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Jessica Chesher

Managing Editor

Innovation eReview

March 2013 Edition

In This Issue:

Welcome Message

Welcome to the March edition of the Innovation e-Review.

This month, on the 16th, several of the more major changes in the Leahy-Smith America Invents Act went into effect. These include making the change from “first to invent” to “first to file”, a broadening of the definition of “prior art”, and a new administrative board within the Patent Office that will have the power to invalidate patents before disputes get to court. On the 20th Governor Cuomo announced a partnership between New York State and Israel, through collaboration between the College of Nanoscale Science and Engineering (CNSE) and the Israeli Industry Center for Research and Development (MATIMOP). The goal of the partnersBrdoas7hip is to expand business, technology, and economic relations in the nanotechnology field as well as facilitating new investments and creating high-tech jobs in New York and Israel.

In Supreme Court news, the opinion for Kirtsaeng v. John Wiley & Sons, Inc. was released on March 19th. The Court reversed the prior decision and held that “first sale” doctrine, which permits resale of copyrighted goods, applied to copyrighted work that is lawfully made abroad. The Supreme Court also heard Federal Trade Commission v. Actavis, a case that pits intellectual property rights against antitrust law. At stake is the legality of brand-name drug companies paying generic-drug companies to keep generic versions off the market.

Finally, next month on April 15th, we’re hosting a conference in New York City with the New York Academy of Sciences called Building Human Capital to Drive New York’s Innovation Economy. The conference will discuss various ways to tailor graduate education to the demands of the technology commercialization marketplace and will feature leaders from both industry and academia. It’s free to attend but registration is required.

As always please feel free to send us thoughts, comments, and suggestions at nysstlc@law.syr.edu.


Industry Tools: Foreign Patent Filing

The USPTO website makes clear the limits of a U.S. patent:

“Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.” 

Devising a foreign patent strategy is an important business decision for any technology-based  business. As the economy becomes more global, inventors and companies built around inventions must carefully consider whether filing only in the United States provides adequate protection for the intellectual property that is key to the success and growth of their business.  In order to protect their investment, VC’s expect there be a plan to address how to handle international opportunities and threats to the intellectual property. It's a popular practice with the United States holding the number one spot in patent filings with the European Patent Office in 2012.

Ignoring foreign markets is less and less an option.

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Resource Spotlight: Accelerate Long Island

Accelerate Long Island

Accelerate Long Island is a regional effort by leaders at Stony Brook University, Hofstra University, Cold Spring Harbor Laboratory, Brookhaven National Laboratory, and North Shore-LIJ Health System to commercialize innovations at Long Island’s major research institutions. Collectively, the major research institutions in the area spend over $1 billion on research, the goal of the Accelerate Long Island initiative is to maximize the potential of that funding by developing a regional strategy.

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Resource Spotlight: Brookhaven National Laboratories

New York State is home to the only national laboratory in the northeast - Brookhaven National Labs. It is home to a multitude of resources and major scientific facilities available to industry, academic, and government institutions to utilize for conducting research in the physical, biomedical, and environmental sciences, as well as in energy technologies and national security. Brookhaven is able to boast 7 Nobel prizes and dozens of discoveries.

The intellectual property developed from its many research departments are available for licensing to companies technically and financially capable of turning early-stage technology into commercial products.

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Company Profile: Applied DNA Sciences

Applied DNA Sciences

What do bottles of wine, designer goods, and government instruments have in common? All have been subjected to counterfeiting. This is a problem Applied DNA Sciences, based in Stony Brook, N.Y., has developed new technology to combat. Their technology embeds botanical DNA into products for purposes of authentication. Under a certain light the DNA is detectable and it isn’t able to be copied.

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NYS Events: Building Human Capital to Drive New York's Innovation Economy


Transforming laboratory research into commercial products and services is vital to New York’s future economic growth. Transforming laboratory research involves not only scientists and engineers, but also a host of other professionals, including business managers, marketing specialists, financial analysts, intellectual property attorneys and corporate transaction lawyers. These business and law professionals provide the indispensable professional infrastructure necessary to support an innovation economy. On April 15th, the New York Academy of Sciences and the New York State Science and Technology Law Center are hosting a conference to highlight some of the efforts by academia to to provide this professional infrastructure and provide a forum for those in the industry to discuss their needs.

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IP News Watch: Technology Commercialization Legislation

A number of bills have been introduced to the New York State Legislature which support the economic development goals laid out in the New York Rising plan. The goals of emphasizing higher education centers as job generators, moving the State's investment in research from the lab to market, and tailoring curricula in higher education to train the human capital necessary to drive the innovation economy are evident. A survey of some recent legislative proposals follows:

• A technical assistance program designed to increase the number of Phase I SBIR and STTR award winners in New York State. The authorized technical assistance would be provided to SBIR/STTR grant applicants with one hundred employees or less.  (A3057-2013)
• A bill to authorize NYSTAR to establish a high-tech employment and training program. The legislative notes observe that the introduction of new technologies in business and industry is an ongoing, dynamic process which necessitates a system of training and education that is responsive to constantly changing skill requirements. In addition, an appropriately skilled workforce is necessary to ensure the creation and growth of high technology businesses in New York. (A4800-2013

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