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

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

News From the Innovation Law Center

Article: The Federal Trade Commission v. Microsoft Case – The FTC’s Role in Reviewing Mergers for Anti-Competitiveness 
Before larger companies can merge, notice must be given to the Federal Trade Commission. The notification triggers a review for antitrust implications. In a recent example, the FTC moved to end Microsoft’s acquisition of Activision. Read about this in an article by Professor Shubha Ghosh posted to the ILC website.
Syracuse Law professor Shubha Ghosh is the director of the Syracuse Intellectual Property Institute (SIPLI) and teaches (name of courses) He has published widely about intellectual property. His article represents the first of monthly articles related to IP news and court cases.

Article: The Role of CPT Codes 
A recurring question when commercializing medical devices is how to ensure health care providers can be reimbursed if they adopt the device.
This article provides information on the meaning, use, and importance of CPT codes in commercialization and regulatory compliance.

Symposium: Building a Hi-Growth Technology Company: Venture Capital and Private Equity Strategies
When a privately held company considers taking on private equity or venture capital, there are a myriad of issues to be considered. On February 13th, 2024 from 1:30 PM to 4:30 a panel of experienced attorneys will discuss the legal issues that arise when high growth, privately held companies take on venture capital or private equity. Event to take place at the College of Law. Register here.

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.

IP / Regulatory Law Watch

USPTO Launches Semiconductor Technology Pilot Program 
The U.S. Patent and Trademark Office (USPTO) has begun a Semiconductor Technology Pilot Program to support the 2022 CHIPS and Science Act. The Act spurs investments and incentives in the domestic manufacturing of semiconductors, recognizing their importance in national security.
Semiconductors – computer chips – are crucial to many electronics, from phones to hospital equipment. New York state has become a bustling place for semiconductor manufacturing in recent years with Micron Technology and GlobalFoundries building new sites. President Biden visited Syracuse in 2022 to commend Micron for investing up to $100 billion to construct a plant there.
The USPTO pilot program is meant to fast-track the examination of certain semiconductor patent applications, enabling innovations to benefit the public more quickly than they would otherwise. The USPTO started accepting petitions for participating in the program on December 1, and it will continue to accept them until it has either granted 1,000 petitions or until December of 2024.

How the USPTO is Using Artificial Intelligence 
Artificial intelligence (AI) is rapidly developing and becoming integrated into many industries – including law and patents. ChatGPT is a popular AI chatbot that responds to prompts.

According to an article by United Lex however, it isn’t quite ready to perform accurate patent searches. When put to the test, the AI responded with broad and irrelevant results with made up citations. The chatbot is still in its early stages, so it could become a helpful tool in the future. Another AI service, Spellbook, boasts that it is ChatGPT for lawyers.
The USPTO has been experimenting with AI, such as to classify patent documents and compare trademark images. In October, it launched the USPTO Virtual Assistant, a chatbot that can answer website visitors’ basic questions. The USPTO also recently introduced the Inventor Search Assistant, an AI tool that helps inventors search for prior art to determine whether their inventions are patentable – a lot like the ILC does.

Around NY State

A graphic in the shape of New York state

MetLife Commits Millions to Support Upstate NY and Launch NY 

MetLife and MetLife Foundation – companies that provide insurance and financial services – announced last month that they will commit $30 million to support Upstate New York over the next several years. Included in its pledge, MetLife Foundation made a $1 million impact investment to Launch NY to bolster entrepreneurs. Launch NY is a seed fund that connects startup companies with investors. The remainder of the pledge is comprised of $5 million in funding and $25 million in impact investments. MetLife hopes its investment will create employment and support communities in New York.

Upcoming Events

Remote Events:  

  • A Fireside Chat with USPTO Patent Examiners
    • What: Anyone can attend this event to enjoy casual conversation with patent examiners, who will be available to answer questions.
    • Where: Virtual (Attend for free)
    • When: Jan. 16, 2024, from 12 p.m. to 1 p.m.
  • A Day in the Life of a USPTO Patent Examiner
    • What: In search of new patent examiners, the USPTO will describe what the job entails and what it requires. Anyone can attend this webinar, but it is intended for anyone interested in becoming a patent examiner.
    • Where: Virtual (Attend for free)
    • When: Feb. 6, 2024, from 12 p.m. to 1 p.m.

In-Person Events: 

  • NYSBA Annual Meeting – IP Law Section
    • What: The NYSBA is hosting a section on intellectual property law, with emphasis on artificial intelligence and other current technology developments. The event includes a CLE program, a luncheon at Holland & Knight, and a reception. This section is part of the NYSBA’s 2024 annual meeting, which encompasses many areas of law.
    • Where: NY Hilton Midtown at 1335 6th Ave. in NYC (Get tickets online)
    • When: Jan. 17, 2024, from 8:45 a.m. to 6:15 p.m.
  • Upstate Innovation Day
    • What: There will be a free Life Sciences Innovation and Entrepreneurship program with panel discussions. It will be followed by a Medical Device Innovation Challenge (MDIC) Pitch Event, where entrepreneurs discuss medical technologies that they are developing. Anyone can register to attend for free.
    • Where: CNYBAC Theater at 841 E. Fayette St. in Syracuse, NY
    • When: Jan. 23, 2024, from 8 a.m. to 4 p.m.
  • ILC Symposium: Building a Hi-Growth Technology Company: Venture Capital and Private Equity Strategies
    • What: A panel of experienced attorneys will discuss the legal issues associated with private companies taking on venture capital and private equity.
    • Where: Syracuse University College of Law
    • When: Feb. 13, 2024, from 1:30 to 4:30

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

News From the Innovation Law Center

A group of people stand on a stage holding awards and smiling next to a sign for the New York State Innovation Summit.
Winners of the 2023 New York State Innovation Summit

NYSTAR Innovation Summit Winners 
Three NYSSTLC teams were winners at the 2023 NYSTAR Innovation Summit in October. The event showcased and celebrated individuals and companies that contribute to technology innovation in New York state. The following awards were given:

  • The $150k grand prize was awarded to Ashlawn Energy, a rechargeable battery company led by Norma Bryan that reduces greenhouse gas emissions.
  • Co-founders Audrey Bernstein and Tere Williams won $50k for DUB Biologics, which is creating a new prevention and treatment therapeutic for corneal injuries.
  • Finally, Eric Moses won $50k for an improved intubation device Epic Airways Systems is developing.
A table with pamphlets and a poster for NYSTAR.

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.  

f you are interested in having the ILC complete research, please submit a request.

IP / Regulatory Law Watch

President Biden Designates 31 Tech Hubs Across the U.S. 
The Biden-Harris administration, through the Economic Development Administration (EDA), designated 31 Innovation and Technology Hubs throughout the U.S. Authorized by the 2022 CHIPS and Science Act, Tech Hubs are intended to drive progress in innovative industries, such as with semiconductors, biotechnology, artificial intelligence, and clean energy. They also create new technology-centered jobs in regions across the country. According to a White House press release, the Tech Hub locations “were selected to represent the full diversity of America.” Two Tech Hubs were named in New York state: the New Energy New York (NENY) Battery Tech Hub (which is described further below) in Binghamton for clean energy and the NY SMART I-Corridor Tech Hub that will serve multiple regions to advance semiconductor manufacturing.

USPTO Replaces Its Search Tools for Patents and Trademarks 
The U.S. Patent and Trademark Office (USPTO) is revamping its online systems to change how users search it for both patents and trademarks. As of Nov. 8, the USPTO’s EFS-Web System and Private PAIR (Patent Application Information Retrieval) tool have been replaced by the Patent Center system. The Patent Center system has new features and is meant to be more intuitive for users. Guidance on how to conduct searches with the new system is available on the USPTO website. Additionally, the USPTO is testing the beta version of a new trademark search system, which is replacing TESS (the Trademark Electronic Search System). Explanations and webinars are available on the USPTO website to guide users in transitioning to the new trademark search system.

Around NY State

Federal Tech Hub Established in Binghamton  
The New Energy New York (NENY) Battery Tech Hub was established with SUNY Binghamton as one of 31 Tech Hubs throughout the country (see the story above). NENY aims to spur battery development and manufacturing in the U.S., advancing clean energy. The Hub also wants to expand infrastructure in the U.S. to reduce the battery manufacturing industry’s current reliance on global supply chains, domesticating at least part of the process. Senator Charles Schumer visited Binghamton University when NENY was announced, stating, “I knew with federal investment [that] we could write a new chapter for Upstate New York.”

Governor Announces New York’s First Cell and Gene Therapy Hub 
NY Governor Kathy Hochul announced that a $98 million cell and gene therapy hub – the first in the state – will be established in Buffalo. The center will support expansive and potentially life-saving research at the Roswell Park Comprehensive Cancer Center. The center will focus its developments on cancer therapies for solid tumors, such as breast and lung tumors. There are also plans for a second cell and gene therapy hub in the state, but its location has not yet been identified.

Grow-NY Awards Millions of Dollars to Agricultural Startups 
Grow-NY is a competition that provides extensive funding for innovative startups throughout the world that focus on high-growth food and agriculture. Every year, it awards $3 million to seven startups. It also pairs 20 finalists with business mentors, such as the ILC’s own Dave Eilers. For 2023, Grow-NY awarded the following:

  • $1 million to Hypercell Technologies, a Georgia-based company that identifies contaminated foods early in production
  • $500k each to:
    • Crover, a UK company that offers a solution for grain storage monitoring
    • SomaDetect, a Canadian company that assists dairy farmers increase milk quality
  • $250k each to:
    • Cattle Scan, a Canadian startup that helps dairy farmers monitor cattle
    • Clean Label Solution, a startup based in Ithaca, NY that effectuates eco-friendly feed for livestock
    • Mycologic, a Georgia-based startup that provides support and equipment fir specialty mushroom cultivation
    • Mush Foods, a company in Poughkeepsie, NY that incorporates edible and sustainable mushroom mycelium

Upcoming Events

Remote Events:  

  • USPTO Patent Presentations
    • What: The USPTO is providing a free lecture series on “The Path to a Patent.”
    • Where: Virtual (Register for free)
    • When: Multiple lectures will be held. Parts 7 and 8 will be at 2 p.m. on Nov. 30 and Dec. 7, respectively.
  • SBIR / SBTR Virtual Workshop
    • What: The U.S. Department of Energy and Cornell University’s Center for Regional Economic Advancement are partnering to offer a virtual workshop on 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)
    • When: Dec. 7 from 11 a.m. to 12 p.m.
  • IP Basics and Helpful Resources
    • What: The USPTO is hosting a session to discuss the basics of patents, trademarks, copyrights, and trade secrets. Participants may be able to meet with USPTO staff after the session.
    • Where: Virtual (Register for free)
    • When: Dec. 7 from 12 p.m. to 1:30 p.m.
  • A Day in the Life of a USPTO Patent Examiner 
    What: In search of new patent examiners, the USPTO will describe what the job entails and what it requires. Anyone can attend this webinar, but it is intended for anyone interested in becoming a patent examiner.
    Where: Virtual (Attend for free)
    When: Dec. 11 from 12 p.m. to 1 p.m.
  • NSF Regional I-Corps Virtual Course
    • What: Binghamton University is providing a month-long online course for entrepreneurs and researchers interested in STEM, especially technology. In the course, researchers will speak with customers to discover the best market for their tech product.
    • Where: Virtual (Apply for free by Dec. 13)
    • When: Jan. 12 – Feb. 14, 2024

In-Person Events: 

  • She Leads Live 2023
    • What: A conference for women entrepreneurs and leaders, this “powerhouse gathering” organized by She Leads Media aims to empower women in business to achieve their potential. Several female CEOs and company founders will share their knowledge. Purchase a ticket to attend.
    • Where: Triangle Loft at 675 Hudson St. in NYC
    • When: Dec. 1 from 10 a.m. to 5 p.m.
  • 2023 Global Innovation Summit
    • What: HMG Strategy, an advising service that connects business technology executives, will hold an event where attendees can network and where speakers will address technology and leadership trends. Full-time students. C-Level executives, CIOs, and other professionals may register to attend for free.
    • Where: Harvard Club of NY at 37 West 44th St. in NYC
    • When: Dec. 12 from 7:30 a.m. to 4 p.m.
  • Upstate Innovation Day
    • What: There will be a free Life Sciences Innovation and Entrepreneurship program with panel discussions. It will be followed by a Medical Device Innovation Challenge (MDIC) Pitch Event, where entrepreneurs discuss medical technologies that they are developing. Anyone can register to attend for free.
    • Where: CNYBAC Theater at 841 E. Fayette St. in Syracuse, NY
    • When: Jan. 23, 2024, from 8 a.m. to 4 p.m.

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:

    News From the Innovation Law Center

    What Our Senior Research Associates are Saying About the ILC

    Read these and other testimonials from students and alumni on the ILC website. 

    Ordinary Skill in the Art Standard for Patents: Article

    Syracuse Law Professor Dan Traficonte co-authored a paper, “People Having Ordinary Skills in the Arts,” in which he recommends an alternative legal standard for patent law’s non-obviousness requirement. The current standard of review assesses obviousness from the perspective of an individual – a person having ordinary skills in the arts, or a PHOSITA. Traficonte suggests revising the standard of review to THOSITA – a team of people having ordinary skills in the arts. As he explains in the article, he views this as a more practical and accurate approach.

    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

    USPTO Issues Its Millionth Design Patent

    In a press release in late September, the USPTO announced that it issued design patent number 1,000,000, which it called “an important milestone in American innovation and creativity.” Design patents are issued for ornamental features, unlike utility patents, which deal with how an innovation works. The milestone design patent is for the design for a comb. The USPTO states it granted its first design patent in 1842 for a new font.

    FTC Warns Drug Companies Against Exploiting Patent System

    The Federal Trade Commission (FTC) issued a policy statement in September to warn pharmaceutical companies of potential legal consequences if they improperly list patents in the FDA’s Orange Book. The FTC stated that drug companies engage in unfair competition by exploiting a loophole. In short, drug companies would list multiple patents for a name-brand product in the federal registry known as the Orange Book to deter competitors from bringing generics to market. This can stifle innovation and enable the exploiting companies to significantly raise prices for their name-brand products. The FTC emphasized that misusing the patent system in this way can lead to liability under antitrust laws.

    Judge Reverses Jury Award to Teva in Patent Suit Against Eli Lilly

    A federal court reversed a $176.5 million jury award to Teva Pharmaceuticals for patent infringement by drug manufacturer Eli Lilly. The previous ruling invalidated patents relating to Lilly’s injectable migraine drug, Emgality, having found that they infringed on three Teva-owned patents for Ajovy, a competing drug. Overturning the decision, a federal judge determined that Teva’s patent claims were overbroad. The outcome of this case illustrates an important principle: obtaining a patent does not always mean you have the protections you may think you have. The USPTO can make mistakes, and a patent can be invalidated for being improperly granted – as the one here was.

    Around NY State

    Hofstra University Opens Science and Innovation Center: 

    New York Governor Kathy Hochul participated in a ribbon cutting ceremony in Long Island for Hofstra University’s new 75,000-square-foot Science and Innovation Center. The $75,000 facility that will be shared by the University’s nursing and engineering schools was partially funded by a $25 million grant from Empire State Development. The center boasts resources such as simulated surgical wings and operating rooms, a makerspace, and labs for robotics, bioengineering, and other STEM projects.

    Grants Awarded Throughout New York State:

    Multiple companies were awarded grants this month. The Genius NY finals in Syracuse awarded companies that will be moving to Central NY, the 43North finals celebrated companies moving to Buffalo, and the Luminate finals in Rochester gave companies grants ranging from $50k to $1 million.

    LinkNYC Project Aims to Increase Internet Access: 

    LinkNYC is a public project that is replacing thousands of NYC payphones with sleek kiosks in an effort to increase internet access, especially to those who cannot afford it. The kiosks, called “Links,” provide free public Wi-Fi and charging ports for personal devices. They also have a 911 button for emergencies and a tablet that displays maps and city services. Over 2,000 Links have been activated throughout NYC since January, and thousands more are planned to be installed. LinkNYC is the result of an agreement between the City of New York and CityBridge, a technology company. According to LinkNYC, the project generated hundreds of jobs in manufacturing, technology, and advertising. Not everyone is welcoming of the new structures, however; The New York Civil Liberties Union (NYCLU) called LinkNYC “a privacy disaster,” expressing concerns that the kiosks collect personal information and may be used for surveillance.

    Upcoming Events

    Remote Events: 

    • NYSBA Technology Discussion
    • What: Four NYSBA technology committees will host a discussion on current issues in technology law.
    • Where: Virtual (Register for free here)
    • When: Oct. 25 from 5:30 p.m. – 7:30 p.m.
    • USPTO Patent Presentations
    • What: The USPTO is providing a free lecture series on “The Path to a Patent.” Topics include how to draft and file patent applications, why patent claims are important, and how to protect IP abroad.
    • Where: Virtual (Register for free here)
    • When: Multiple lectures will be held. Parts 4 to 7 will each be at 2 p.m. They will be on Nov. 2, 9, 16, and 30, respectively.

    In-Person Events: 

    • Info Session: Careers in Patent Law and Patent Bar
    • What: The administrative director of Practising Law Institute’s (PLI) Patent Bar Review course will discuss what a career in patent law entails and how to pursue it.
    • Where: Dineen Hall room 360 (Syracuse Law) and Virtual
    • When: Oct. 31 from 12 p.m. to 1 p.m.
    • NYIPLA Patent CLE Seminar
    • What: The New York Intellectual Property Law Association is hosting a one-day patent seminar the qualifies as a CLE course. Registration costs range from $45 for student members of NYIPLA to $325 for non-members.
    • Where: Willkie Farr & Gallagher LLP at 787 7th Ave. in NYC
    • When: Nov. 8 from 8:30 a.m. to 5 p.m.
    • American Innovation Conference
    • What: This event educates on how to strategize innovation to focus on customers. Past speakers and attendees have represented major brands, such as Amazon, Ikea, and Ford. Get tickets for free here by Nov. 10.
    • Where: Fordham University School of Law
    • When: Nov. 14 from 11:30 a.m. to 4 p.m.

    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:

    • 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.
    • This company points to a collection of resources for manufacturing and technology start-ups.
    • 43North annually invests in startup companies located in Buffalo, NY.
    • Pursuit provides loans and information for small businesses owners in NY.
    • The National Science Foundation (NSF) invests in early-stage projects with this fund.
    • NYS Investment Entities, Including:

     

    News From the Innovation Law Center

    A group of students and faculty sit around a conference table.

    A New Semester:  

    Fall 2023 classes have officially begun at the Syracuse University College of Law. With them, a new wave of law students joins the ILC to research IP, marketing, and regulatory prospects of innovative technologies. Research is completed through both NYSTAR-funded research associates and the law course LAW 815 Innovation Law Practicum.

    If you are interested in having the ILC complete research, please submit a request here.   

    ILC Yearbook 2023:

    The 2023 College of Law Yearbook featuring the ILC includes multiple articles, testimonials, and more. College of Law Dean Craig M. Boise hails the ILC as addressing “perhaps the most innovative and quickly evolving field of law of our time.” View Dean Boise’s message and the full 2023 Yearbook.

    An article by Shubha Ghosh, the Crandall Melvin Professor of Law at the College of Law, included a consideration of the patent doctrine of enablement which can affect the breadth of an inventor’s intellectual property rights. Read the article here.

    ILC and OTT Collaborate to Boost Commercialization:

    The ILC often works with Technology Transfer Offices around NYS. At Syracuse University, the ILC and Office of Technology Transfer (OTT) are teaming up to administer a new program to accelerate commercialization and tackle legal issues. Read the full article on the new collaboration here.

    IP / Regulatory Law Watch

    Pfizer Challenges Moderna COVID Vaccine Patents: 

    The USPTO’s Patent Trial and Appeal Board (PTAB) conducts  inter partes review (IPR) proceedings to review the patentability of claims. In a recent example, Pfizer and its German partner, BioNTech, filed an IPR petition for review of a Moderna patent for a COVID vaccine. The companies allege that  U.S. Patent 10702600B1 for “betacorronavirus mRNA vaccine” is overly broad and infringes on their patents. Last year, Moderna filed suit against Pfizer and BioNTech, alleging that they were the infringers. Pfizer and BioNTech countersued and then also filed a petition for review with the PTAB. See the USPTO statistics on IPRs here.

    Federal Court Decides on Copyright of A.I. Artworks: 
    On August 18, a federal court in Washington, D.C. held in Thaler v. Perlmutter that artworks produced by artificial intelligence cannot be copyrighted if they were created without human input. Keeping with precedents, the court reiterated that only human authors can have copyrights. Read the case decision here. This case relates to a similar question for patent law: can A.I. be an inventor? According to Thaler v. Vidal, a recent Federal Circuit decision that the U.S. Supreme Court declined to review, the answer remains “no.”

    Around NY State

    New Limit on Trademarks Abroad: 
    Trademarks are a key aspect of developing a brand. The Lanham Act, which governs trademarks, includes prohibitions on trademark infringement and dilution. The U.S. Supreme Court recently limited the reach of the Lanham Act in Abitron Austria GmbH v. Hetronic Intl., Inc. Under the decision, liability under the federal trademark law only arises for domestic uses in commerce. This ruling impacts the ability to enjoin the use of infringing trademarks abroad. In a test of the application of Abitron, a federal appellate court remanded a case involving a band called the Commodores to have the district court reevaluate the scope of trademark enforcement.

    State and Federal Funding Promote Climate Tech:  
    New York governor Kathy Hocul assigned ADL Ventures and SecondMuse to implement the ClimateTech Growth Platform and the Manufacturing Corps (M-Corps) programs. The companies were awarded a combined $12 million to provide resources to start-ups and entrepreneurs to promote technology that can help reduce greenhouse gas emissions. Learn more about the programs here and here.

    Another effort to promote climate tech is the USPTO’s Climate Change Mitigation Pilot Program, which fast tracks the examination process for patent applications for inventions that reduce greenhouse gas emissions and combat climate change. This program will continue until 2027 or until the USPTO grants 4,000 applications, whichever occurs first.

    Upcoming Events

    Remote Events:

    • USPTO IP Presentation
      • What: The USPTO is providing a free lecture on “Intellectual Property Basics and Helpful Resources”
      • Where: Virtual (Register for free here)
      • When: Oct. 5 at 12 p.m.
    • USPTO Patent Presentations
      • What: The USPTO is providing a free lecture series on “The Path to a Patent”
      • Where: Virtual (Register for free here)
      • When: Multiple lectures will be held. Parts 1 to 3 will be at 2 p.m. on Oct. 12, 19, and 26, respectively.
    • NYSBA Technology Discussion
      • What: Four NYSBA technology committees will host a discussion on current issues in technology law.
      • Where: Virtual (Register for free here)
      • When: Oct. 25 from 5:30 p.m. – 7:30 p.m.
    • More Events

    In-Person Events:

    • Orange Tank Pitch Competition
      • What: Students and alumni of Syracuse University’s Whitman School of Management will pitch their business ideas to a judge panel to compete for a total of $35,000 in cash awards. Learn more here.
      • Where: Helaine and Marvin Lender Auditorium
      • When: Sept. 29 at 3 p.m.

     

    News From the Innovation Law Center

    Students with the summer ILC program visit the Center of Excellence in Syracuse.

    This summer at the Innovation Law Center: 
    This summer, the ILC team completed 24 reports for various startups around NYS. Law and business students collaborated with inventors and entrepreneurs from various industries to research the relevant landscapes to assess patentability, marketability, regulatory compliance, and freedom to operate for their creations. The research is technology agnostic. Inventions ranged from therapeutic devices to architectural software to clean energy technology.

    If you are interested in having the ILC complete research, please submit a request here.

    A photo collage of ILC students attending presentations and conferences.

    The following are some highlights from the summer:

    • COE: The ILC visited Syracuse’s Center of Excellence (COE) to meet with Mako M3 Innovation, a returning client. M3 demonstrated a scaled down version of its sports lighting system that is implemented in sports stadiums nationwide.
    • MDIC: Several members of the ILC are working as mentors for startup winners of the with the CNY Biotech Accelerator (CNYBAC) 2023 Medical Device Innovation Challenge (MDIC).
    • Innovare Advancement Center: The Innovare Advancement Center in Rome, NY provides an ecosystem to provide support for scientific and entrepreneurial innovation focused on solving challenges to national security. The ILC visited Innovare for an aerospace and defense investor event in July 2023 witnessing up front the services Innovare provides and gaining insight into the types of technologies being incubated in air and space and by the U.S. Department of Defense.
    • Presentations: ILC faculty and research associates provided virtual presentations on the Importance of Early-Stage Research and the Basics of Intellectual Property and what the ILC has to offer for entrepreneurs and inventors seeking to bridge the gap between invention and innovation.

    How to Prepare for a Meeting with the Innovation Law Center: 
    For aspiring entrepreneurs and inventors, coming up with a new product or innovation is exciting. While rushing to set up a meeting with the ILC seems like an obvious next step, there are a number of items that make sense to be aware of at the early stage.  View some considerations  here.

    IP / Regulatory Law Watch

    Patentability of Artificial Intelligence Inventions: 
    In this blog, ILC and SUCOL 1993 alumnus Michael Kiklis discusses the hurdles AI inventions must overcome to obtain a patent.

    Are you interested in the ILC making a presentation to your incubator, accelerator, research center or other organization on the Importance of Early-Stage Research and/or the Basics of Intellectual Property? Contact the ILC at: nysstlc@syr.edu.

    Around NY State

    Marijuana and Plant Patents: 
    Although marijuana is federally a Schedule I controlled substance and its legal use in the states varies, it is possible to obtain a plant patent for it. Read this article to learn about how the Supreme Court is balancing this complicated relationship. Find information about NYS policy here.

    The Proposed New York Privacy Act: 
    The New York Privacy Act (S00365B) cleared the Senate and is one step closer to becoming law. If enacted, the Act would affect how certain companies and entities are allowed to collect and use consumer data. Visit this page to learn more about the Act and similar proposed state privacy laws.

    Upcoming Events

    Remote Events: 

    • National Science Foundation I-Corps Innovation Course
      • What: Syracuse University is hosting a virtual course for entrepreneurs, startup founders, and anyone interested in STEM.
      • Where: Virtual (Register for free here)
      • When: Classes will be held from Sep. 18 to Oct. 18
    • CLE Program – IP Law Section 2023 Annual Meeting Program
      • What: The New York State Bar Association (NYSBA) will have a virtual program that may be used for CLE credits. The program will cover various topics, such as NFTs and ethics in IP law.
      • Where: Virtual (Paid registration is required)
      • When: Aug. 30 from 9 a.m. – 5 p.m.
    • Startup Company Investment Readiness
      • What: Richard E. Honen, partner at Phillips Lytle, LLP, will share how startup companies should prepare for their first round of investments.
      • Where: Zoom (Register for free here)
      • When: Sept. 13 from 3 – 4 p.m.

    In-Person Events: 

    • Smart City Expo USA
      • What: There will be a two-day exhibition and conference in New York City about building smart and sustainable cities. Paid registration is required to attend. Check here to learn more.
      • Where: Pier 36 in NYC
      • When: Oct. 4 – 5