university-based high-technology research areas such as information technology, telecommunications, life sciences, agricultural sciences, nanotechnology, semi-conductors, micro electronics, photonics, imaging science and energy systems.

We will strive to provide content on a wide variety of topics that include, but are not limited to, business and technology, and we will do so in a way that is straightforward and easy to read, with links to resources so you can access additional information on any given topic.

    


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Feature Article - CREATE Act of 2004 Benefits Joint Research

by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

On December 10, 2004, the United States Congress once again updated the obviousness provisions of the U.S. Patent Act, this time with an eye toward fostering the research, development and patenting of inventions that are the fruits of joint research efforts. These new amendments to the Patent Act make narrow, but important, changes in the patent laws to ensure the public will benefit from the results of collaborative research efforts. While this new law is not limited to joint research and development efforts between and among universities and industry, the legislative history demonstrates that fostering the continued joint research efforts between universities and industry was the motivating factor that lead to this Congressional action. Indeed, Congress saw this modification of the patent laws as an important step toward furthering the goals of the Bayh-Dole Amendments to the Patent Act.

The purpose of the recent change to Patent Act, which became law with the enactment of the the Cooperative Research and Technology Enhancement Act (CREATE) of 2004, was to allow certain benefits available to both individual inventors and companies to also become available to those participants of joint research agreements.




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An Interview with Dr. Bessette

by Liz Lonergan

Each month the Innovation e-Review will conduct an interview with a newsmaker of note. Russell W. Bessette, M.D., the Executive Director ot the New York State Office of Science, Technology and Academic Research (NYSTAR), graciously accepted our invitation for an interview. Dr. Bessette spent some time answering questions posed by Liz Lonergan, Executive Director of the New York State Science & Technology Law Center. The interview covers a wide range of topics, including discussion of scientific breakthroughs, Governor Pataki’s efforts to support research and development, who Dr. Bessette thinks will win the Superbowl and what Dr. Bessette enjoys doing in his spare time.

Q&A with Dr. Bessette:

What is the most interesting scientific development you have seen in your lifetime?

The Apollo Space Program, which placed men on the moon, because it required the coordination of basic science and engineering to propel mankind to the next frontier – exploration of worlds beyond our own. 




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Business Development Spotlight - Empire Zones


Tax issues are important considerations for any business, particularly when there are tax incentives available that can work to significantly reduce the overall tax burden for businesses. With a little forethought and appropriate planning, businesses can take advantage of significant tax incentives offered in New York State. For example, the Empire Zones Program is a vital component of Governor Pataki's effort to revitalize and expand New York's economy. Empire Zones (formerly called Economic Development Zones) are geographically defined areas where businesses have access to vacant land, existing industrial and commercial infrastructure, a skilled workforce and abundant resources such as power and water supplies. The Empire Zones are particularly attractive in that they offer numerous tax incentives for qualifying businesses located within the zone.




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Don't Know Much About . . . The Nobel Prize

by Liz Lonergan

In this issue we have mentioned two Nobel laureates; Albert Einstein (“Factoids”) and William Shockley (mentioned by Dr. Bessette in his interview), which got us pondering the Nobel Prize, its laureates and the role of New Yorkers and New York institutions in those prizes. What we found out interested us, and we hope it interests you as well.

As most of you probably know, the Nobel Prize was named after Alfred Nobel, a Swedish national from an old and powerful family whose own father went bankrupt in 1833, the year Alfred was born. Young Alfred was subject to good and bad times, ended up moving to Paris to work in a laboratory and soon started his own business. After enjoying considerable success supplying the Russian Army in the Crimean War, The Nobel Company went bankrupt. While valiantly tried to keep his company afloat, in 1863 Nobel obtained his first patent on an igniter for nitroglycerine. The material proved problematic, killing his brother Emil and burning down a factory. In 1866 Nobel found an additive that made his mixture safer to use, and named that concoction “dynamite,” which he patented the following year, one of 355 patents he would be issued throughout his life.




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Technology Law Digest


Below are summaries to a selection of technology and intellectual property related decisions issued by the Federal and State courts during the month of January 2005. To read the full text of any decision simply click on the case name and a new window will appear.

Trade Secret Misappropriation 

The issue raised by this appeal is whether Natural Biologics, Inc. misappropriated a trade secret from Wyeth in violation of the Minnesota Uniform Trade Secrets Act. The United States Court of Appeals for the Eighth Circuit held: (1) Wyeth properly preserved the secrecy of the information in question such that it was indeed a trade secret; (2) the claim brought by Wyeth was not barred by the three-year statute of limitations period; and (3) the district court did not abuse its discretion by permanently enjoining Natural Biologics from using the misappropriated trade secret. This ruling is important because it demonstrates that communications with former employees can be used to prove the existence of misappropriation. For the full decision see Wyeth v. Natural Biologics, Inc. (8th Cir., January 24, 2005).




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Legislative & Government News


This section tracks government news stories from January 2005 pertaining to intellectual property and technology. 

EU Parliament Wants Software Patent Law Rewritten - A European Parliament committee late Wednesday called for the present proposal for a software patent to be scrapped, meaning the already long and drawn-out debate on the issue will be extended further. (Excite, 2/3/05)

IBM-Lenovo deal up for extended review - The U.S. government is apparently taking a closer look at the national security implications of IBM’s plan to sell its PC business to China’s Lenovo Group. (CNET, 1/28/05)

Less Funding and New Faces Singal Changes in DC - Lawmakers signaled at the close of the 108th Congress that science and technology will not be spared as they look for ways to trim spending to deal with the growing budget deficit and pay for other priorities. (Small Times, 1/26/05)




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Headlines Worth Knowing


This section compiles some of the top news stories relating to intellectual property and technology from January 2005.

Microsoft, regulators to meet over Longhorn - Microsoft is slated to meet with federal and state antitrust regulators next month to discuss possible areas of concern regarding Longhorn, Microsoft’s next version of Windows. (CNET, 1/26/05)

Canada Steps in on BlackBerry Patent Row - The Canadian creators of the BlackBerry, the wildly successful wireless e-mail device embraced by so many Americans, say they will take their patent dispute all the way to the U.S. Supreme Court, if necessary.  Coming to the aid of the company is the Canadian Department of Justice, which has already filed papers with the United States Court of Appeals for the Federal Circuit urging reconsideration.  (Yahoo, 1/26/05)

Poles hold up software patent issue - Poland has again blocked the formal approval of European Union (E.U.) legislation on software patents, throwing the issue into uncertainty once more. (IT World, 1/26/05)




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Intellectual Property Practice Tip

by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or authors of the work." 17 U. S. C. § 201(a). As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection. The Act carves out an important exception, however, for what are called "works made for hire." If the work is for hire, the employer or other person for whom the work was prepared is considered the author and owns the copyright. It is critically important to remember that just because someone commissions a work it does not necessarily follow that the commissioning party owns the underlying copyrights. In order for a work to be considered a "work for hire" the author must create the work within the scope of his or her employment or the work must be specially commissioned, it must be one of a specific number categories of work defined by 17 USC 101, and there must be an agreement in writing indicating that the work is to be considered a "work for hire." Do not assume that just because you pay someone to create something for you, you own the copyrights. To ensure you are dealing with a work that qualifies for "work for hire," you must have a written agreement. As an alternative, acquire the underlying copyrights through assignment.

For more information on this topic see Work For Hire.

 
 

Factoid - Albert Einstein was a Patent Examiner

by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

Albert Einstein worked in the Swiss Patent Office from 1902 until 1909. He was originally hired to fill a temporary position, being appointed a technical expert third class. By 1904 Einstein’s position was made permanent and he was promoted to technical expert second class. It was during his years at the Swiss Patent Office, in his spare time, that Einstein began feverishly working on a wide range of theories that had intrigued him since childhood. Einstein worked alone and without of close contact with scientific literature or colleagues. Nevertheless, in 1905 Einstein published several monumentally important papers. The first paper described the electromagnetic radiation of light, the second paper proposed what is today known as the special theory of relativity. In 1907 Einstein continued by laying the foundation for his gravitational research. By 1909 Einstein was regarded as possessing one of the top scientific minds in the world. Later that year he finally left the Swiss Patent Office.


 
 

Having Fun With Patents

by Eugene R. Quinn, Jr., Associate Director, NYS Science & Technology Law Center

Grappling dummy and production thereof [ PDF ] [ HTML ]
US Patent No. 6,139,328 - Issued October 31, 2000
This is a patent that I use when teaching patent prosecution at Syracuse University College of Law. This invention is a grappling dummy, which is useful for exercise or practice for athletes training for competitive martial art or wrestling. The patent explains that an inventive aspect of the invention is that the weight of the grappling dummy is diminutive relative to its stature. On its face it is hard to immediately reach the conclusion that this "invention" is not or should not be patentable. The claims have a large number of elements and great specificity, even in the broadest claim. Perhaps this patent illustrates that you can get a patent on virtually anything if you add enough qualifiers.



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Cool Stuff on the Net


Each month the Innovation e-Review staff will profile several websites that may be of interest to our readers.  The common thread will be websites that contain quality information likely to be useful to those interested in technology and/or intellectual property.   Each of the websites profiled will be added to our website in the Research Links section, which will help ensure that our Internet presence will continue to grow over the term of the NYSTAR grant.

Yahoo! Finance - This might not be a site that is typical thought of as having relevance for those looking for intellectual property or legal information, but for those in the technology transfer or commercialization fields this is perhaps one of the best resources on the Internet. Not only does this site contain the latest financial news, but it also contains a tremendous amount of information on the top industries and companies within each industry. You can find out who the industry leaders are, who the top performers are based upon stock performance, surf through to SEC filings and much more. If you have a technology or invention this site should be one of the first places you look when trying to research on potential licensees or joint venture partners.

About.com Inventors Page - About.com is known for being a wonderful resource for a wide range of topics.  Each About.com page has its own editor who is responsible for building content, and most pages are quite good.  About.com is not the easiest site to navigate given that it still uses frames, a relic from the past, but given the amount of quality information that is a small price to pay.  This particular page is devoted to information about and for inventors.  This page includes information and links to additional resources regarding licensing, marketing, the history of invention, famous inventors, information for beginners, lesson plans designed for children and much more. 

CNET Tech News - It can be quite difficult to find news sources that accurately and meaningfully report technology and intellectual property news.  Many news outlets simply reprint whatever Reuters or the Associated Press send around, which to the knowledgable reader frequently contains glaring mistakes or horribly ambiguities.  CNET Tech News, or News.com as it is branded, is a part of the larger CNET Network.  CNET writers are excellent and knowledgable.  They provide content for the New York Times and MSNBC, among others.  Their stories always seem to be both informative, accurate and cutting edge.  In fact, many times it seems as if CNET breaks news first.  Another excellent feature is that new stories remain active for years.  In fact, it seems that no news story ever published has been removed from their server, making it easy to link to stories and find historical news information.

 
 

Ask the NYS Science & Technology Law Center


In the coming months we hope that this will become the Question & Answer section of our newsletter. If you have general questions regarding intellectual property, licensing, contracts, legislation, business development or other related topics, let us know. Send your questions to euquinn@law.syr.edu. Questions received will be republished along with answers, but the identity of those asking the question will not be disclosed. Nevertheless, when submitting questions please be mindful that under patent and trade secret law proprietary information must be kept confidential and, therefore, should not be disclosed.


 
 

Contact Information


Innovation e-Review Staff:

Theodore M. Hagelin, Director, NYS-STLC
Eugene R. Quinn, Jr., Associate Director, NYS-STLC
Elizabeth Lonergan, Executive Director, NYS-STLC

Contact Information:

New York State Science & Technology Law Center
Syracuse University College of Law
407 McNaughton Hall
Syracuse, NY 13244
Phone: (315) 443-8943
Fax: (315) 443-8925