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Jessica Chesher

Managing Editor

Innovation eReview

October 2008 Edition

In This Issue:

Welcome Message

Welcome to the October 2008 edition of the Innovation e-Review newsletter.

This edition’s feature article, by Professor Lisa A. Dolak of Syracuse University’s College of Law, summarizes recent judicial, legislative, and regulatory efforts to reform the patent system and outlines the potential implications of these reform-related developments for universities and businesses engaged in or planning technology commercialization transactions.

Registration is still open for Commercializing University Inventions: Case Studies, the latest conference in the NYS STLC’s Lab-To-Market series. This conference, on November 7, 2008 in Skaneateles, New York, will examine how successful early-stage companies in New York State have managed the multiple technical, market, financial, and legal challenges inherent in transforming university inventions into commercially viable products. Additional details and registration are available at labtomarket.syr.edu. There is no registration fee, but space is limited and will be filled on a first-to-register basis.

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

Feature Article: Patent Reform in the Courts, the Congress, and the Patent Office

by Professor Lisa A. Dolak, Syracuse University College of Law

“Change” is the buzzword of the current political season. But change has already come to the patent system, and the promise (or threat, depending on your perspective) of more change is in the air. Understanding the implications of recent and proposed patent reforms is essential for anyone engaged in technology development and commercialization. The significant recent developments and pending proposed patent law revisions are summarized and discussed in this report.  More....

Intellectual Property News: Top Universities for Research-Related Returns on Investment

by Erin Lawless

In a recent report, Forbes ranked universities according to their success in commercializing research. Based on data collected by the Association of University Technology Managers in its 2006 survey of 189 research universities, Forbes calculated each university’s return on its research-related investments, i.e., its research-related revenue as a percentage of research-related expenditures.  More....

Intellectual Property News: In re Swanson: Federal Circuit Clarifies the Scope of Patent Reexamination Proceedings

by Heather Giglio and Jennifer Reimers

In April 1997, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) held that it was “inappropriate for the [U.S. Patent and Trademark Office (“PTO”)] to re-evaluate previously considered questions of patentability” in patent reexamination proceedings. In re Portola Packaging, Inc., 122 F.3d 1473 (Fed. Cir. 1997). In 2002, however, Congress amended the controlling statute, which permits reexamination proceedings where there is a “substantial new question of patentability,” to clarify that the “existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the [PTO] or considered by the [PTO].” 35 U.S.C. §303.  More....

Industry News: Standardized Financing Documents for Early-Stage Startups, Courtesy of Y Combinator

by Erin Lawless

Y Combinator (“YC”), a technology venture firm that specializes in funding early-stage startups, recently “open sourced” its standardized financing documents for startups seeking angel round financing. The documents, which were previously available only to YC-funded startups, are now publicly available on YC’s websiteMore....

Industry News: New York State Researchers Examine Green Algae – Cheese Whey Combination as Possible Source of Biodiesel Fuel

by Melissa K. Dobson

Researchers at the Central New York Biotechnology Research Center (“CNY BRC”) and the State University of New York College of Environmental Science and Forestry (“SUNY ESF”) are investigating green algae as a potential source of biodiesel fuel and a possible catalyst for economic growth in upstate New York.  More....

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