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Jessica Chesher

Managing Editor

Innovation eReview

May 2005 Edition

In This Issue:

Message from the Editors

A very happy May to all of you, and we thank you for taking the time to peruse our newsletter. The merry, merry month of May is a delightful time in the northeast, as we’re (pretty much) guaranteed no more snow, and summer is seemingly moments away. There are many celebrations in May, from May Day to Memorial Day; it’s a veritable month of celebrations. In between May Day and Memorial Day falls, of course, graduations at the various institutions of higher learning around our state, our country and the world. We know this is a very busy time of the year for all those who toil in academia, but we hope you will take a few moments, sit back, relax, and, in honor of Cinco de Mayo, even fix yourself a Margarita or pop open a cerveza (not at work, please) and read our newsletter. Our feature article is on “The Cost of a Patent”, the HR feature is “Writing a Job Description” and we have included our usual assortment of news, links and other stuff that we, your humble editors, believe bear inclusion in the Innovation e-Review.

Until you again hear from us in June, have fun, take good care and feel free to drop us a line on how you think we’re doing.

Gene Quinn and Liz Lonergan


Upcoming Events

Join the New York State Science and Technology Law Center with the Syracuse University College of Law and the University at Buffalo as we host a conference in Buffalo on May 16 and 17, 2005. It’s the inaugural conference of the Lab to Market Series, and is titled “Building Sound Patent Practices.” The conference will be at the Adam’s Mark Hotel in Buffalo and includes presentations by nationally known patent attorneys and professors, roundtable discussions, lunch and more, and the price is only $60.00.

The Lab to Market Series conferences are designed to create awareness and understanding of the legal issues surrounding technology commercialization and entrepreneurship by providing dynamic speakers with real world experience in the field of intellectual property. Future conferences will be held throughout New York State and will feature programs on technology transfer practices, protection and commercialization of patents, copyrights, trademarks and licensing agreements. Join us in Buffalo as we explore the topic of Building Sound Patent Practices with top intellectual property professionals. We hope to meet you there!

For more information, visit our Website at http://nys-stlc.syr.edu/events/

Register on-line at: http://labtomarket.syr.edu

Register over the phone:

Lorraine Stinebiser
Lab to Market Series
University at Buffalo
E-Mail: los@buffalo.edu
Phone: (716) 636-3651


Feature Article - The Cost of a Patent

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

Obtaining a patent is frequently seen as an essential step to commercializing any technology. Now this statement is hardly a newsflash, however, in practice it is not always so easy to decide whether obtaining a patent is the best business decision. It is easy enough to see that Xerox probably should have patented its early versions of the mouse, you know, the ubiquitous device that moves your cursor and sits on the desk of everyone who owns a computer. Hindsight is always 20/20 though. The trick is knowing when a patent should be obtained or when a trade secret is appropriate. Still further, if the election is made to obtain a patent how much should one spend on the patent? Although most would probably think a patent is a patent, that is simply not true. The more you spend on preparing and prosecuting an application the stronger the protection will be that ultimately results.

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May Means

by Liz Lonergan

May Means so many things, and, coincidently, many of them start with the letter “M;” May Day on May 1, Mother’s Day, Cinco de Mayo, and Memorial Day on Monday, May 30. Not to mention that in the circles in which we travel (that would be the academic ones), May Means graduation, from the co-eds playing Frisbee in the quad to the nail-biting stress of finals week to the full blown graduation fever that hits, well, just about now. But, the way we look at it, you’re probably up to your eyeballs in graduation fever, so we thought we’d spare you a column on graduation. Instead we opted for a look at May Day, and, yes, we do realize it has passed for this year, but we thought the history of it was so interesting that we wanted to write about it anyway.

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HR Feature

by Liz Lonergan

Welcome to the second in our ongoing saga (hey, this is turning into way more than a series) on hiring employees for your business. We know it’s May, which means madness and mayhem on college campuses, so we’ll skip the frivolity and witty repartee, we figure what with graduation speeches and all coming up you’ll be eyeball deep in frivolity and witty repartee, so we’ll just get right to job descriptions, everything you never knew that you’d be afraid to ask.

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Business Development Spotlight

Haven’t Filed an Income Tax Return? Here’s What to Do

File All Tax Returns

Taxpayers should file all tax returns that are due, regardless of whether or not full payment can be made with the return. Depending on an individual’s circumstances, a taxpayer filing late may qualify for a payment plan. All payment plans require continued compliance with all filing and payment responsibilities after the plan is approved.

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Don't Know Much About - Friday the 13th

by Liz Lonergan

Friday the 13th has become a part of our pop culture, spawning a series of movies of the same name, making Freddy Krueger a shared memory of Generation X and even leading to forgettable movies such as Saturday the 14th. Mentions of Friday the 13th have worked their way into songs, books, movies and television series. When in need of material, a sitcom can always get a laugh from the tragedy of others, and Friday the 13th is an oh-so-easy a target. So where does all this fascination come from? As with much in the entertainment realm, the intellectual property that has been created around the “Friday the 13th” industry owes itself to folk lore and legend, and maybe to some ill conceived recommendations as well."

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Tech Law Digest

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

Right of Publicity Not Preempted By Copyright Law 

June Toney’s photograph was used to advertise a hair product marketed by Johnson Products Company. Toney consented to the use of her photograph for a limited time, but when a successor company later used the photograph without her permission, Toney filed suit alleging that her right of publicity (a state law right) had been violated. The district court dismissed her claim after finding that it was preempted by federal copyright law, which means that the district court believed the state law claim of a violation of the right of publicity was the same as and, therefore, prohibited by, the Copyright Act, which prevents states from protecting copyrights. The United States Court of Appeals for the Seventh Circuit disagreed, finding that the copyright laws do not reach identity claims such as Toney’s. In determining that federal law did not preempt the state claim, the Seventh Circuit found that Toney’s identity is not fixed in a tangible medium of expression, which is a fundamental requirement for the existence of a copyright. This being the case, there was no “work of authorship” at issue in Toney’s right of publicity claim. A person’s likeness--her persona--is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change the analysis. As a result, the Seventh Circuit concluded that the rights protected by the Illinois state statute were not “equivalent” to any of the exclusive rights within the general scope of copyright rights set forth in at 17 U.S.C. 106. The Seventh Circuit went on to explain that identity is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted. For more information see Toney v. L’Oreal USA, Inc. (7th Cir. May 6, 2005)

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Intellectual Property Practice Tip

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

The key to developing a strong intellectual property portfolio is to have a game plan and to consider what it is that you want to accomplish with any property rights that are obtained. In order to develop that game plan you must begin by considering what you intend to do with the property rights once they are obtained. Many will simply seek to protect what they are doing without first considering why the rights are being sought. Others rush to the conclusion that once property rights are obtained, the competition will not infringe. Unfortunately, that is not always the case. Estimates from surveys conducted by the American Intellectual Property Lawyers Association show that the average patent infringement lawsuit costs $2,000,000 in just attorney’s fees. Finding attorneys willing to take patent infringement cases on a contingency fee basis (i.e., the attorneys get paid only in the event of a recovery) is almost impossible. Nevertheless, as has been discussed elsewhere throughout this edition of our newsletter, a patent can be a valuable asset for marketing purposes, and can scare off those who would produce knock-offs. The key, of course, is to go into the endeavor with eyes open, a thorough marketing plan and a realistic view of the future. 

If a patent is not right for you, or the funds are just not there to obtain a patent, or limited funds would make enforcement impossible, don’t forget to consider a copyright, which only costs $30, or the commissioning of an identifiable logo (trademark application) which costs approximately $375 in filing fees and obtaining a suitable domain name. While no single one of these rights can promise the exclusivity of a patent, they are cheaper and can be acquired one by one over time, thereby spreading out the investment. The important thing to remember is that intellectual property should be thought of as a web of protection, not a pinpoint right. Each strand (i.e., right) can and should overlap other strands in order to provide the greatest coverage.


Legislative & Government News

Trademark Dilution Revision Act of 2005 passes in US House - April 19, 2005, the bill passed in a vote in the House of Representatives 411 to 8.  For one perspective on this legislation see http://www.publicknowledge.org/issues/tmdilution.

Copyright Office seeks authors of ’orphan songs’ - The Copyright Office is attempting to determine what to do about so-called "orphan works", which are works where the copyright owner cannot be found, usually because the owner is out of business and there is no chain of ownership to follow.

Industry urges Congress to bolster patent review - Chip giant Intel, Segway scooter inventor Dean Kamen and a 20-person holograph- making firm from Vermont are among those lobbying Congress to change a troubled patent system they say costs the tech industry billions.

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Headlines Worth Knowing

Arena issued with obesity patent - A patent has been issued to Arena Pharmaceuticals for its small molecule treatment for obesity, which targets a specific receptor, thought to be involved in the regulation of food intake and may be useful in pharmaceutical compositions for the treatment of the condition.

Google looks to patent news ranking by quality - Web search leader Google Inc. has applied for U.S. and international patents on technology to rank stories on its news site based on the quality of the news source, according to patent applications obtained by Reuters yesterday. 

New Robot Reproduces on Its Own - Scientists at Cornell University have created a robot that can replicate itself in minutes. The team behind the machine says the experiment shows that self- reproduction is not unique to living organisms.

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Factoid - The Golf Ball

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

A search of the United States Patent Office online database shows that since 1976 there have been 2,411 U.S. patents issued with the term “golf ball” appearing in the title. The last of these, U.S. Patent No. 6,890,992, titled “Golf ball cores with improved durability”, was patented yesterday, May 10, 2005. By the time you are reading this, don’t be surprised if there are even more U.S. patents that relate to a golf ball.

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Having Fun With Patents

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

Bi-nestable margarita glass apparatus and method
US Patent No. 5,842,590 
Issued December 1, 1998


Chile rellenos and process of making the same
US Patent No. 4,208,435
Issued June 17, 1980

Folks, its Happy Hour in the in the “Having Fun With Patents” section this month, and we’ve got two-for-the-price-of-one! We don’t want you to think that certain members of the Innovation e-Review editorial board have Margaritas on the brain or anything, not at all. It’s just that there is much we can learn from these two patents, and, umm, well, did we mention that Cinco de Mayo was this month, and that Cinco de Mayo celebrations are becoming increasingly popular in the United States? Well, they are, and far be it from us to ignore that trend, so, please pass the salt.

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Cool Stuff on the Net

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

Waiting for Grokster: The Supreme Court Considers File-Sharing Copyright Infringement  - JURIST Guest Columnist Eugene Quinn of Syracuse University College of Law says that the US Supreme Court's pending decision in the Grokster case on file-sharing copyright infringement will likely involve a struggle with its landmark 1984 ruling on videotaping technology in Sony v. Universal Studios.

Astronomy Picture of the Day - Discover the cosmos! Each day NASA put up a different image or photograph of our universe is featured, along with a brief explanation of what the image depicts.

Lewis & Clark Interactive Journey - When Thomas Jefferson dispatched Lewis and Clark to find a water route across North America and explore the uncharted West, he expected they’d encounter woolly mammoths, erupting volcanoes, and a mountain of pure salt. What they found was no less surprising. See it all on NationalGeographic.com.



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.


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