Articles & Newsletters

Articles:

By Shubha Ghosh, Crandall Melvin Professor of Law & Director, SIPLI & TCLP

The following comments are submitted in response to the Request of the United States Patent and Trademark Office (USPTO), Department of Commerce, as published in the Federal Register Vol. 89, No. 52, Friday, March 15, 2024 (FR Docket No.: PTO–C–2024–0004), seeking comments on how the USPTO can build on current initiatives to accelerate, incentivize, and otherwise support translation of innovations to the marketplace through commercialization using intellectual property rights. 

Commenter Information 

These comments are submitted by the Institute for Intellectual Property and Social Justice (IIPSJ), a not-for-profit non-governmental organization established to promote social justice in the field of intellectual property law and practice. IIPSJ advocates implementing core social justice principles of equitable access, inclusion, and empowerment throughout the IP ecosystem. IIPSJ’s work includes scholarly examination of IP law through a social justice rationale; advocacy for social justice in the shaping and implementation of IP law and policy; initiatives to increase the diversity of the IP bar; and programs which promote greater awareness and understanding of IP protection, particularly among historically and currently disadvantaged and underserved groups. 

 Summary of IIPSJ’s Comments 

The USPTO’s current initiative is an important step in implementing the Unleashing American Innovators Act (UAIA) and other legislation which seeks to promote greater inclusivity throughout and otherwise achieve the social justice obligations and effects integral to an effective intellectual property ecosystem. A targeted and comprehensive strategy for ensuring that all Americans enjoy meaningful opportunities for access to, inclusion in, and empowerment through IP endeavor and achievement is critical to the national security, gross domestic product, and cultural and technological advancement. Accordingly, IIPSJ commends and recommends continuing several initiatives of the USPTO in response to its requests (1), (3), (4), (9), (11), (12), and (13), including: 

  • Identification of underserved groups who are potential sources for commercializing innovation, including pre-university students, students and researchers at HBCU’s, veterans, members of rural communities, members of the disabled population, senior citizens, and adult learners; 
  • Expansion of existing educational programs to disseminate awareness of intellectual property laws and the mechanics of commercialization; 
  • Realization of the potential of the Community Outreach Offices (COOs) to establish networks between overlooked and underserved innovator populations and traditional professionals (attorneys, engineers, venture capitalists, investors) to facilitate the developments and commercialization of innovation. 

IIPSJ’s General Comments 

The success of the Bayh-Dole Act stemmed from identifying inventors whose innovative accomplishments lay dormant and unavailable for the benefit of the public. By allowing inventors in universities who were denied patent rights because they had received federal government funding the legal right to obtain a patent for their innovations, the path was set for dissemination to the public through the pathways of commerce. 

The UNIA and the USPTO continue the spirit of the Bayh-Dole Act by looking beyond universities to cultivate other settings wherein innovative minds seek to benefit their fellow citizens through the pursuit of commercial pathways, paved in part by utility patents, design patents, and trademarks. As a result of various governmental, private sector, and public interest initiatives, many groups and communities with little to no understanding of IP protection are gaining IP awareness and education and are gradually joining the ranks of university professors, graduate students, and researchers in federal laboratories through recognizing the value of commercialization. Through programs designed to identify and cultivate our nation’s “Lost Einsteins”, students at the K through 12 level are being educated as to the breadth and importance of IP endeavor and receiving concomitant training in entrepreneurship and intellectual property. Veterans have been another group that the USPTO recognizes as an innovative community whose potential has yet to be guided and unleashed. The USPTO has also recognized the overlooked talent in Historically Black Colleges and Universities (HBCU’s). 

As enumerated below, these enhancements to current initiatives respond to the USPTO’s requests 1,3,4,9,11,12, and 13. 

 IIPSJ’s Responses to Specific Requests 

Community Outreach Office IP Awareness and Education 

In response to request (1) as to the biggest challenges to and opportunities for commercialization of innovation, we point to the need for education about intellectual property to various individuals and groups beyond professionals such as attorneys, venture capitalists, and university researchers. Grassroots intellectual property education brings awareness to overlooked constituencies, such as the identified K-12 students and students and researchers at HBCU’s, and also to members of rural communities, the disabled population, the senior citizen demographic, and veteran groups. This broader group of “Lost Einsteins” can enhance their socio-economic opportunities and attain personal fulfillment through tapping their potential for innovation and commercialization.

Critical and emerging technologies have often centered on pharmaceuticals and informational technologies. But the expansion of the potential beneficiaries of IP awareness and education can unleash a broader set of critical and emerging technologies as referenced in request (3). For example, the disabled population can identify ignored technological responses to the needs of disabled sub-groups, such as the visually handicapped or the mobility challenged. Similarly, the veteran population can identify innovations for delivery of medical and psychiatric services, for example through developing generative artificial intelligence technologies or through more traditional information technology tools. Overlooking these and other “Lost Einsteins” not only fails to cultivate and tap our nation’s resource of human talents but also denies communities the opportunity to meet their needs that innovation can address. Increased IP awareness and education can address these gaps through identifying overlooked critical and emerging technologies. 

To streamline and accelerate innovation, per request (4), the USPTO should recognize that IP awareness and education entails not only disseminating knowledge of the law and agency practices, but also requires enabling connections between overlooked potential innovators and professionals who can facilitate these innovators’ ideas. Such connections include bringing together members of disabled communities with engineers who can create prototypes of their ideas, attorneys who can pursue the necessary patents and trademarks, and investors who can provide capital for commercialization. Some may argue that creating these connections is not within the USPTO’s authority. But this conclusion views the USPTO’s role too narrowly. As a pragmatic matter, the Office is in the best position among existing government agencies to initiate the networking between innovators and professionals as critical parts of its awareness and education efforts. 

IIPSJ further advocates for an expansion of the USPTO’s Patents & Partnership Platform, in response to request (9). Further, the new Community Outreach Office provided for by the UAIA, in coordination with the USPTO Patent and Trademark Resource Centers and the USPTO Patent Pro Bono Program, can serve to both expand IP awareness among  our nation’s Lost Einstein cohorts (pre-college students, veterans, disabled, rural population, senior citizens, students and researchers at HBCU’s) and to connect them with traditional professionals who serve the goals of commercializing innovation. Through the COOs, the USPTO can enhance the coordination between and efficacy of these existing initiatives. 

IP Education for Adult Learners 

Adult learners, particularly students in community colleges, have yet to be fully appreciated for their potential contributions to innovation. Per request (11) and (12), we highly recommend that the USPTO develop programs, modelled on existing programs for K-12 students and veterans, to promote IP awareness and education in community colleges. Existing programs can be tailored to the specific needs of adult learners, through intensive online outreach as well as in person colloquia to identify other “Lost Einsteins” among the adult community.[1]  

Adult education programs in community colleges bridge secondary schools and the universities that are the subject of Bayh-Dole’s largesse.  In 2023, there were 4.5 million students enrolled in public 2-year postsecondary institutions and just under 178,000 students in private for-profit postsecondary institutions.  Sixty percent of students enrolled in community colleges are women, and over a million are Hispanic and over 650 thousand are African American. The pool of talent is diverse and representative of the cohort of “lost Einsteins” that the USPTO seeks to reach. As our research progresses, we would like to expand its scope to study this group of students as potential beneficiaries of intellectual property and entrepreneurship education. Preliminary discussions with policymakers focusing on adult education have proven to be promising and should prove important to expansion of the USPTO’s efforts, per requests (12) and (13)). 

Also, pursuant to requests (11), (12), and (13), including adult learners would complement existing USPTO programs. Veterans are a significant part of the community college and university population, and many have received technical training through their military service. Organizations like the Veterans Administration and the Veterans Center at Syracuse, New York, have valuable information about the veteran population and can serve as a channel for disseminating educational materials on intellectual property and entrepreneurship to this expanding population that is both diverse and a powerful resource for innovation.  Furthermore, adult learners often use the community college system as a bridge to universities, including HBCU’s, a focus for the USPTO efforts to promote innovation. By including adult learners in their purview, the USPTO will fortify its existing efforts to spread education on entrepreneurship and innovation. 

 USPTO/HBCU Partnerships 

Pursuant to requests (9), (11), and (13), specifically, we urge the USPTO to continue and to enhance its efforts to expand IP awareness and initiatives at HBCU’s. The Office’s work has been referenced at several points in these comments. We bring together these various points to emphasize the need to recognize all unrecognized groups as potential innovators. HBCU’s provide well-established and trusted venues through which to carry out the various initiatives for which we advocate. Better financial and educational support for Technology Transfer Offices at HBCU’s can serve as models for other underfinanced educational institutions. Established universities also provide a forum for outreach for IP education and awareness of commercialization, including intermural collaborations and networking with attorneys and investors instrumental to the commercialization of innovation. 

 Conclusion 

Success stories populate newspaper headlines, praising university researchers and high school students who have successfully obtained patents.  These headlines bespeak the power of programs that identify and support IP entrepreneurship education. These programs confront the fact that “A student’s opportunity is too often limited by their zip code, race, and class.”  As the researchers for the “Lost Einstein” project warned: “Innovation has slowed in the U.S., stymying economic growth. To get back on track, the U.S. needs more low-income children, women, and minorities to become inventors—but that won’t be easy.” IIPSJ commends the USPTO’s current initiatives and the present effort to implement a coordinated and expanded national IP and innovation strategy.   

[1] The North Orange County Community College District Center for Entrepreneurship in Anaheim, California offers Adult Education programming which provides a model example of Adult Learner curricular and extracurricular IP awareness and education opportunities. https://nocccd.edu/. 

Federal Circuit Overrules 42-Year Old Precedent on Nonobviousness of Design Patents
June Column
Shubha Ghosh
Crandall Melvin Professor of Law
Syracuse University College of Law

On May 21, 2024, an en banc panel of the United States Court of Appeals for the Federal Circuit overruled the 1982 precedent established by In re Rosen, 673 F.2d 388 (CCPA 1982) for determining when a design patent is nonobvious. The precedent had been affirmed in 1996 by Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996). Based on these two precedents, the Federal Circuit and lower courts had been following the Rosen-Durling test for determining nonobviousness in design patent law based on combining prior art references. The en banc panel ruled that the test for nonobviousness adopted for utility patents in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), and affirmed by KSR Int’l Co. v. Teleflex Inc., 558 U.S. 398 (2007). The 10-judge panel voted 9 to 1 to overrule the precedent. Judge Lourie agreed with the majority except for the conclusion that Rosen-Durling had to be overruled since it could fit in to the flexible approached in Graham and KSR.

At issue in this new precedent, LKQ Corp. v. GM Global, is a patent infringement dispute involving a design patent owned by GM Global. The design patent covered the front fender on an automotive body. LKQ challenged the nonobviousness of the design based on two pieces of prior art, a primary reference and a secondary reference in a proceeding before the Patent Trial and Appeal Board (PTAB). Under Rosen, the primary reference had to be “basically the same” as the patented design. Once this primary reference has been identified, the examiner looks to other references to identify differences against which the patented design would be compared for obviousness. The PTAB ruled against LKQ because it failed to produce a primary reference that was “basically the same.” LKQ argued that the Rosen-Durling test had been overruled by the Supreme Court’s 2007 decision in KSR, affirming the Graham test from 1966. The PTAB rejected this argument, the three-judge panel of the Federal Circuit affirmed, but the en banc panel accepted LKQ’s argument.

Under Graham, the nonobviousness inquiry is a three step one involving (1) identification of the relevant prior art; (2) identification of the differences between the prior art and the claimed invention; and (3) determination of whether a person of ordinary skill in the art would find the differences obvious. Secondary factors can guide the third step. Now that the Federal Circuit has ruled that Graham applies to design patents, future cases will address attendant questions, such as who the person of ordinary skill for design patents and the basic question of whether the Federal Circuit correctly extended Graham to design patents. As for the references identified by LKQ, the Federal Circuit addressed the approach under Graham for identifying prior art: (1) the first step is to identify prior art from the same field as the claimed invention and (2) the second step is to identify prior art for similar fields. The en banc panel held that the first step applied to design patents but left open the question of what it means for a design to arise from a similar field. In this case, since both references dealt with front fenders of cars, the second question was not relevant and could be addressed in future cases.

 

By Emily D’Agostino

Medical devices require maintenance and repair throughout their lifetime. Some medical devices require updates so crucial that they rise to the level of remanufacturing. This distinction is important as it will determine the regulatory burden faced by the repairing or remanufacturing entity.

The FDA Guidance on Remanufacturing of Medical Devices distilled its process into the above flowchart which can be used to determine when an activity constitutes remanufacturing. When a device is remanufactured, the remanufacturing entity is generally subject to the same regulatory requirements as the original manufacturer of the device, even when the remanufacturing entity did not itself manufacture the original device. 

 

May 2024 Monthly Column

By Shubha Ghosh, Crandall Melvin Professor of Law & Director, SIPLI & TCLP

On April 24, 2024, the FTC announced a final rule banning most noncompete agreements in employment contracts.  Here are the highlights: 

  • As of the effective date (which is 120 days after publication in the Federal Register), all noncompete agreements in employment contracts for non-senior executives are unenforceable.  
  • Noncompete agreements entered into with senior executives prior to the effective date remain enforceable. A senior executive is a worker earning more than $151,164 annually who is in a “policy-making position.” 
  • The ban would not apply to noncompete agreements that are part of a contract for the sale of a business. 

Separate opinions from the FTC commissioners will be published in a few weeks. In a document of more than 500 pages, the FTC set forth the rationales for its decision. Comments from employees subject to noncompete agreements supported the FTC decision. Service sector employees explained how such agreements prevented them from forming their own competing businesses. Physicians complained about how such agreements with hospitals blocked their forming competing practice groups. Consistent with their authority to prevent unfair means of competition, the new rule will promote competition, the Commission concludes, unleashing new start-ups, innovation through thousands of new patents, and lowering business costs such as health care.  

Legal challenges have arisen seeking to enjoin the rule from becoming effective. While the FTC lays out what its responses will be to challenges based on the Major Question Doctrine and lack of statutory authority, challengers will tug at the contours of these doctrines to have the new rule struck down. There is enough vagueness in these doctrines to garner some votes against the new rule in the current jurisprudential climate. But against these challenges, it is important to point out what claims still exist for employers seeking to enjoin departing employees.  

Misappropriation of trade secrets, theft of confidential information, contract terms such as non-solicitation agreements, and general agency principles will still persist in employers’ arsenal under this new rule. The burden may be higher for an employer seeking to block a new business from an ex-employee. But the burden should be high for interference with the bedrock principles of worker mobility and competition.  

By Emily D’Agostino

The Copyright Office has acknowledged a human authorship requirement in Chapter 300 of the Copyright Compendium. The Copyright Office will refuse to register a claim if a human being did not create the work. See also Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884).   

Since May 2023, the United States Copyright Office has registered claims of copyright in nine literary works containing AI-generated text. The majority of these works contain both human and AI-authored text, and, consistent with the human authorship requirement delineated in the Compendium, the basis of the claim of copyright in eight of these works extends to all human-authored text.   

However, one work, a novel by 60-year-old military veteran Elisa Shupe, is subject to a claim of copyright that extends only to the “selection, coordination, and arrangement of text generated by artificial intelligence.” According to a recent article, the novel, AI Machinations: Tangled Webs and Typed Words, was authored extensively by OpenAI’s large language model, ChatGPT, unlike the other eight works, which contain both human and AI-generated textual components. The U.S. Copyright initially denied Shupe’s application in October of 2023, but overturned the denial and granted registration earlier this month, backdating the registration to the initial filing date.  

Registration of a claim of copyright in an AI-generated novel raises questions about the future of the human authorship requirement. Despite the Copyright Office’s purported limitation on Shupe’s claim of copyright to the selection and arrangement of AI-generated text, traditional copyright protection similarly extends only to an author’s selection and arrangement of words, sentences, and paragraphs. 

 

Apr. 2024 Monthly Column

By Shubha Ghosh, Crandall Melvin Professor of Law & Director, SIPLI & TCLP

On March 21, the Department of Justice filed an antitrust complaint against Apple. The DoJ press release and the complaint can be accessed here. My analysis follows.

The Department of Justice’s antitrust claims against Apple are of two types. One is a challenge to Apple’s contractual practices. The second is a challenge to how Apple has designed the smartphone in order to block competition.

According to the complaint, Apple has used contractual restrictions that make it difficult for app developers to create and distribute new applications through Apple’s platform. These allegations parallel claims made by game developers, such as Epic Games, in its private antitrust claims against Apple. As a side note, although Epic’s suit against Apple has not been successful, Epic did prevail in a jury trial on similar claims against Google. Now the federal government has challenged Apple’s contractual practices against app developers. Epic Games’ failure against Apple perhaps was the result of one judge finding that Apple lacked market power, a necessary requirement for a successful monopolization claim. The DoJ may fare better, especially with the successful challenge to Microsoft’s licensing practices in the 1990’s. As a general matter, federal antitrust law is more successful with claims involving anticompetitive contractual practices as federal courts are more comfortable in addressing problems with contractual terms and practices.

Courts are less comfortable in addressing antitrust claims that would require examining and potentially ordering redesign of technology. The DoJ’s second set of claims are aimed at how Apple has designed aspects of the software underling the iPhone as well as “other critical access points in the smartphone ecosystem.” This daunting phrase suggests the technological minefield that antitrust courts may be hesitant to cross. A “smartphone ecosystem” represents engineering choices of technologists to whom judges would wisely defer. This deference is consistent with the court’s decision to review Microsoft’s software design of its operating system under a lower standard to avoid the question of whether the software design was forcing the use of Internet Explorer over competing browsers.

Will the DoJ’s case be a blockbuster case like its case against Microsoft in the 1990’s? It is still too early to tell but all signs point to a replay of how courts handle issues of contract and software design in high tech markets.

 

By: Beatrice Nkansah

Xtandi is an androgen receptor inhibitor generally used for a treatment of prostate cancer. Developed at UCLA, it was approved by the FDA in 2012 and then re-approved in 2023 for treatment of an additional class of patients.  In attempts to lower the price and increase access to this drug, patients Robert Sachs and Clare Love petitioned to the Health and Human Services (HHS), requesting the exercise of “march-in authority” be used lower the price of Xtandi under the Bayh-Dole Act.  

The Bayh-Dole Act was enacted in 1980 to promote the availability of federally funded inventions for commercialization. The Act assigned intellectual property rights to the research entity receiving the funding rather that the federal government retaining the rights. This incentivizes the recipient of the funding to license out inventions as a means of realizing income and contributing to the public good.  

The Act carves out one exception to all rights being with the research entity. The federal government agency that funded the research retains “march-in rights” that allow the agency to exercise its march-in rights to the invention if four statutory conditions apply. If these rights are exercised, the university would be required to license the patent to third parties. This approach has long been opposed by the pharmaceutical industry contending exercising march in rights to reduce prices would discourage companies from undertaking research and development efforts in the future.  

The NIH rejected the petition, finding Xtandi to be “widely available to the public on the market”. Additionally, the NIH stated that they did not think “march-in authority” would be effective in lowering the price of the drug.  

Sachs and Love appealed the decision, and the HHS affirmed the NIH’s conclusion. Though not explicitly citing to the Xtandi decision of last year, the Federal Trade Commission (FTC) filed comments supporting the expansion to expand the criteria for “march-in authority/rights”. The FTC reasoned that there should be a more flexible approach for relying on “march-in authority” through the Bayh-Dole Act and that “agencies should be wary of imposing categorical limitations on the factors that can be considered for march in, such as price”.  

 

By: Emily D’Agostino

A blockchain is a public, digitized ledger used to store data.[1] Blockchain technologies are used in a variety of settings such as to track asset ownership and document transactions.[2] Blockchain systems are often incorporated within broader processes or comprise one component of an invention or technology.[3] Unlike traditional databases, blockchain systems are decentralized, which makes data storage more secure and easily verifiable.[4] Accordingly, technologies utilizing blockchain have become increasingly valuable. However, innovators seeking patent protection for their blockchain technologies have faced challenges, particularly under the §101 subject matter requirement.[5]

The Patent Act, defines a patentable invention as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”[6] The Supreme Court has interpreted this provision to exclude abstract ideas.[7] In Alice Corporation Pty. Ltd. v. CLS Bank International, the Supreme Court developed an inquiry now known as the “Alice “ test, which is used to determine whether a claimed invention constitutes an abstract idea.[8] The Alice test ultimately looks to determine whether a claimed invention that covers an abstract idea demonstrates sufficient ingenuity, surpassing mere application of the abstract idea.[9]

A recent holding in the Southern District of New York applied the Alice test to dismiss a claim of infringement of a patent claiming a blockchain technology that utilized 3D spectral analysis to digitally map gemstones and store that information using blockchain technology.[10] The Court emphasized that the plaintiff’s patent “is not improving the functionality of storing and processing data on a blockchain.”[11] The Court also acknowledged that “a blockchain is merely a ledger maintained and verified through a peer-to-peer network, and Plaintiff does not describe how the patent improves blockchains.”[12]

The ruling is currently on appeal, but, if upheld, even novel applications of blockchain technology may be unpatentable where those applications do not change or improve the blockchain process itself.[13]

[1] https://www.forbes.com/advisor/investing/cryptocurrency/what-is-blockchain/

[2] Id.

[3] Id.

[4] Id.

[5] https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2017-18/march-april/patentability-blockchain-technology-future-innovation/

[6] 35 U.S.C § 101.

[7] Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).

[8] Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).

[9] Id.

[10] Rady v. Boston Consulting Group, LLC, No. 1:20-CV-02285 (ALC), 2022 WL 976877, at *1-2 (S.D.N.Y. Mar. 31, 2022).

 

[11] Id. at *3.

[12] Id.

[13] Id.

 

Mar. 2024 Monthly Column

By Shubha Ghosh, Crandall Melvin Professor of Law & Director, SIPLI & TCLP

A civil judgment of an Internet Court in Guangzhou has received global attention reaching beyond the borders of China’s fifth most populous city. At issue were images generated by Tab, an image generating website, propagated by a company, whose name is anonymized in the court’s opinion. A copyright licensing association in Shanghai brought a copyright suit based on allegedly infringing images of the animated character Ultraman generated by Tab. For those unfamiliar with Ultraman, the opinion contains images of copyrighted Ultraman as well as AI generated images found infringing by the court. A bilingual version of the opinion (in Mandarin and English) is also available (complete with legal analysis and pictures).

The court found the images infringing the reproduction and adaptation rights. While the court awarded compensatory damages to the licensing company, it also ordered the company to introduce filters to block the use of Ultraman images to produce infringing works. However, the court declined the removal of copyrighted Ultraman images from the test data used by Tab. Filtering as a remedy raises challenging questions of what technological requirements a court can impose on a company in a copyright suit. Courts in the United States have grappled with the use of filters by companies like YouTube.  The challenging question is how much filtering is required and what triggers a duty to filter. The Guangzhou acknowledges these issues and signals the ongoing litigation they invite.

Ultraman, known for defeating demons threatening innocent populations, is now at the heart of the legal debates over AI. The superhero has earned an initial victory but has also unleashed more potential villains for copyright law to confront. Perhaps one hint of where the disputes will trend is provided by the Guangzhou’s pronouncements about AI:

this court emphasizes that AI is a strategic technology that will lead to future advancement. It is the core driving force for a new round of scientific and technological revolution and industrial transformation, and it is considered to be the main force in generating new quality productive forces. Our nation has undergone rapid development in AI technology. Data and computational resources have become increasingly rich, and new technological developments have become widely applicable. This has set a solid foundation for broadening the scope of AI scenarios. Since the generative AI industry is still at its early stage of development, it is unwise to overburden service providers with duties. In the process of rapid technological development, service providers should actively take reasonable, affordable precautions, thereby promoting the Chinese-style AI regulatory system that is safe and developing, balanced and inclusive, and innovative and protective.

Such an approach to innovation may bear truth for global intellectual property standards.

 

Feb. 2024 Monthly Column

By Professor Shubha Ghosh, Crandall Melvin Professor of Law, Director, Syracuse Intellectual Property Law Institute, & Technology Commercialization Law Program

On February 12, 2024, the Northern District of California dismissed some of the six claims raised by screenwriter Paul Tremblay and his three co-plaintiffs (Sarah Silverman, Christopher Golden, and Richard Kadrey) against OpenAI. The district court dismissed the claims of negligence for failure to show a duty owed to the copyright owners and of unjust enrichment for failure to show fraud, mistake, or coercion. Also dismissed, but with leave to amend, were claims for direct and vicarious copyright infringement (under the Copyright Act) and for removal for copyright management information (under the Digital Millenium Copyright Act). The district court did not dismiss the claim for unfair competition. Most interesting is the court’s ruling that the plaintiffs did not state a claim that the use of the copyrighted works as training data for the large language model was the creation of an unlawful derivative work.  This first salvo in the legal contests over the use of large language models shows how copyright claims against artificial intelligence may not be successful. But unfair competition may have some teeth.

 

Jan. 2024 Monthly Column

By Shubha Ghosh

One up, one down for Epic in its battle to gain ground on Apple and Google distribution platforms for game developers. Over two years after negative ruling in a non-jury trial against Apple, Epic gets a jury victory against Google this week. The presence of a jury might have had a difference for Epic but its underlying cause against Google was arguably stronger with details about how Google arranged its payment deals with developers to reduce competition and tied its game development platform to its payment system. In the earlier Apple trial, Judge Gonzalez Rogers, a federal judge in California, ruled that Apple did not have market power, a ruling that undercut most of Epic’s claims. By contrast, the jury did find Google to be a monopolist and its contracts with developments hindered game development by thwarting competition from a new developers like Epic. Where the two trials covered was on the treatment of Apple and Google’s payment systems. Both were found to be hindering competition with Judge Gonzales Rogers ordering Apple to offer alternatives to its Apple Pay payment platform. The jury found Google to have linked its payment and development platforms in a way that harmed competition. What is yet to be seen is how Judge Donato, presiding in the Google trial, will order the search company to remedy the harms to competition. Will he order Google to pay Epic money, or will there be an order to revamp its development platform? That is an open question, which we will get an answer to in the next year. At that point, the big question will be whether Google will pursue an appeal and whether the United States Supreme Court will eventually weigh in. The next level awaits!

 

Jan. 2024 Monthly Column

By Shubha Ghosh

As many predicted, OpenAI’s response to the New York Times (NYT) copyright complaint about the uses of generative AI using ChatGPT raised the defense of fair use. To win on this defense, OpenAI will have to offer several details about the purposes of generative AI and its impact on the market for NYT’s copyrights. Those details might require a trial but would certainly require a more expansive factual record to be successful. Since much of the NYT’s copyrighted content involves news, or fact-based rather than imaginative or creative works (like novels or memoirs), OpenAI’s fair use defense may be easier to mount. Fair use may be more pertinent for the NYT’s case than for other pending copyright complaints, such as the one brought by Sarah Silverman for the copying of her fictional works. Furthermore, fair use would be irrelevant for the pending consumer class action cases raising claims about improper use of private data by OpenAI. Read the NYT complaint filed in the U.S. District Court here. The Sarah Silverman complaint against Meta here, and against OpenAI here.

 

 Dec. 2023 Monthly Column

By Shubha Ghosh

Crandall Melvin Professor of Law | Director, Technology Commercialization Law Program & Syracuse Intellectual Property Law Institute 

   On December 6, 2023, the United States Court of Appeals for the Ninth Circuit heard oral arguments in Federal Trade Commission v. Microsoft. The Court of Appeals was asked to review the denial of a preliminary injunction to prevent Microsoft’s acquisition of Activision. This acquisition is allegedly anticompetitive in the streaming, subscription, and console markets for gaming. One concern is the potential for Microsoft to limit access to Call of Duty if the acquisition is permitted. 

     The FTC has a difficult case to make for undoing the Microsoft-Activision merger, completed this year. Not only has the European authority approved it, but the FTC’s case rests on past conduct; Microsoft denied access to ZeniMax – the parent company of Bethesda – games after merging with it in 2021. However, Microsoft has expanded access to Minecraft after it acquired Xbox, suggesting the software company might do the same with Call of Duty, Activision’s hit game. 

       The core of the argument had to do with the legal standard for undoing a merger either by showing either that it would foreclose rivals or that it would provide incentive and the ability to harm competition. 

     The FTC argued that, given Microsoft’s dominance in many tiers of the subscription market, it clearly could harm competition. This approach, which one of the judges called “absolutist,” contrasted with Microsoft’s argument that evidence-based projections showed that competition would benefit, especially in the form of increased access to gaming for consumers. The FTC pointed out that benefits to consumers do not necessarily mean there will be no harm to competition, as existing companies like Sony or smaller startups may find it difficult to compete with a giant like Microsoft. There was also debate over the console and cloud markets, where the competitive harm from the merger seemed less likely. 

     This case appears to be an unlikely win for the FTC, but it rouses lots of excitement in the gaming industry. 

 

Dec. 2023

By Madeline Messa

This article provides information on the meaning, use, and importance of CPT codes in commercialization and regulatory compliance.  

What are CPT codes, and how do they work? 

CPT stands for Current Procedural Terminology. CPT coding is a system used to keep track of and bill for medical procedures, services, devices, and drugs by assigning a number to each one of them.  

The American Medical Association (AMA) manages the system.  

CPT codes provide a uniform system across insurers, enabling them to identify and pay for the use or prescription of CPT-coded items. These codes are essential to physicians, hospitals, and other health care providers billing for and receiving payment for services provided.

Without the ability to charge for use of new devices, medical device companies would be hard-pressed to convince hospitals, physicians’ offices, or patients to utilize or purchase them.  

How are CPT codes changed? 

As health care evolves, the AMA is responsible for developing new CPT codes or revising the existing codes, and the Journal of AHIMA publishes annual updates on code additions and revisions.  

The AMA appoints a CPT Editorial Panel, which is responsible for maintaining the CPT code set. The AMA Board of Trustees authorizes the panel to revise, update, or modify CPT codes, descriptors, rules and guidelines.  

The panel is composed of 17 members, including eleven physicians who are nominated by the national medical specialty societies and approved by the AMA Board of Trustees. One of the eleven spaces is reserved for expertise in performance measurement. One physician is nominated from each of the various insurance companies and CMS.  

There are specific procedures for changing CPT codes, as well as criteria for each code category. They regulate requests for revising, adding, and deleting codes.  

Medical specialty societies, individual physicians, hospitals, third-party payers, and other interested parties may submit an application for changes to CPT codes for consideration by the editorial panel. 

The AMA’s CPT staff reviews all requests to modify CPT codes, including applications for new codes. If AMA staff determines that the panel has already addressed the question, staff informs the requestor of the panel’s coding recommendation. However, if staff determines that the request presents a new issue or significant new information on an item that the panel reviewed previously, the application is referred to members of the CPT Advisory Committee for evaluation and commentary. 

How does a new CPT code get implemented?  

Once it becomes clear that an invention shows potential to safely and efficaciously render a diagnosis, treatment, service, or surgical intervention, a campaign begins to have the AMA adopt its use and provide a code for payment. The appropriate AMA CPT Editorial Panel responsible for maintaining the CPT code set receives petitions for consideration.  

Other regulatory compliance issues for medical device commercialization:  

CPT codes are one of a number of regulatory compliance issue for a medical device startup to consider. Other regulatory compliance issues include:   

Newsletters:

News From the Innovation Law Center

Innovation Law Center

The ILC is the designated NYS Science & Technology Law Center. It is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty. If you are interested in having the ILC complete research, please submit a request here. 

Back to Class:

Fall 2024 classes have kicked off at the Syracuse University College of Law, welcoming a new cohort of law students into the Innovation Law Center (ILC). These students will explore intellectual property, marketing, and regulatory issues related to innovative technologies. Their research will be conducted as a part of the LAW 815 Innovation Law Practicum course, as well as NYSTAR- funded independent student research.

IP / Regulatory Law Watch

Court Rules That Scraping of Public Data by Competitor Constitutes Trade Secret Misappropriation

In a significant ruling, the Eleventh Circuit addressed the contentious issue of trade secret misappropriation in the case of Compulife Software, Inc. v. Newman. The court affirmed that while individual quotes from Compulife’s publicly accessible website are not trade secrets, the extensive scraping of their database by competitors constituted misappropriation. This decision highlights the legal complexities surrounding web scraping practices, emphasizing that the sheer volume of data acquired can transform what is publicly available into a protectable trade secret. As the landscape of data scraping continues to evolve, this ruling serves as a crucial reminder for businesses about the potential legal implications of their data acquisition methods. Read on here for a detailed analysis of the case and its implications for the future of web scraping.

Final Director Review Rules

The story found here details the final rule package issued by the USPTO to implement the Director Review process in AIA trial proceedings. The final rules expand Director Review to include derivation proceedings and decisions beyond just institution and Final Written Decisions, such as termination decisions. The rules also allow the Director to initiate reviews, outline the request process, clarify the impact on ongoing proceedings, specify appeal timelines to the U.S. Court of Appeals for the Federal Circuit, and permit delegation of review authority.

Around NY State

Nearly $30M in federal funds allocated for high-tech R&D efforts in upstate NY 

The Department of Defense has awarded over $27 million to the Northeast Regional Defense Technology Hub (NORDTECH) in New York to advance semiconductor research, development, and workforce training at local universities. This funding, part of the $2 billion CHIPS for America Defense Fund, supports four projects focused on quantum technologies. One project led by the Rochester Institute of Technology will receive nearly $4 million for a Heterogeneous Quantum Networking initiative, while another, involving RIT and Toptica Photonics Inc., will get $8.6 million to develop a 300mm foundry fabrication platform. Read more about the grant here.

Upcoming Events

Intellectual property basics and helpful resources

  • What: An opportunity to learn from the USPTO’s experts about the basics of intellectual property.
  • Where: Virtual
  • When: October 3, 2024, 12pm-1:30pm

Name Image and Likeness for Student Athletes

  • What: An overview of how to offer your name, image, or likeness as a product for profit.
  • Where: Virtual
  • When: October 10, 2024 9:30am- 5pm PT

The Path to a Patent, Part II: Drafting provisional patent applications

  • What: UPSTO experts discuss key differences between non-provisional and provisional patent applications, filing requirements and fees and the different ways to file a patent application.
  • Where: Virtual
  • When: October 10, 2024, 2pm- 3:30pm

New York State Innovation Summit

  • What: A showcase of NYS companies and researchers at the forefront of emerging technologies and new advancements in production capabilities.
  • Where: The Oncenter 800 S State St, Syracuse, NY 13202
  • When: October 28-29, 2024

GENIUS NY Pitch Finals

  • What: Five new startups that have developed drone related technologies will be pitching their technologies for a $1,000,000 grand prize.
  • Where: Marriot Syracuse Downtown 100 East Onondaga street Syracuse, NY 13202
  • When: October 28, 2024

Grow-NY Networking Night

  • What: Networking event with various incubators, economic development programs, and the Grow-NY team.
  • Where: Salt City Coffee and Bar, Syracuse
  • When: October 15, 2024

LifeSciencesNY Annual Conference – Together ’24

  • What: Networking event with the audience of businesses, academic, and government leaders.
  • Where: Harro East Ballroom, Rochester
  • When: November 13th & 14th

Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter. 

Funding Opportunities

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has several funding resources for inventors and entrepreneurs. Check out the links below for more information:

Questions or Suggestions: Contact Innovation Review Editor Patrick Cramer at nysstlc@syr.edu

 

News From the Innovation Law Center

Innovation Law Center

The ILC is the designated NYS Science & Technology Law Center. It is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty. If you are interested in having the ILC complete research, please submit a request here.

IP / Regulatory Law Watch

Comprehensive Federal Consumer Privacy Bill Moves Forward 

Congress once again moves closer to imposing a federal standard for consumer data privacy. The American Privacy Rights Act (APRA) would eliminate the current patchwork system of state-by-state data privacy legislation. The bill focuses on data minimization, transparency, and consumer control. Read more about what obligations the APRA imposes on covered entities here. 

Should March in Rights Be Expanded?  

The National Institute of Standards and Technology (NIST) has proposed exposed march-in rights in order to lower the price for products built on patented technologies. See https://www.nist.gov/news-events/news/2023/12/nist-releases-public-comment-draft-guidance-march-rights. More information can be found here.

Professor Ghosh, Crandall Melvin Professor of Law and Director of Technology Commercialization Law Program and Syracuse Intellectual Property Law Institute, was invited to participate in a panel evaluating this proposal.  The panel with Professor Ghosh’s comments can be found here.

Ag Innovation Challenge Extends Application Deadline

The American Farm Bureau Federation (AFBF) has extended the deadline to apply online for the 2025 Farm Bureau Ag Innovation Challenge. In its 11th year, this national competition showcases U.S. startup companies developing innovative solutions to challenges faced by America’s farmers, ranchers and rural communities. Past winners include Barn Owl Precision, an autonomous micro-tractor company, and Harvust, a farm HR software company. Read more about the Ag Innovation Challenge here.

Federal Circuit Overrules 42-Year Old Precedent on Nonobviousness of Design Patent

On May 21, 2024, an en banc panel of the United States Court of Appeals for the Federal Circuit overruled the 1982 precedent established by In re Rosen, 673 F.2d 388 (CCPA 1982) for determining when a design patent is nonobvious. The precedent had been affirmed in 1996 by Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996). Based on these two precedents, the Federal Circuit and lower courts had been following the Rosen-Durling test for determining nonobviousness in design patent law based on combining prior art references. The en banc panel ruled that the test for nonobviousness adopted for utility patents in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), and affirmed by KSR Int’l Co. v. Teleflex Inc., 558 U.S. 398 (2007). The 10-judge panel voted 9 to 1 to overrule the precedent. Judge Lourie agreed with the majority except for the conclusion that Rosen-Durling had to be overruled since it could fit into the flexible approach in Graham and KSR.

At issue in this new precedent, LKQ Corp. v. GM Global, is a patent infringement dispute involving a design patent owned by GM Global. The design patent covered the front fender on an automotive body. LKQ challenged the nonobviousness of the design based on two pieces of prior art, a primary reference and a secondary reference in a proceeding before the Patent Trial and Appeal Board (PTAB). Under Rosen, the primary reference had to be “basically the same” as the patented design. Once this primary reference has been identified, the examiner looks to other references to identify differences against which the patented design would be compared for obviousness. The PTAB ruled against LKQ because it failed to produce a primary reference that was “basically the same.” LKQ argued that the Rosen-Durling test had been overruled by the Supreme Court’s 2007 decision in KSR, affirming the Graham test from 1966. The PTAB rejected this argument, the three-judge panel of the Federal Circuit affirmed, but the en banc panel accepted LKQ’s argument.

Under Graham, the nonobviousness inquiry is a three-step one involving (1) identification of the relevant prior art; (2) identification of the differences between the prior art and the claimed invention; and (3) determination of whether a person of ordinary skill in the art would find the differences obvious. Secondary factors can guide the third step. Now that the Federal Circuit has ruled that Graham applies to design patents, future cases will address attendant questions, such as who the person of ordinary skill for design patents and the basic question of whether the Federal Circuit correctly extended Graham to design patents. As for the references identified by LKQ, the Federal Circuit addressed the approach under Graham for identifying prior art: (1) the first step is to identify prior art from the same field as the claimed invention and (2) the second step is to identify prior art for similar fields. The en banc panel held that the first step applied to design patents but left open the question of what it means for a design to arise from a similar field. In this case, since both references dealt with the front fenders of cars, the second question was not relevant and could be addressed in future cases. More information can be found here.

Around NY State

New York Power Authority Pilots Electric Grid Research Lab 

The New York Power Authority has developed an advanced laboratory facility that will test, model, and create new energy system solutions. The Advanced Grid Innovation Laboratory for Energy (AGILe) will bring New York to the forefront of electric grid research. The first-of-its-kind electric grid and power systems laboratory is based at NY CREATES’ Albany NanoTech Complex. Some of AGILe’s capabilities will include testing the impact of cyber incidents on the electric grid and developing and testing new sensor technologies. Read more about AGILe here.

Two Summer Programming Series Target Small Businesses and Minority- and Women-Owned Businesses Across NY

The New York State Department of Labor and Empire State Development have partnered to bring support, resources, and programming to small businesses across the state. The 2024 Small Business Summer Series will consist of informational events and workshops across nine communities with a focus on connecting small business owners with free resources and services. Similarly, the 2024 Regional Minority- and Women-Owned Business Expo Series will host two events aiming to expand opportunities for MWBEs.

Upcoming Events

USPTO’s Stakeholder Application Readiness Training

  • What: Three-day USPTO workshop for independent inventors and entrepreneurs teaching the fundamentals of the patent application process. Topics include prior art searching, formality requirements, and claim drafting. Complete the interest form here.
  • Where: Virtual
  • When: June 25-27, 2024, 9:00 a.m.-4:00 p.m. EST

Successful Inventing: License or manufacture

  • What: Part three of the USPTO’s biweekly Successful Inventing series focuses on the questions that arise when deciding whether to license or manufacture a technology. Register here.
  • Where: Virtual
  • When: July 10, 2024, 2:00 p.m.– 3:30 p.m. EST

NYS Interagency Small Business Summer Series: Binghamton

  • What: Representatives from NYS agencies including: the Department of State, the Department of Taxation and Finance, and the NYS Insurance Fund provide information on licensing, regulations, taxes, grants, training, and more. Register here.
  • Where: SUNY Broome Community College
    907 Front Street, Binghamton, NY, 13905
  • When: Thursday, June 27, 8:00 a.m. – 10:00 a.m.

NYS Interagency Small Business Summer Series: Syracuse 

  • What: Representatives from NYS agencies including: the Department of State, the Department of Taxation and Finance, and the NYS Insurance Fund provide information on licensing, regulations, taxes, grants, training, and more. Register here.
  • Where: Onondaga Community College
    4585 W. Seneca Turnpike, Syracuse, NY 13215
  • When: Thursday, July 25, 3:00 p.m. – 5:00 p.m.Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter.

Funding Opportunities

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has several funding resources for inventors and entrepreneurs. Check out the links below for more information:

Questions or Suggestions: Contact Innovation Review Editor Emily D’Agostino at nysstlc@syr.edu

 

News From the Innovation Law Center

The Innovation Law Center’s Summer Program Kicks Off 

This month the ILC kicked off its annual summer research session. Each summer the ILC assembles a team of Syracuse University College of Law students along with Whitman School of Management students to collaborate with inventors and entrepreneurs across industries. Over the summer the students will conduct technology commercialization research including intellectual property protection, marketability, regulatory compliance, and freedom to operate. The projects range from therapeutic devices to uncrewed aerial systems.

Innovation Law Center

The ILC is the designated NYS Science & Technology Law Center. It is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty. If you are interested in having the ILC complete research, please submit a request here.

IP / Regulatory Law Watch

FTC in a 3-2 Vote Approves New Rule Banning Most Noncompete Agreements 

On April 24, 2024, the FTC announced a final rule banning most noncompete agreements in employment contracts.  Highlights include: noncompete agreements in employment contracts for non-senior executives will be unenforceable as of the effective date, and the ban does not apply to noncompete agreements that are part of a contract for the sale of a business. Read more from Professor Shubha Ghosh here.

SU Professor Ghosh Responds to USPTO Request for Comments on Unlocking the Full Potential of IP  

Recognizing the importance of American innovation in maintaining a strong economy, the USPTO requested input from the public on how the agency can build on current initiatives to advance the USPTO’s commitment to supporting successful technology commercialization. Professor Ghosh’s comments made on behalf of the Institute for Intellectual Property and Social Justice can be read here.

FDA Issues Final Guidance on Device Remanufacturing

Medical devices require maintenance and repair throughout their lifetime. Some medical devices require updates so crucial that they rise to the level of remanufacturing. This distinction is important as it will determine the regulatory burden faced by the repairing or remanufacturing entity.

The recently issued FDA Guidance on Remanufacturing of Medical Devices distilled its process into a flowchart to determine when an activity constitutes remanufacturing, and the accompanying regulatory requirements.

Proposed Change to Terminal Disclaimer Rule Allow Challengers to Kill 2(+) Patents with 1 Stone  

Non-statutory double patenting, or obviousness-type double patenting (ODP), occurs when an inventor attempts to patent an obvious variation on an earlier patent to extend the term of protection over the initial invention. Courts have found that this practice of allowing an improper timewise extension of the right to exclude granted by a patent violates public policy.

Nevertheless, this practice has been allowed to continue, and patent seekers are able to avoid ODP rejections through the use of a terminal disclaimer. Terminal disclaimers avoid the harmful effects of ODP by disclaiming the patent term of the variation to the extent that it exceeds the term of the earlier patent.

On May 10th, the USPTO published a notice of proposed rulemaking, announcing the addition of a new requirement to the terminal disclaimer rule. This new rule would require that terminal disclaimers contain an agreement rendering the second patent, or continuation, unenforceable if any claim of any related patent is invalidated by prior art.

This new rule would allow challengers to potentially invalidate multiple patents by successfully attacking just one claim of a parent patent. The aim of this rule is to promote competitiveness and lower the cost of litigating patent challenges. To learn more, see the USPTO Manual of Patent Examining Procedures on Double Patenting.

Around NY State

Governor Hochul Announces 43North’s Annual Startup Competition

Earlier this month Governor Kathy Hochul announced the opening of Buffalo accelerator 43North’s Annual Startup Competition. The five finalists selected will receive a $1 million investment and join 43North in Buffalo, NY, for one year of programming and mentorship. Applications can be filed online, and the period will remain open until June 7th. Read more about 43North here.

Upcoming Events

Regulatory Education for Industry (REdI) Annual Conference 2024: Innovation in Medical Product Development

What: Learn directly from the FDA’s regulatory experts in medical product centers: drugs, devices, and biologics. This course is designed to provide participants with a strong, basic foundation in the FDA’s regulatory requirements, and also create awareness of current activities.

  • Where: In-person at The Hotel @ the University of Maryland, College Park, MD, or Virtually via Adobe Connect
  • When: Wednesday, May 29, 2024 8:30 AM – 4:30 PM ET & Thursday, May 30, 2024 8:30 AM – 4:30 PM ET.

Successful Inventing: Protection for your innovation

What: The USPTO presents the second event in the Successful Inventing series, focusing on protecting innovation. The session will focus on the advantages of patent, trademark, or copyright protection, when to consult with a patent attorney, and the cost and timing considerations relevant to the various forms of IP protection.

Click here to register for this free event.

  • Where: This event is being held remotely.
  • When: Wednesday, June 12, 2024, 2:00 P.M. – 3:30 p.m. ET.

New York City Tech Week 2024 (June 3rd-9th)

What: Techweek NYC is the premier technology event redefining the Big Apple’s vibrant tech scene! Following the success of Tech Week NYC in 2023, 2024 will be an even bigger NY Tech week celebration, connecting innovators, investors, and industry leaders from across the globe. Events will take place throughout the week covering topics including AI, FinTech, IP.

See the full calendar of events here.

  • Where: New York, New York
  • When: June 3-9, 2024.

Breaking Barriers and Creating Pathways: Government & Business Expo

What: Learn from industry experts, network with peers, and meet with agency officials at this event presented by LaGuardia Small Business and Entrepreneurship Services. More information here.

  • Where: Helen Marshall Cultural Center 120-55 Queens Boulevard, Queens, NY 11415
  • When: June 7, 2024, 9:00 AM – 3:00 PM

CNY REDC CFA Funding Workshop

What: Learn about state funding opportunities through this year’s Regional Economic Development Council’s (REDC) Consolidated Funding Application (CFA) competition. Empire State Development’s deputy director will discuss new changes in the grant program and how the organization makes state funds more accessible for regional projects. Click here to register.

  • Where: SUNY Oswego – Syracuse Campus at 2 South Clinton Street, Syracuse, NY 13202
  • When: June 11, 2024, 10:30 AM – 12:00 PM.

Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter.

Funding Opportunities

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has several funding resources for inventors and entrepreneurs. Check out the links below for more information:

Questions or Suggestions: Contact Innovation Review Editor Emily D’Agostino at nysstlc@syr.edu

News From the Innovation Law Center

APRIL 2024

Innovation Law Center Research 
The next ILC research session begins mid-May. If you are interested in having the ILC complete research, please submit a request here.   

Research is on the intellectual property, competitive and market landscapes relevant to a new technology. The research is completed by law and business students under supervision of faculty.   The ILC is the designated NYS Science & Technology Law Center. It is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process to New York State innovators. 

IP / Regulatory Law Watch

The Department of Justice Charges Apple with Antitrust Violations
On March 21, the U.S. Department of Justice filed an antitrust complaint against Apple. The complaint alleges the company illegally maintains a monopoly over smartphones undermining innovation for apps and other innovation. College of Law Professor Shubha Ghosh provides analysis on the suit here. See the DOJ press release here.

The Innovation Law Center congratulates Professor Ghosh’s selection for the Japanese Patent Office’s Visiting Scholars Program. This will be Professor Ghosh’s second appointment, his first completed in 2017-2018.

Copyright Office and ChatGPT Authorship 
The Copyright Office recently reversed a previous denial in registering a claim of copyright in a novel generated with the use of ChatGPT. While other works containing AI-generated text have previously been registered, those works consisted of separate human and AI-authored text components, rather than the nearly entirely AI-generated text at issue here. Will this claim affect the human authorship requirement? Read more about it here.

“ELVIS” against AI 

In one of the first laws to provide protection from the ill effects of AI,  Tennessee passed the Ensuring Likeness Voice and Image Security (ELVIS) Act. In Tennessee, music amounts to a billion-dollar industry and this Act will serve to update the preexisting Tennessee law that previously covered name, image, and likeness but did not account for the rapid technological advancements of AI.  The bill goes into effect July 1, 2024 and provides for a civil cause of action against violators. Tennessee courts are authorized to grant injured parties injunctions. This proactive approach is meant to curtail any economic disruption or loss that AI may bring by illegally copying rights that include music, production, and likeness.  

International Patent Filings Dropping?  

The United Nations World Intellectual Property Organization (WIPO) reported an almost 2% decline of patent filings globally in 2023. The patent agency notes that this is the first major decrease in patent filing percentages for the first time in nearly 15 years. This comes after 2022 marked the highest number of patent filings globally – over 278,000. For perspective, the U.S. USPTO granted 340,000 patents in 2023 according the PPAC annual report. For more information on patent applications in the U.S., see TTConsultants report titled: The State of U.S. Innovation: USPTO Patent Statistics Report 2023, and the USPTO statistics databases. 

 Can An Abandoned Patent Be Revived? 

When assessing freedom to operate as part of go to market strategizing, only active U.S. patents need be considered. However, in some instances, abandoned patents can be revived. When an abandoned patent appears to claim the inventive aspects of the product, machine, or process, how long does one have to wait to see if it will be revived? While there is no explicit deadline for revivals generally, the reason for abandonment may impact the time to revive. Ultimately, the USPTO notes that revival of a patent abandoned for more than 6 months is unlikely unless there is a showing of extraordinary circumstances that prevented the filing of a petition to revive. Since 1982, the U.S. Patent and Trademark Office (USPTO) estimates that it has revived over 70,000 patents.  

Around NY State

New York Labor Laws affect Invention Assignments  
Invention assignments are key provisions tech companies require in all employment agreements. As part of accepting a position, newly hired engineers and scientists agree to assign all rights to inventions they create in the scope of their employment to the company. The assignments protect the interests of employers to invest, market, assign or sell the inventions.  

New York State is one of many states that have enacted invention assignment statutes to protect inventors’ IP rights when an invention is developed by an employee entirely on their own time and without employer materials or information. New York Labor Law §203-F prohibits enforcement of employment invention assignments in these situations.  

One of the major limitations of New York Labor Law §203-F is that it does not specify the consequences of a violation. Regardless, it will be interesting to see how this law contributes to the changes in granting employee’s ownership of intellectual properties when they cannot be attributed to their employer.  

Upcoming Events

NextCorps Hardware Accelerator presents Medical Device Regulation  
What: Kathi Durdon, MA, CCRP, Executive Director, CNY Biotech Accelerator will lead a discussion about medical device innovation, human factors engineering, medical device FDA regulatory classification and submission, and compliance regulations for clinical trials.
Where: Virtual, register here.
When: May 7, 1:00 to 3:00 pm EASTERN TIME  

ITechLaw 2024 World Technology Law Conference  
What: ITechlaw 2024 Conference will feature various substantive law committee’s including but not limited to meetings on Data Protection, Interactive Entertainment & Media, Technology Sourcing, and Artificial Intelligence. Keynote speakers from the Brookings Institute, Microsoft, and I-WIN Committee will lead discussions. The Conference also offers interactive workshops and various opportunities for networking across the industry.
Where: Washington D.C. Learn more and register here.
When: May 8-10, 2024

Other NYS Event Calendars:
CNY Biotech Accelerator 
FuzeHub Event Schedule 
Life Sciences NY
New York Business Journal Events 
NYS Economic Development Council   
New York Small Business Development Center
Upstate Venture Connect Event Schedule


Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter. 

Funding Opportunities

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has a number of funding resources for inventors and entrepreneurs. Check out the links below for more information:  

ESD offers several resources, including: Start-UP NY, the Innovate NY Fund, NY Ventures, and the Small Business Credit Initiative (SSBCI).

FuzeHub provides NYS manufacturers and tech companies access to an extensive network of industry experts and resources to solve productivity, commercialization, research and development issues. A new round of manufacturing grants opens April 15. See details here.

A nonprofit venture development organization, Launch NY provides mentoring and access to risk capital for high-growth startups.

43North annually invests in startup companies located in Buffalo, NY.

Pursuit provides loans and information for small business owners in NY.

The National Science Foundation (NSF) invests in early-stage projects with this fund.

NYS Investment Entities, Including: 

IP Legal Services 

The USPTO has a directory for participating law schools throughout the U.S.

Volunteer Lawyers of the Arts helps inventors in the NYC area with drafting patent applications. 

Questions or Suggestions: Contact Innovation Review Editor Beatrice Nkansah at nysstlc@syr.edu 

 

News From the Innovation Law Center

Innovation Law Teams Prepare for Client Presentations 

This semester ten research reports on intellectual property, governing regulations, and competitive and market landscapes relevant to new technologies are being completed by law and business students under supervision of law and business faculty. At the conclusion, teams present the research to clients.

Innovation Law Center  

The ILC is the designated NYS Science & Technology Law Center. NYSSTLC is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty.   
If you are interested in having the ILC complete research, please submit a request here.

IP / Regulatory Law Watch

Ultrainfringing 
This month Syracuse Law professor Shubha Ghosh considers Court mandated image filtering as a remedy when AI generated images may infringe copyrights.  Read about how a Chinese court addressed the issue here.

Copyright Office Grapples with AI 
Rapid development in AI technology is challenging traditional rules covering copyright registration and protection. Tech and media companies developing AI models seek to train the models with vast amounts of publicly available materials. AI developers claim they are not replicating the copyrighted materials and that the role of the materials to training AI models is fair use. Authors of copyrighted works maintain AI companies cannot use their works without their permission. The Copyright Office is developing guidance in the area after evaluating the thousands of responses it received in response to its August 2023 request for comments. To learn more, see the webpage for the Copyright Office AI Initiative.

HHS Upholds Rejection of March-In Rights Petition Seeking Lower Cancer Drug Pricing 
Patients Robert Sachs and Clare Love petitioned the Health and Human Services (HHS) to exercise “march-in authority” and take a license to cancer treatment drug Xtandi developed at UCLA. Read about when “march-in rights” are authorized by the Bayh-Dole Act, why the pharmaceutical industry opposes them, and recent developments in the government’s approach here.

USPTO Joint Study on Non-Fungible Tokens  
Earlier this month, the USPTO released the results of their joint study on Intellectual Property Law and policy relating to non-fungible tokens (NFTS). The report to Congress concluded that changing current IP laws will not prevent or end the spreading of unauthorized NFTS, and recommended against changes to IP laws or to the USPTO’s registration and recordation practices at this time. NFTs are defined by the US GAO as a digital certificate of ownership that represents a digital or physical asset. NFT assets rely on blockchain, a decentralized digital ledger that encrypts the data to enhance the security and permanence of transactions.

Patentability of Blockchain: SDNY Raises Subject Matter Eligibility Issues 
Innovators utilizing blockchain technologies may face challenges in obtaining patent protection for failure to satisfy the subject matter requirement set forth in patent law section 35 USC §101. A recent decision in the Southern District of New York could have far-reaching consequences for the future of obtaining patent protection for blockchain-based inventions. Read more here.

AROUND NY STATE

NYC’S Office of Technology and Innovation Advances on its AI Implementation Plan 

New York City’s Office of Technology and Innovation (OTI) announced progress on the nation’s first comprehensive AI Action plan. The Artificial Intelligence (AI) Action Plan features processes, guidelines, and policies to provide a model for the responsible and effective use of AI as a tool.

The AI Action Plan proposes a number of key principles including defining terms such as  ‘cybersecurity’, ‘trust’, ‘sustainability’, and ‘transparency’ to provide clarity to its enforcement. Providing uniformity in the application of the the AI Action Plan and ideally set a precedent that mirroring cities can rely on in the development of their own AI tools.

Ultimately, NYC city officials aim for the AI Action Plan to outline a total of 37 key actions, in which over 70% are to be either started or completed within the next calendar year.

Another key feature of the AI Action Plan is called “MyCity Business”. This AI bot will be used to provide up-to-date information about codes and regulations, and ways to avoid violations and potential fines. Departments across NYC are optimistic about the AI Action Plan – ranging from the Department of Education to Department of Health and Mental Hygiene to Department of Citywide Administrative Services. More information about the AI Action Plan and their intended initiatives is available.

UPCOMING EVENTS

Innovation Through Law: Importance of Early-Stage Research  
What: A presentation provided by the CNY Biotech Accelerator, Upstate Medical University, and the New York State Science and Technology Law Center
Where: REGISTER HERE
When: May 23, 2024 2-3:30 p.m. EST

Trademark Basic Bootcamp, USPTO 
What: This bootcamp will feature 5 free modules offered by the USPTO to help provide comprehensive understanding on the process of federal trademark registration for small business owners and entrepreneurs. Where: Virtual. Learn more here.
When: Apr. 2, Apr. 9, Apr. 16, Apr. 23, Apr. 30

Privacy and Emerging Technology Institute and Spring Meeting (ABA Science & Technology Law Center)  
What: The ABA Science and Technology Law Section Meeting will cover topics about new privacy and emerging technology.
Where: Bethesda North Marriott Hotel and Conference Center – 5701 Marinelli Road, Rockville, MD 20852. Register here.
When: Apr. 17 – 29, 2024

Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter.

FUNDING OPPORTUNITIES

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has a number of funding resources for inventors and entrepreneurs. Check out the links below for more information:

IP LEGAL SERVICES

News From the Innovation Law Center

Venture to Victory… a Success  

On February 13th, the Syracuse University College of Law hosted a Symposium featuring five alumni panelists: James Kelly, Luke Cooper, Kevin Whittaker, Peter Alfano, and Lon Levin (as pictured from left to right above). The panelists considered issues startups and maturing companies face when considering venture capital (VC) investment and private equity (PE) acquisition. The panelists provided insight on issues that included what the VC and PE industries look for in a company, tackling the challenges of founding a startup company, good practices for in-house counsel, and navigating big law VC and PE practices.

The panelists engaged in a mock negotiation simulating a CEO of a hypothetical start-up company, a VC investor in the company, in-house counsel, a private equity firm, and counsel for the private equity firm. Each panelist’s role illustrated the myriad of issues companies face when bringing on VC or PE.

The panelists also provided personal anecdotes on post-graduation struggles and challenges in finding their way toward their successful careers in innovation. For takeaway advice, many of the panelists noted the importance of creating a reliable network, and developing and dedicating oneself to a culture that would reflect the values and beliefs they wanted to embody and portray as a professional.

Read more about the Symposium here.

Continuing Challenges to OpenAI 

Last month Syracuse law professor Shubha Ghosh wrote about the lawsuit between the New York Times and OpenAI. This month he discusses another dispute between two authors and OpenAI. Read his article here.

Professor Ghosh quoted on Need for Legal Recourse on AI Fakes  

Earlier this year, fake explicit imagery of American singer-songwriter, Taylor Swift, was released on social media site ‘X’ (formerly known as ‘Twitter’) using artificial intelligence (AI). This is just one example of the growing problems with AI applications. In an article addressing  the dearth of legal options available, Professor Ghosh was quoted on the potential legal recourse Swift and others affected by AI created fake explicit imagery, could pursue – including  a defamation suit against  X for sharing it.

Professional Development Workshop: ‘Introduction to Intellectual Property’ 

On January 31st, the BioInspired Graduate & Postdoctoral Professional Development Program hosted a workshop centered on intellectual property protection and the innovation process. It was presented by ILC Executive Director Brian Gerling and 3L law student and research associate, Kalen Sullivan. The NYS STLC at the ILC is available to provide similar workshops on IP issues relating to tech commercialization. For more information, contact the nysstlc@syr.edu.

Innovation Law Center  
The ILC is the designated NYS Science & Technology Law Center. It is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty.   
If you are interested in having the ILC complete research, please submit a request here.  

IP/REGULATORY WATCH

European Union Drafts AI Act  

At the end of 2023, the European Parliament and Council reached an agreement on a European Union Artificial Intelligence Act (EU AI Act). This proposed legislation is the first of its kind as the governments try to establish a legal framework to regulate the development and use of AI. The challenge is to keep creators and users of AI systems safe and compliant with fundamental rights and values without discouraging AI innovation. The  EU AI Act takes  a ‘risk-based’ approach, classifying AI systems into 4 categories according to an assessment of their risk. The categories are: acceptable risk, high risk, limited risk, and minimal to no risk.

The text of the uniform legal framework proposed EU AI Act is available on the EUR-Lex website.  Some aspects of the EU AI Act proposal include:

  1. AI systems are defined as “a machine-based system designed to operate with varying levels of autonomy that may exhibit adaptiveness after deployment and that, for explicit or implicit objectives, infers, from the input it receives, how to generate outputs such as predictions, content, recommendations, or decisions that can influence physical or virtual environments.” (Title I Article 3)
  2.  The Scope of the EU AI Act includes all “providers, deployers, importers, distributors, manufacturers, and affected persons” of AI. The Scope of the EU AI Act also emphasizes preexisting EU laws concerning data protection, intellectual property, and alike communications.
  3. AI systems are divided into four categories. For AI systems deemed ‘high risk’, unless they fall into one of the exemption criteria, they must strictly comply with their intended purpose and pass a fundamental rights impact assessment.
  4. Some AI practices are prohibited. (Title II, Article 5) Prohibitions include the use of AI systems to manipulate or distort a person’s behavior in a manner that leads to significant harm, and prohibition of exploitation based on age, disability, or other social/economic indicators.
  5. The Act imposes disclosure obligations and for non-EU providers wishing to utilize their AI systems within the EU, they will be required to appoint an EU-based representative and meet the criteria of additional obligations if their AI system meets the definition of high risk.
  6. The Act outlines various violations and their consequences. Fines for non-compliance range from 7.5 million to 35 million euros.If the proposal is enacted, it could provide an incentive for implementation of similar legislation in other countries.

AI Guidance in the US 

The Biden Administration drafted a Blueprint for an AI Bill of Rights to provide guidance on legislation for the creation and use of AI. It delineates five categories: safe and effective systems, algorithmic discrimination protections, notice and explanation; and human alternatives, consideration, and fallback. Building upon these principles, President Biden issued an Executive order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence. As with data privacy, states are enacting AI legislation, nearly 50% of the states having proposed or have successfully enacted legislation regarding AI. Here in New York State, a recent  New York City law set forth various auditing and disclosure requirements for AI in employment use.

AROUND NY STATE

Upstate New York Tech Hub Designations 

In October of last year, the White House announced funding for 31 technology hub programs around the country. Two of the hub designations were made to upstate New York applicants. Each hub will focus on a different technology with the goal of giving an economic boost to the local community, and stimulate growth in places out of the traditional economic investments concentrated in cities. “Each hub will have the goal of strengthening a region’s capacity to manufacture, commercialize, and deploy technology that makes the United States more competitive in the global economy.” One of the technology hubs, New Energy New York (NENY) Battery Tech Hub, will be situated in Binghamton, New York. It will specialize in battery manufacturing and research. The other tech hub, NY Smart I-Corridor Tech Hub, will focus on semiconductor manufacturing. It will be situated within greater Syracuse, Rochester, and Buffalo.
CNY Biotech Accelerator Hosts Medical Device Innovation Challenge  

For the sixth year, the Central New York Biotech Accelerator (CNYBAC) is hosting a 6 month program to help mentor early to mid aged startup companies. The program, the Medical Device Innovation Challenge (MDIC), assists in bio-technology related programs and assists by providing resources, mentorship, and network connections for start-ups across the nation. Applications are being accepted now until March 31, 2024. After all applications are submitted, teams will be selected in June 2024 by the MDIC Committee. The mentorship program then officially begins August 1, 2024. Participation in the six month program can be in person or virtual. For more information or to apply, please click here.

UPCOMING EVENTS

AIPLA Spring Meeting  
What: American Intellectual Property Law Association (AIPLA) Spring Meeting will address the emerging issues concerning Patent law and AI. Additionally, there will be a portion of the conference dedicated to copyright and music and current Trademark trends.
Where: Austin, Texas. More information, here.
When: May 16-18, 2024

What I Wish I Knew as an Academic Before Starting a Company 
What: The last workshop of a 3-part series hosted by the BioInspired Graduate & Postdoctoral Professional Development Group meant to address the challenges young entrepreneurs face when trying to start a new business and provide theoretical and practical solutions to increase potential for success.
Where: Syracuse University, Bowne Hall Room 414
When: March 4, 2024 at 3:30p.m. to 4:30p.m.

American Bar Association Intellectual Property Law (ABA-IPL) Annual meeting 
What: The IPLPSPRING is an annual conference held annual to address cutting edge topics such as updates in the Copyright Office, advancements in AI technology, pending and recently passed legislation, the discourse surrounding patents and inventions involving AI, cultural and social responsibility in Trademark branding, many other topics.
Where: Bethesda North Marriott Hotel and Conference Center – 5701 Marinelli Road, Rockville, MD 20852. Register here.
When: April 17-19, 2024

Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter.

FUNDING OPPORTUNITIES

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has a number of funding resources for inventors and entrepreneurs. Check out the links below for more information:

Questions or Suggestions: Contact Innovation Review Editor Beatrice Nkansah at nysstlc@syr.edu 

 

News From the Innovation Law Center

JOIN US: FEBRUARY 13TH SYMPOSIUM: VENTURE TO VICTORY: PIONEER PERSPECTIVES IN TECH, VENTURE, AND PRIVATE EQUITY 

The symposium will feature a panel of successful entrepreneurs, financial investors, and legal experts in a discussion on the challenges that high growth, privately held tech companies face as they take on private equity, venture capital, or other forms of funding. Panelists will cover investment deals they have completed, trends in financing, and their career paths in the techn

ology commercialization space.
Part of the focus of high-growth startups is readiness for VC investment or an exit. Exits can be via an acquisition by another company or a private equity (PE) fund. Learn more about what is involved with VC investment and PE acquisition at the February 13th symposium from 1:30 p.m. to 4:30 p.m. at the Syracuse University College of Law. The symposium is geared to those interested in the legal, financial, business, and entrepreneurial aspects of high-growth companies. The event is free – register and learn more below.

REGISTER NOW  

NYT and OpenAI dispute 

Syracuse law professor Shubha Ghosh is the director of the Syracuse Intellectual Property Institute (SIPLI) and teaches courses such as Business Associations and Advising a Start-Up I and II. He is the Intellectual Property Institute (SIPLI) and teaches courses such as Business Associations and Advising a Start-Up I and II. He has published widely about intellectual property. Professor Ghosh regularly contributes to the Innovation Review about issues related to IP news and court cases relevant to technology commercialization.
This month he considers copyright infringement claims against Open AI and Meta alleging illegal use of copyrighted materials to train AI systems. Read the article titled, “Is Fair Use a Defense Against AI Training with Copyrighted Materials?”, here.

He also provides a follow-up to his December 2023 column concerning the Federal Trade Commission v. Microsoft case being litigated in the U.S. Court of Appeals (9th Circuit) in an article titled, “Epic Battle Over Gaming Platforms Continues”. Read his article here.

Innovation Law Center  

The ILC is the designated NYS Science & Technology Law Center. NYSSTLC is funded by the Empire State Development Corp. to provide information and research on legal issues relevant to the technology commercialization process. Research is available to early-stage companies, research centers, economic development agencies, technology transfer offices and researchers throughout New York State.  Research on the intellectual property, competitive and market landscapes relevant to a new technology are completed by law and business students under supervision of faculty.   
If you are interested in having the ILC complete research, please submit a request here.   

IP / Regulatory Law Watch

Masimo v. Apple  

In 2020, Masimo filed suit against Apple for patent infringement. Masimo is a health technology corporation that concentrates on manufacturing monitoring devices and technology. Masimo alleged that Apple infringed on their patented technology when they released a newer version of the Apple Watch with the capability to measure the percentage of oxygen carried from the lungs to the rest of the body. In October of 2023, the International Trade Commission ruled in favor of Masimo. The Commission ordered Apple to stop selling devices that used the infringing technology.

The revenue generated from Apple Watch sales constitutes an enormous portion of Apple’s multi-billion revenue. Apple is currently still the largest smartwatch-selling corporation globally. According to Masimo company high executives, Apple was given the option to negotiate a licensing agreement with Masimo but Apple decided rather to appeal to the Biden Administration with hopes that they would reverse the International Trade Commissions ruling. The U.S. Court of Appeals for the Federal Circuit declined to reverse the holding. In order to mitigate the losses associated with the ruling issued by the International Trade Commission, Apple sought permission to continue selling its ‘Apple Watches’ by simply disabling the infringing technology. This is an unusual step for Apple and even more so an unexpected result as the corporation has relied on previous presidential administrations to reverse numerous International Trade Commission rulings against them.

Process for Correcting Patents Eased 

The U.S. Patent and Trademark Office (USPTO) will finally begin allowing electronic corrections to patents. Certificates of Correction are issued to mistakes of minimal and minor character provide the correction does not require changes triggering reexamination. Until this change, Certificates of Correction were only issued on paper and physically mailed. The change goes into effect January 30, 2024. For more information see the USPTO webpage.

Supporting Independent Inventors 

As part of an effort to support independent inventors, the USPTO offers a plethora of training and information opportunities. On February 27 and 28, a two-day workshop on assessing the strengths and weaknesses of a potential patent application is being offered. The focus of the workshop will range from public patent search tools to legal counsel options through the USPTO’s Pro Bono Program – all assets to first-time patent filers and (future) innovators. See also USPTO’s Public Engagement Partnership meeting series on understanding the patent system here.

Around NY State

A graphic in the shape of New York state

Upstate New York Tech Hub Designations Promise STEAM jobs 

Two federal tech hub designations – the New York Semiconductor Manufacturing and Research Technology Innovation-Corridor Consortium, (NY SMART I-Corridor), and New Energy New York (NENY) batter production offer the promise of new technology manufacturing jobs in semiconductor and lithium ion battery production.

New York State is confronting the need to prepare students for the jobs demanded by the growing operations. Part of this preparation includes a first ever county-wide STEAM school in Syracuse, announced by Governor Hochul in December.
Governor Announces $228 Million in Federal Funding to Provide Internet to Homes in Underserved Communities 

NY Governor Kathy Hochul announced that $228 million of federal funding will be used to launch ‘New York’s ConnectALL Municipal Infrastructure Program‘. This program is to connect thousands of New York state homes to the internet. This effort was made to ensure that all New Yorkers within underserved communities have the opportunity to participate in the growing technologically dependent twenty-first century economy.

Upcoming Events

Remote Events:  

SBIR/STTR – AMA to Protect Your Intellectual Property!  
What: An “Ask me anything” (AMA) pertaining to cybersecurity and information from the Department of the Air Force/Space Force, Office of Chief Information Security Officer (CISO) hosted by the SBIR (Small Business Innovation Research) and STTR (Small Business Technology Transfer) programs. SBIR and STTR fund technology startups. The workshop will explain the programs and the application process for them.
Where: Virtual (Register for free here)
When: February 6, 2024 from 1 p.m. to 3 p.m. EST

UPSTO: The Path to a Patent, Part IV: Learn How to Draft a Patent Application 
What: The USPTO is providing a free lecture series on what an entrepreneur will need to draft and submit for their patent application. This virtual event is part of a larger series about other types of training for investors, entrepreneurs, and even small businesses.
Where: Virtual (Register for free here)
When: Ongoing series. Parts IV – VIII will be held on Feb. 1, 15, 22, 29, and Mar. 7, 2024 respectively.
 

In-Person Events: 

Venture To Victory: Pioneer Perspectives In Tech, Venture, And Private Equity Symposium  
What: Symposium of panelists discussing challenges that high growth, privately held tech companies face as they take on private equity, venture capital, and other forms of funding. The symposium is geared to those interested in the legal, financial, business, and entrepreneurial aspects of high-growth companies.
Where: Dineen Hall in Melanie Gray Ceremonial Courtroom (Register for free here); Live streaming is also available
When: February 13, 2024 from 1:30 p.m. to 4:30 p.m.

American Bar Association Intellectual Property Law (ABA-IPL) Annual meeting 
What:The IPLPSPRING is an annual conference held annual to address cutting edge topics such as updates in the Copyright Office, advancements in AI technology, pending and recently passed legislation, the discourse surrounding patents and inventions involving AI, cultural and social responsibility in Trademark branding, many other topics.
Where: Bethesda North Marriott Hotel and Conference Center – 5701 Marinelli Road, Rockville, MD 20852
When: April 17-19, 2024

Do you have an event or schedule you would like to advertise? Contact Karen Scullion at nysstlc@syr.edu to share it in our next monthly newsletter.

Funding Opportunities

From early-stage non-dilutive funding to tax benefits and investment funds, NYS has a number of funding resources for inventors and entrepreneurs. Check out the links below for more information:

Syracuse University College of Law official identity
NYS Science & Technology Law Center Dineen Hall, Ste. 310 950 Irving Ave. Syracuse, NY 13244-6070