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Jessica Chesher

Managing Editor


Innovation eReview

March 2005 Edition


In This Issue:



Message from the Editors


Welcome to the second edition of the Innovation e-Review newsletter. It’s March, the month of flowing sap, returning birds, spring break and March Madness, in all its permutations on and off the basketball court. The month of March marks the important divide between winter and spring, and features balmy breezes that hint of summer and cold snow showers that can make us feel as if it’s January all over again. But it’s not, and for that, we are grateful. Here at the Innovation E-Review our March issue is busting out all over and includes an interview with Dr. Louise Hainline, Dean of Research at City University of New York and, as you will find out, an avid gardener, intrepid traveler and theater afficionado with a fabulous sense of humor. The March issue also includes a feature article on all facets of Intellectual Property, IP 101 if you will, an additional aspect to our Tech Law Digest that examines the facts of a case cast in a preventative light, sort of a what not to do when marketing your invention, a new column on growing good workplace relationships, a celebration of Women’s History Month and our usual assortment of articles, links, news features and fun stuff.

We have made these improvements and additions to keep the Innovation E-Review timely, interesting and referent to the work you do, and we hope we have succeeded in that endeavor. Take a read and let us know what you think.

Until next time, have a happy March, or, as we like to refer to it here in New York State, Mud Season.

Gene Quinn and Liz Lonergan


 
 

Feature Article - What is Intellectual Property?

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

One of the greatest challenges faced by all companies is the identification of intellectual property assets that are capable of being protected. This identification problem is not unique to start-up companies and small businesses, but it is quite common to see the problem more pronounced in these settings.  Even Fortune 100 companies have difficulties when it comes to identifying protect able assets.  The difference between the established market leader and the start-up is that corporate giants know that they are missing opportunities and periodically engage the assistance of experts to conduct training for their employees and to conduct intellectual property audits.  

The reality is that the people who are on the front lines frequently do not know what is capable of being protected.  Most front line researchers think they know what is protectable, which is where the problem come into play in its most pronounced form.  Researchers are too frequently looking past minor improvements that could be protected and only looking for the homerun invention.  To continue with the baseball metaphor, 3000 career singles gets you into the Hall of Fame in Cooperstown, but 400 plus homeruns over a career does not guarantee enshrinement in Cooperstown; a fact well known to Dave Kingman (442 career homeruns), and soon to be well known by both Fred McGriff (493 career homeruns) and Jose Canseco (462 career homeruns).  The lesson here is that building a formidable intellectual property portfolio does not require even a single blockbuster invention, although that would undeniably help.  The truth, however, is that setting out and looking for a pioneering invention will likely lead to frustration and economic failure, unless there is an attempt to identify, protect and exploit the numerous minor inventions and improvements that will be created in almost every laboratory setting.

With this in mind, we thought we would use the feature article this month as an opportunity to provide an overview of the broad intellectual property landscape in hopes of providing some basic information about the various core protections that are available.  In coming editions we will expand upon these topics to discuss various specific strategies relative to identifying, protecting and exploiting various forms of intellectual property assets.  Toward that end this article will act as a primer of sorts.




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March Means . . . National Women's History Month

by Liz Lonergan

March is the 25th anniversary of National Women’s History Month and the 85th anniversary of women in the United States winning the right to vote.  The Innovation e-Review does not want to be left off the media bandwagon with respect to the “women in science and technology issue”, but we do not write op-ed pieces and we don’t really think Mr. L. Summers is perusing our newsletter to find out what we think about women in science and technology, so we’re approaching it from another angle.  We supposed that we were a professor or CAT center director, say somewhere in New York State, who really, truly and sincerely wanted to encourage women and girls to obtain a technical education, enter a technical or scientific field and excel in that field.  How could we help that professor or CAT center director?  Does that person really need another article bashing and blaming or would they appreciate some sources and resources for making a difference in their students’ lives – today?  We decided on the resources route, so, freshly culled from Google and just in time for Women’s History Month, here they are.  

You can read all about this year’s Women’s History Month honorees, download information, take a quiz on the honorees and ponder the contributions women have made to every aspect of the world, as we know it at this site:

http://www.nwhp.org/events/events.html



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HR Feature

by Liz Lonergan

While we were throwing around ideas for this newsletter, it occurred to us that in addition to being scientists, technologists, researchers and professors, you are also managers, mentors, leaders and employees, and that a column addressing the infamous “people issues” topic might be a nice complement to legal and IP issues. Just as many of the topics in this newsletter aim to help you become a perceptive consumer of legal knowledge and advice, we hope this column will help you to become a more savvy consumer of HR knowledge, and, ultimately, a better manager and leader. As always, we welcome your input and suggestions and will be glad to write columns on topics that you suggest to us, so please, drop us an email with your ideas for the HR e-view. 

Future editions of our newsletter will cover many topics in the HR spectrum, but I thought we would start at, well, the beginning, and talk about what HR is and what it means to you, as leaders in your organization.




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Interview with Louise Hainline, Ph.D., Dean of Research and Graduate Studies

by Liz Lonergan

Dr. Louise Hainline, our interviewee this month, is the Dean of Research and Graduate Studies at City University of New York, Brooklyn College Campus. Her academic career has been focused on the study of vision in newborns.  She is also a passionate advocate of public higher education and of getting girls and women interested and engaged in science and technology.  She is affiliated with the New York Chapter of American Women in Science (AWIS), a non-profit dedicated to fostering an interest in science in girls and women.  Dr. Hainline spoke to us from her office in Brooklyn, where she is looking forward to the gardening season, and planning her next trip to an exotic port.

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

The human genome project, it’s exciting and amazing and it will fuel scientific discoveries for the next 100 years.  Now they are on to other things, like the zebra fish and mealworm.  It puts into perspective some of our cultural theories about human differences, they are there but they are in the margins genetically.  Our differences are not deep in our genomes.  The small genetic difference between chimps and us are just amazing to me, and does pose some interesting questions.



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Business Development Spotlight - Empowerment Zones

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

The Empowerment Zone program was established in the Fall of 1993 under the Federal Omnibus Budget Reconciliation Act and is considered by many to be the capstone of the Clinton Administration's community revitalization strategy. The program is designed to empower people and communities across the United States by inspiring Americans to work together to develop a strategic plan designed to create jobs and opportunities.

The first six of the current 28 Urban Empowerment Zones were designated in 1994. These first EZs were created to entice businesses back to the inner cities.  Among the first six designated urban areas was New York City.  This designation provided for EZs in both Upper Manhattan and the Bronx.  In 1998, the Initiative was expanded through a second round, incorporating an additional 15 zones, none of which were located in New York State.  The 2000 Community Renewal Tax Relief Act established a third round of Empowerment Zones, two of the locations being within New York State.  As a result of this third round both Syracuse and Yonkers were designated as EZs.




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Don't Know Much About . . . New York State

by Liz Lonergan

You don’t? Well, we’ve got just the thing to solve THAT problem. Advertisements for a lot of things come across our desk, and only occasionally will we mention them in our newsletter. One item that does rate mentioning is The Encyclopedia of New York State, published by the Syracuse University Press. This 2000 page volume is fairly bursting with 500 photographs, 120 maps, 140 tables and an index and includes interesting and sometimes offbeat blurbs on all things New York. From the I Love New York ad campaign to Lucille Ball (born in Jamestown) to Reader’s Digest (launched in Greenwich Village) to the number of bushels of apples produced in New York in 2001 (23,810,000 in round numbers), it’s a treasure trove of information for anyone who lives in, or loves, New York. 

You can look at and order this and all the other fine Syracuse University Press publications at: 

http://www.syracuseuniversitypress.syr.edu/


 
 

Technology Law Digest

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

Patent Shell Game

Unlike the other cases summarized in this section, this case is not worthy of discussion because it unveils new legal rules, nor because it embodies an excellent summary of hard to explain theories, nor because it announces a final decision in a widely followed litigation.  This case deserves our attention because of the relationship between the parties.  This case study demonstrates what can occur without proper forethought and legal counseling.  The lesson to learn here is that if you do not have an agreement in writing you do not have an agreement at all.  The subtext to this plot shows how one can be taken to the cleaners and not recognize it is happening until it is too late to do anything about it.

The pivotal moment in this patent licensing dispute between Massachusetts Eye and Ear Infirmary (MEEI) and QLT Phototherapeutics, Inc. was the filing of a continuation-in-part application, which added Dr. Julia Levy of QLT and Drs. Schmidt-Erforth and Hasan of Massachusetts General Hospital as inventors on the patent.



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Legislative & Government News


Bush Taps Hopkins Physicist to Lead NASA - Prior to taking over the space department at Johns Hopkins, Michael Griffin was president and chief operating officer of In-Q-Tel, a CIA-bankrolled venture-capital organization. Earlier in his career, Griffin worked at NASA as chief engineer and as deputy for technology at the Strategic Defense Initiative Organization. (TechNewsWorld, 3/13/05)

FTC Testifies on Data Security and Identity Theft - The Federal Trade Commission testified today before the U.S. Senate Committee on Banking, Housing, and Urban Affairs about the reach of existing federal laws that require certain information providers to safeguard sensitive information and to ensure that the information doesn’t fall into the wrong hands. The Senate Banking Committee is examining recent developments involving the security of sensitive consumer information. (FTC, 3/10/05)

Attorney General Renews Commitment to IP Task Force - Attorney General Alberto R. Gonzales today announced the continuation of the Justice Department’s Task Force on Intellectual Property and renewed the Department’s commitment to aggressively enforce intellectual property laws. The Attorney General also named Kyle Sampson, Deputy Chief of Staff and Counselor to the Attorney General, as the new Chairman of the Task Force. Federal prosecutor Arif Alikhan was named Vice Chairman and Executive Director. (DOJ, 3/9/05)




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Headlines Worth Knowing


Microsoft calls for changes to patent law - Microsoft is calling for a major reform of the world's patent laws. Brad Smith, Microsoft's General Counsel and Corporate Secretary is asking for greater harmonisation of laws between various countries. (PC Pro News, 4/2/05)

Flat screen makers face patent lawsuits - Two industrial manufacturers, Guardian Industries Corp. and Honeywell International Inc., have sued dozens of companies in the global PC and video display businesses in a U.S. federal court to try to recoup royalties on liquid-crystal technology. (CNN, 3/13/05)

Yahoo! countersued in IM patent dispute - Yahoo! has been hit with a countersuit in a dispute between the search engine and on-line gaming platform and community Xfire Inc. over alleged patent infringements relating to instant messaging. (Out-law.com, 3/11/05)




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Intellectual Property Practice Tip

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

In order to stop copyright infringement online consider obtaining a federally registered copyright and then sending a letter to the Internet Service Provider notifying them that one of their clients is infringing your copyright.  The safe harbor provisions of 17 USC 512 apply when the ISP does not know of ongoing infringement.  Once an ISP has been notified of infringement they must act expeditiously to remove, or disable access to, the infringing material or lose their safe harbor protection.

 
 

Factoid - First Design Patent Issued in 1842

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

The first design patent issued in the United States was issued on November 9, 1842, to George Bruce of New York. The USPTO searchable online database does not have a text copy of this patent available, undoubtedly because the design patent was handwritten.  It is, however, possible to obtain an image version of the first design patent by going to the Patent Search engine provided by the USPTO, searching D1 in a patent number search, and then clicking on images.  The image available purports to be the best available copy of the design patent, but it is indeed very hard to read.




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Having Fun With Patents

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

Animal Toy
US Patent No. 6,360,693
Issued March 26, 2002



Intellectual property is often described as a bundle of rights, which adequately describes the rights conveyed by any one single form of intellectual property.  Conceptually, however, one must think of intellectual property as a web, not a strand.  Not only is there significant overlap between patents, copyrights, trademarks and trade secrets, but within each piece of intellectual property there is frequently an infinite number of discrete components that can be protected.  Each individual strand of discrete protection may not be particularly strong, but when the strands are woven together to form a web the resulting protection can be incredibly formidable.

Take this patent as an example, which, for many reasons, is one of my favorite patents to discuss.  The first thing to observe here is that on March 26, 2002, the United States Patent Office issued a patent on a what can only be described as a stick.  In support of this conclusion, one need only look at the picture.  This is not a case where clever claim drafting and placement allowed a crafty patent attorney to get away with claiming something fundamental and overly broad. Rather, this is a case where the picture and everything in the application is directed to a stick and the examiner seems to have missed that fact.



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Cool Stuff on the Net

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

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.

United States Patent Office News & Notices - This page contains press releases, announcements, excerpts from the Federal Register and more.  If you hear about something happening at the Patent Office, or if there are rumored changes, this is the first place to look for information.

Computer World Headlines - If you are looking for information about the latest, breaking computer news, Computer World is the place for you. On any given day Computer World runs up to 50 original news stories.  Monday's are the big news day for Computer World, but this page archives the news stories from the preceeding week.  As far as news sources go, Computer World stories are normally quite comprehensive and reliable.

HowStuffWorks.com - HowStuffWorks is widely recognized as the leading source for clear, reliable explanations of how everything around us actually works. The site is not appropriate for researchers to use to find cutting edge information in their field of scientific endeavor.  Nevertheless, HowStuffWorks is definitely for you if you have a curious mind and want to know how things work in an area where you do not have specialized knowledge.



 
 

ASK The NYS-STLC


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.

 
 

NYS-STLC Website Update


Since our last newsletter was published we have added a number of new pages to the NYS-STLC website.  These new pages include:

Shrink Wrap Agreements
http://nys-stlc.syr.edu/lawlibrary/Contract/shrinkwrap.aspx

Types of Patents
http://nys-stlc.syr.edu/lawlibrary/patent/types.aspx

Understanding the Invention Process
http://nys-stlc.syr.edu/lawlibrary/patent/invention_process.aspx

Work for Hire
http://nys-stlc.syr.edu/lawlibrary/copyright/workforhire.aspx

Trademark Law Fundamentals
http://nys-stlc.syr.edu/lawlibrary/trademark/tm_basics.aspx

Trademark Registration
http://nys-stlc.syr.edu/lawlibrary/trademark/registration.aspx

Trade Secret – The Secrecy Requirement
http://nys-stlc.syr.edu/lawlibrary/tradesecret/secrecy.aspx

Limited Liability Companies
http://nys-stlc.syr.edu/lawlibrary/business/llc.aspx

In addition to these new pages, we continue to provide the most comprehensive Intellectual Property, Internet, Science & Technology news service available on the Web.  In addition to the automated searches that provide continuous updating, we conduct manual searches on a daily basis to ensure that the most relevant, cutting edge news and information is delivered.  Since our last newsletter published at the beginning of February, thousands of news stories have been searched and over 300 news stories were manually added to the automated results.  If you have not yet had the opportunity to check out our news section we invite you to do so by visiting:

http://nys-stlc.syr.edu/news/


 
 

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