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Jessica Chesher

Managing Editor

Innovation eReview

December 2008 Edition

In This Issue:

Welcome Message

This month, we bid Hubert Yang, our newsletter editor, a fond good-bye as he heads to the U.S. Department of Justice.  Hubert has issued the 2008 NYS STLC newsletters with impressive form and content.  He is responsible for finalizing the revised NYS STLC website, obtaining a Google grant and implementing webcasting capability for the NYS STLC. We wish him the very best.

This month’s issue also reflects the efforts of Eric Berlin, who will be editing the newsletter in the months to come.  

The feature article, contributed by Frank Pietrantonio, Christopher Hutter, Orion Armon and Eamonn Gardner of Cooley Godward Kronish LLP, examines In re Bilski, a recent en banc decision of the U.S. Court of Appeals for the Federal Circuit on the patentability of business methods.  We are grateful for their insights and recommendations.

This edition also highlights Ecovative Design LLC, a start-up company founded by Eben Bayer and Gavin McIntyre with the aid of a grant from National Collegiate Inventors and Innovators Alliance and with the aim of creating affordable and sustainable alternatives for conventional plastics and foams.

Finally, we invite you to view the pictures and video from the Lab-to-Market Conference, Commercializing University Inventions: Case Studies, held on November 7.  As those who attended are aware, the conference examined the means by which five successful early-stage companies in New York State managed the multiple technical, market, financial, and legal challenges inherent in transforming university inventions into commercially viable products. Available here are the five presentations – Allen Barnett, Kinex Pharmaceuticals, LLC,  Patrick Govang, e2e Materials, LLC, John Hart, Lumetrics, Inc., Richard Richmond, SiMPore Inc., and Brad Treat, Mezmeriz, Inc. – as well as the keynote address, which was given by Professor Duncan Moore, Vice Provost for Entrepreneurship at the University of Rochester and renowned authority on the commercialization of new technologies.

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


Ted Hagelin

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

Molly Zimmermann

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

Feature Article: New Federal Circuit Decision Clarifies the Patentability of Process Patent Claims

by Frank Pietrantonio, Christopher Hutter, Orion Armon, Eamonn Gardner

Reprinted with permission from Cooley Godward Kronish LLP

On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued an en banc decision in In re Bilski that clarified the test for patentability under 35 U.S.C. § 101 for process patent claims. Since the mid-1990s, patent applicants have applied for, and the United States Patent and Trademark Office (“USPTO”) has granted, increasing numbers of patents directed at business methods and software processes. For example, there was nearly a ten-fold increase in the number of patents granted in Class 705, titled “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination” between 1996 and 2006. Despite the increased number of process-oriented patents that have issued from the USPTO, there has been uncertainty about the standard for patenting such claims under Section 101. The In re Bilski decision removed some of that uncertainty, while also restricting the patentability of process claims.  More....

Intellectual Property News: President Bush Signs the PRO-IP Act into Law

by Erin Lawless and Ju-Hyun Yoo

Just prior to becoming a lame duck, President Bush took one last flight over the regulatory forefront of patent law, strengthening federal efforts against counterfeiting and piracy.  On October 13, 2008, he signed the Prioritizing Resources and Organization for Intellectual Property Act ("PRO-IP Act"), formerly called the ‘Enforcement of Intellectual Property Rights Act’ (Pub. L. 110-403).  The Act reinforces U.S. intellectual property laws by consolidating federal efforts under a new White House cabinet position—a U.S. Intellectual Property Enforcement Coordinator (“IPEC”)—commonly referred to by journalists and IP law firm blogs as the “Copyright Czar”.  More...

Intellectual Property News: USPTO: The Year in Review

by Erin Lawless

On November 17th, the USPTO released its year-end report, in which the organization claims to have “met and, in some cases, exceeded its patent pendency, production, and quality targets.”  More...

Company Spotlight: Ecovative Design LLC

by Melissa Dobson

Ecovative Design LLC (“Ecovative”) is a green materials company located in Troy, NY guided by a vision of creating radically inexpensive and sustainable replacements for conventional plastics and foams, using readily available lignocellulosic feedstocks. To achieve this goal, Ecovative is commercializing a revolutionary manufacturing process that uses a growing organism to convert waste materials into a rigid biological resin. This grown resin, when combined with natural aggregates, such as agricultural waste, creates an organic replacement for Styrofoam™ in many applications.  More...

Industry News: Halliburton Attempts to Patent Business Methods After Bilski

by Erin Lawless

In early November, Halliburton filed a patent application for a business method as a defensive measure to guard against parties deciding to use the tactics described in the application.  The application seeks protection by describing a method for a non-inventor to acquire and assert a patent against a second party.  In such a case, the first party obtains an equity interest in a patent and writes a claim to cover the product involved.  The first party would then file a claim with the patent office for infringement of the claim with the intention of obtaining a monetary settlement from the second party.  More...

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