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Jessica Chesher

Managing Editor

Innovation eReview

May 2008 Edition

In This Issue:

Welcome Message

by H. Hubert Yang

Welcome to the May 2008 edition of the Innovation e-Review newsletter.  By way of introduction, I recently joined the New York State Science & Technology Law Center (“NYS STLC”) at Syracuse University College of Law as one of two new Associate Directors.  Prior to the NYS STLC, I worked in the Washington, D.C., office of Wilson Sonsini Goodrich & Rosati and the Pittsburgh, Pennsylvania, office of Jones Day.  My prior practice focused on complex commercial litigation and regulatory compliance matters, with an emphasis on the representation of clients from technology and other growth industries.

This edition’s feature article, submitted by Allison Wheeler, examines the recent decision by the U.S. District Court for the Eastern District of Virginia to permanently enjoin the U.S. Patent and Trademark Office’s (“USPTO”) proposed changes to its patent examination rules and previews the grounds for the USPTO’s appeal, which is currently pending before the U.S. Court of Appeals for the Federal Circuit.

In addition, this edition highlights Blue Highway, LLC, a new technology incubator formed by Welch Allyn, Inc. in partnership with Syracuse University and New York State that seeks to leverage the collective expertise of corporate, academic, and other stakeholders to identify and cultivate innovative technologies in New York State and elsewhere.

This edition also reflects the parting contributions of Senior Editors Drew Berweger, Tyler Salvensen, and Mark Williams.  Drew, Tyler, and Mark recently graduated from Syracuse University College of Law, and we wish them well as they launch their legal careers.

We welcome your thoughts and comments.  Please feel free to contact us at nysstlc@law.syr.edu. Thank you.


H. Hubert Yang

Associate Director,
New York State Science & Technology Law Center
at Syracuse University College of Law

Feature Article: The U.S. District Court for the Eastern District of Virginia Permanently Enjoins the USPTO-Proposed New Rules: Tafas v. Dudas

by Allison M. Wheeler

On January 3, 2006, the U.S. Patent and Trademark Office (“USPTO”) proposed several changes to its patent examination rules to reduce the growing backlog of patent applications, improve the quality of patents issued, and streamline the patent examination process. 71 Fed. Reg. 48 and 61. The USPTO received over 500 comments on the proposed rule changes, and, after incorporating several of these comments, the USPTO submitted its final rule changes (“Final Rules”) on August 21, 2007. 72 Fed. Reg. 46716. The Final Rules, which were scheduled to become effective on November 1, 2007, would have restricted the number of continuation or continuation-in-part applications (to 2 as a matter of right) and requests for continuing examination (to 1) and required additional documentation for patent applications that contain more than 5 independent claims or 25 claims in total.  More....

Intellectual Property News: Senate Withdraws Vote on Patent Reform Act

by Drew Berweger

A scheduled floor vote on the Patent Reform Act of 2007 (“Reform Act”) was withdrawn from the U.S. Senate’s calendar on May 2, 2008. The Senate’s version of the Reform Act has stalled as legislators attempt to reach agreement on certain damages-related provisions.  More....

Intellectual Property News: USPTO Affirms Validity of Key Stem Cell Patents

by Heidi M. Pease

The U.S. Patent and Trademark Office (“USPTO”) has affirmed the validity of three embryonic stem cell patents held by the Wisconsin Alumni Research Foundation (“WARF”), a nonprofit patent and technology licensing affiliate of the University of Wisconsin-Madison (“UW”).  More....

Industry News: Venture Capital Funding by Students for Students

by Mark Williams

Recognizing that initial financing is often a significant barrier to commercializing university-based technologies, Stanford Student Enterprises (“SSE”), a student organization with approximately $13 million in assets, recently launched a venture fund to provide early-stage funding to student entrepreneurs at Stanford University.  More....

New York State Company Spotlight: Blue Highway, LLC

Blue Highway, LLC (“Blue Highway”) is a new technology incubator company formed in partnership with Syracuse University and New York State. Blue Highway is a wholly owned subsidiary of Welch Allyn, Inc. (“Welch Allyn”), a manufacturer of frontline medical products and solutions based in Skaneateles Falls, New York. Its primary mission is to deliver innovative intellectual capital focused on healthcare technologies to Welch Allyn and other potential partners.  More....

Grants and Funding Opportunities