NYS Science & Technology Law Center

MAY 2024 NEWSLETTER

News From the Innovation Law Center

The Innovation Law Center’s Summer Program Kicks Off 

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

Innovation Law Center

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

IP / Regulatory Law Watch

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

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

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

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

FDA Issues Final Guidance on Device Remanufacturing

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

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

Proposed Change to Terminal Disclaimer Rule Allow Challengers to Kill 2(+) Patents with 1 Stone  
  
Non-statutory double patenting, or obviousness-type double patenting (ODP), occurs when an inventor attempts to patent an obvious variation on an earlier patent to extend the term of protection over the initial invention. Courts have found that this practice of allowing an improper timewise extension of the right to exclude granted by a patent violates public policy. 

Nevertheless, this practice has been allowed to continue, and patent seekers are able to avoid ODP rejections through the use of a terminal disclaimer. Terminal disclaimers avoid the harmful effects of ODP by disclaiming the patent term of the variation to the extent that it exceeds the term of the earlier patent.  
  
On May 10th, the USPTO published a notice of proposed rulemaking, announcing the addition of a new requirement to the terminal disclaimer rule. This new rule would require that terminal disclaimers contain an agreement rendering the second patent, or continuation, unenforceable if any claim of any related patent is invalidated by prior art.   
  
This new rule would allow challengers to potentially invalidate multiple patents by successfully attacking just one claim of a parent patent. The aim of this rule is to promote competitiveness and lower the cost of litigating patent challenges. To learn more, see the USPTO Manual of Patent Examining Procedures on Double Patenting. 

Around NY State

Governor Hochul Announces 43North’s Annual Startup Competition

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

Upcoming Events

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

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

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

Successful Inventing: Protection for your innovation

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

Click here to register for this free event.

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

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

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

See the full calendar of events here.

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

Breaking Barriers and Creating Pathways: Government & Business Expo

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

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

CNY REDC CFA Funding Workshop

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

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

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

Funding Opportunities

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

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

 

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