April 2008 Edition
In This Issue:
by Molly C. Zimmermann
Welcome to the April edition of the Innovation e-Review newsletter. I write as one of two new Associate Directors of the New York State Science & Technology Law Center (“NYS STLC”) at Syracuse University College of Law (more from Hubert Yang next month). Most recently, I worked as Associate Counsel at SUNY Upstate Medical University, where I worked with the Colleges of Medicine, Graduate Studies, and Nursing and Health Professions on resident/student, research, and compliance issues; the University on human resource issues; and the hospital on medical staff issues. Before that, I spent many years working with the New York City Health and Hospitals Corporation. Throughout my career, the academic aspect of health care has always been of interest to me and now links me to the NYS STLC.
This month’s newsletter contains two feature articles. The first is by Professor Lisa A. Dolak of the Syracuse University College of Law. Professor Dolak’s article, entitled Patent Reform: A Necessary Evil?, was previously published in the February/March 2008 issue of innovation magazine. We are grateful for Professor Dolak’s insights into the Patent Reform Act’s proposed changes, including a “first inventor to file” system, new mechanisms to challenge patents, and new damages provisions, as well as the potential impact of these changes on individuals and small businesses.
The second feature article, by Philip G. Semprevio II, reviews the patent exhaustion doctrine and sets the stage for LG Electronics, Inc. v. Quanta Computer, Inc., a case currently before the U.S. Supreme Court.
We welcome your thoughts and comments. Please feel free to contact us at email@example.com. Thank you.
New York State Science & Technology Law Center
at Syracuse University College of Law
Feature Article: Patent Reform: A Necessary Evil?
by Professor Lisa A. Dolak, Syracuse University College of Law
Reprinted with permission of innovation: America's Journal of Technology Commercialization
(February / March 2008)www.innovation-america.org
The pending patent reform legislation has divided the patent community. Its avid proponents, including a number of large high-tech companies, argue that it would reduce the number of “junk” patents and give accused patent infringers a much-needed fair chance in court. Some opponents contend that the pending bills go too far in some respects and not far enough in others. Its most vocal opponents include some advocates for independent inventors, who have nothing good to say about the current legislation. More
Feature Article: The Patent Exhaustion Doctrine Under Review by the Supreme Court: LG Electronics, Inc. v. Quanta Computer, Inc.
by Philip G. Semprevio II
Over the past five years, the Supreme Court has decided eight patent cases, and it will continue to scrutinize the patent laws during its current term. The Supreme Court recently granted certiorari
in LG Electronics, Inc. v. Quanta Computer, Inc
., a case with potentially wide-ranging implications for patent licensing agreements. More
Intellectual Property News: In Re Bilski: The Federal Circuit Re-Examines Method Patents
by Blaine T. Bettinger
When the Supreme Court dismissed certiorari
in Laboratory Corp. of America Holdings v. Metabolite Labs., Inc
. 126 S. Ct. 2921 (2006), Justice Breyer (joined by Justices Stevens and Souter) noted that, although the Court of Appeals for the Federal Circuit (“Federal Circuit”) has previously held that a process involving a “useful, concrete, and tangible result” could be patentable subject matter, State Street Bank & Trust Co. v. Signature Fin. Group, Inc.
149 F.3d 1368 (Fed. Cir. 1998), the Supreme Court has “never made such a statement, and if taken literally, the statement would cover instances where this Court has held the contrary.” More
Intellectual Property News: Court Permanently Enjoins USPTO-Proposed New Rules
by Drew Berweger
On April 1, 2008, the U.S. District Court for the Eastern District of Virginia (J. Cacheris) permanently enjoined the U.S. Patent and Trademark Office (“USPTO”) from implementing its proposed new patent rules, which would have restricted the number of continuing applications (to 2) and requests for continuing examinations (to 1) and required additional documentation for applications that contained more than 5 independent claims or 25 total claims, on the grounds that the proposed rules are in excess of the USPTO’s statutory authority. More
Intellectual Property News: Patent Auctions: Another Option for Unlocking Liquidity
by Drew Berweger
For patent owners wary of making the leap from the laboratory to the marketplace, a patent auction offers another possible option for extracting value from patents and other intellectual property assets. More
Industry News: Google Stores Health Records Online: Third Parties and the Health Insurance Portability and Accountability Act
by Cristin Cavanaugh
Google, Inc. (“Google”) has announced plans to test a pilot program that will allow patients to store and retrieve their health records online. More
Grants and Funding Opportunities
by Tyler Salvesen