APRIL 2017

Innovation Review

Monthly information on a variety of economic, business, and technology related legal news as well as highlights and profiles of resources and events across New York state.


IP/Regulatory Law Watch

US Patent and Trademark Office logo

USPTO forms Working Group on Regulatory Reform

The United States Patent and Trademark Office (USPTO) Director Michelle Lee has formed a Working Group on Regulatory Reform. The Working Group was assembled to comply with a February executive order from President Donald Trump that called for the lowering of “regulatory burdens on the American people by implementing and enforcing regulatory reform.” The executive order calls on government agencies to create Regulatory Reform Task Forces with the goal of identifying regulations that, among other things, “eliminate jobs, or inhibit job creation; are outdated, unnecessary, or ineffective” and “impose costs that exceed benefits.”

Nicolas Oettinger, Senior Counsel for Regulatory and Legislative Affairs in the USPTO’s Office of General Counsel, will be leading the effort from the USPTO, which “has assembled a Working Group on Regulatory Reform to consider, review, and recommend ways that USPTO regulations can be improved, revised, and streamlined.” The Working Group has within 90 days of the February 24 order to provide a report that details “improving implementation of regulatory reform initiatives and policies” and identifies “regulations for repeal, replacement, or modification.”

University of California

University of California in Legal Patent Dispute with Former Student

At the end of 2016, the Regents of the University of California filed a lawsuit against Roger Jinteh Arrigo Chen, a former UCSC graduate student, to obtain patents developed by Chen that cover DNA sequencing technologies. The Regents of the University of California allege that Chen developed the patents while he studied at UCSC and was working under an agreement that stated, “I acknowledge my obligation to assign inventions and patents that I conceive or develop while employed by University…”

While at UCSC between 2005 and 2008, Chen developed innovations to characterize a nucleic acid sequence in a nucleic acid molecule. Chen later filed patents for the innovations himself and received patent grants assigned to a medical tech company he launched called Genia Technologies. Swiss drugmaker Roche eventually acquired Genia for up to $350 million and the Regents of the University of California allege that Chen’s financial gain was directly tied to the technologies developed at UCSC under their agreement. To read more about the lawsuit, click here.

United States Senate

Sens. Reintroduce Bill to Better Educate Small Businesses on Patents

Senators Gary Peters, D-Mich., and Jim Risch, R-Idaho, reintroduced bipartisan legislation to better educate small businesses on how to obtain and protect patents. Originally introduced in 2016 to the 114th Congress, the Business Innovation Protection Act will require the USPTO and the U.S. Small Business Administration (SBA) to work together to “build upon several successful intellectual property and training programs aimed at small business concerns; and increase the availability of and the participation in those programs across the United States.” This will include leveraging existing training materials as well as the development of new in-person sessions and modular training, which will include webinars. To read more about to bill, click here.

US Patent and Trademark Office logo

USPTO Will Look to Improve AIA Reviews

The USPTO is launching an initiative “to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings,” the office announced earlier this month. The initiative will analyze five years of historical data and user experiences received from businesses, startups, IP law associations, patent practitioners, and others to “ensure that the proceedings are as effective and fair as possible” under procedures established by the America Invents Act (AIA). Coke Morgan Stewart, Senior Advisor to the Director will be coordinating the effort, which will examine procedures including those relating to multiple petitions, motions to amend, claim construction, and decisions to institute.

Shubha Ghosh

Patents and Mergers

How should patents be taken into consideration in merger analysis? When do anticompetitive concerns arise when combining patent portfolios? Shubha Ghosh, the Crandall Melvin Professor of Law at the Technology Commercialization Law Program wrote about unbalanced patent position in the marketplace and when competition authorities (e.g. FTC, DOJ) should block mergers or require divestment of patent portfolios. To read more about patents and mergers, including how patents can create information problems, click here.


Around New York State


Clarkson University Opens Manufacturing Incubator

On March 29, Clarkson University held the grand opening of the Damon Hall Advanced Manufacturing Incubator, a building that will host advanced manufacturing businesses and provide them with access to state-of-the-art technology and amenities. Clarkson University President Tony Collins hopes the new building will also provide job opportunities for students in the future. LC Drives, a company that designs and manufactures electric motors for a variety of markets, is already planning to move into Damon Hall from Peyton Hall, a neighboring Clarkson University business incubator. To learn more about the new building, click here.





The PIVOTAL Tech Summit will take place on May 9, 2017 in Westbury, NY. Presented by EisnerAmper, the summit will bring together technology leaders and venture capitalists to discuss trends, innovations, investment criteria, and will give technology companies the opportunity to learn how they can obtain financing. To register and learn more about the event’s itinerary, click here.

Lab to Market logo

Upcoming Webcast: The IP of Ebola and Zika: Lessons for Future Outbreaks

On April 26 at 1:00 p.m. EST, Ana Santos Rutschman, Jaharis Faculty Fellow in Health Law and Intellectual Property, will present on The IP of Ebola and Zika: Lessons for Future Outbreaks. The back-to-back Ebola and Zika epidemics had devastating public health consequences around the world. This presentation analyzes the outbreaks from the vantage point of IP. From insufficient R&D on Ebola before the 2014-16 deadly epidemic to Senator Bernie Sanders advising President Trump to avoid a bad Zika vaccine licensing deal in early 2017—the response to the recent outbreaks has been shaped by multiple aspects of IP law and policy. The presentation uses case studies to describe different types of IP inefficiencies that affected the race to develop the first Ebola and Zika vaccines, and surveys normative and policy mechanisms to mitigate these inefficiencies in future outbreaks. To register for the webcast, click here.



Export Control Guidebook

Export Control Guidebook

An Export Control Guidebook is now available on NYS STLC’s website. Compiled to assist individuals interested in the export of their technology, the guidebook provides an overview of the system of export controls to acquaint the user with the regulatory scheme necessary to successfully export items to other countries. Topics include an overview of the general prohibitions on exports, an explanation of the inquiry to determine whether a license is required in order to export an item, and if so, how to obtain one, and other important factors to be aware of when considering the export of items. For access to the Export Control Guidebook, click here.

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