January 2014 Edition
In This Issue:
January marks the return of the law students, and for the 3L’s this semester represents the final push before the bar exam and the real world. Emphasizing real experience from lab to market has been the goal of the Technology Commercialization Law Program for many years, and partners beautifully with the START-UP NY
goals. The semester is well-underway with patent &/or market landscapes, and legal and regulatory analyses being conducted for real companies, individuals and researchers.
The law students in the TCLP put together some amazing research that provides early stage technology champions some much needed insight into that which they “know they don’t yet know”. It is a “win-win” for students and clients that semester after semester, doesn’t get old.
This month’s issue brings you some interesting articles on some of the issues that have been occupying the TCLP talent this month.
is a Venture Development Organization. A business-driven, nonprofit that promotes regional growth by providing a flexible portfolio of services, including: assisting in the creation of high-growth companies; providing expert business assistance to those companies; facilitating or making direct financial investments; and, speeding the commercialization of technology.
Flexible Low Yield Paper for Financing Social Enterprises
by Justin Burgess
This review is drawn from a 2013 article entitled “Hunting Stag with FLY Paper: A Hybrid Financial Instrument for Social Enterprise” by Professors Dana Brakman Reiser and Steven A. Dean of Brooklyn Law School, published in the Boston College Law Review volume 54 issue 4, pages 1495-1544.
When a socially-minded entrepreneur has traditionally raised capital they are faced with two concerns. First and foremost, there is the concern of legitimizing the venture. If the entrepreneur forms as a charitable organization, they are ensuring the social goal of the venture as a legacy but will not attract profit-minded investors. Conversely, if the entrepreneur organizes as a for-profit entity, they run into the second concern: investors may not share their same passion for the social cause that is the heart of the venture. The for-profit status may ultimately frustrate the venture’s ability to “do good”; as majority shareholders, the investors can jettison the social cause in favor of a more robust bottom line. For-profit formation could ruin the entrepreneur’s hopes for the venture’s socially conscious legacy. Further, the case law is replete with reminders that the purpose of for-profit entities is to promote their value for the benefit of the shareholders.
Options for Protecting Software IP
by Erin Phillips
As with other types of inventions, protecting software intellectual property is an important business consideration. Traditionally, intellectual property protection for software has been acquired through copyright protection, patent protection, or a combination of the two. Each strategy has its own benefits and drawbacks.
Alice Corp v. CLS Bank International
by Justin Burgess
In 2012, the Federal Circuit granted an en banc rehearing of CLS Bank International v. Alice Corporation Ltd.
to determine what constitutes patent eligible subject matter under §101. 9 of the 10 justices on the Federal Circuit agreed that Alice Corp's claims to a computerized method, a computer-readable medium, and a corresponding system were ineligible for patent protection as abstract ideas. In so ruling, the Federal Circuit handed down a decision that offered guidance that could be relied on by practitioners in determining the boundaries of §101 eligible subject matter.
New York Attorney General Settlement with "Patent Troll"
by Erin Phillips
On January 14th of this year, New York Attorney General Schneiderman announced a settlement
with MPHJ Technology Investments, LLC (MPHJ) after investigations into its conduct and communication with small and medium-sized New York businesses. The Attorney General concluded that MPHJ was using deceptive and coercive tactics in efforts to force New York businesses into patent licensing agreements. Smaller businesses are more likely to enter these licensing agreements because they do not have the resources to evaluate and contest the validity of the patent. Although MPHJ only sought small licensing fees, the aggregate payment from small businesses was quite large.
Michelle K. Lee Named Deputy Director of the USPTO
Michelle K. Lee began her role as Deputy Director of the U.S. Patent and Trademark Office (USPTO) on January 13th. Prior to her new appointment, Lee acted as Director of the USPTO's Silicon Valley satellite office where she served as the primary liaison with the innovation community in Sillicon Valley and the West Coast. She also served two terms on the USPTO's Patent Public Advisory Committee which serves to advise the USPTO on its policies, goals, performance, budget and user fees.
J.D. Student Research Associates Participate in IP Moot Court
Syracuse University College of Law is sponsoring two moot court teams this year that are dealing with intellectual property problems. Gregg Dawson (’14) and Madi Syed (’14) will be competing in the 23rd Annual Saul Lefkowitz Moot Court Competition, held by the International Trademark Association (INTA) and dealing with an issue under trademark law. Justin Burgess (’14) and David Richart (’14) will be competing in the 41st Annual Giles Southerland Rich Moot Court Competition, held by the American Intellectual Property Law Association (AIPLA) and dealing with an issue on appeal under patent law. The regionals for Saul Lefkowitz will be February 8 in New York City, and the regionals for Giles Rich will be March 21-23 in Boston. Gregg, Justin, and David are all third year students involved with the Science & Technology Law Center.