The world of medical devices is really fascinating. It’s a world that I think many hospitals know about and many more hospitals are starting to learn about as they grow some medical device innovations in house. With that in mind, I was really intrigued by a list I was emailed of 5 medical device IP tips from Frank Becking of Panthera MedTech.
- Control access to sensitive information: Don’t talk publicly about your idea before pursuing the necessary protection. Even with confidentiality agreements in place, until you have filed for a patent any disclosure risks your potential rights and future prospects.
- Make sure your company owns its intellectual property: This might seem obvious but it is easy to overlook key steps, like putting in place and enforcing agreements that ensure that work produced by employees and independent contractors becomes the property of the company. And making sure that those same contractors or employees do not have pre-existing, conflicting obligations to other parties. Work with legal counsel to ensure state law compliance of IP-related agreements, as some states restrict assignment and other scope.
- Don’t neglect country-by-country protection: IP protection opportunities differ around the globe. Select state-side IP counsel that has existing relationships with expert foreign counsel who can advise on how best to navigate international waters.
- Actively avoid third-party IP entanglement: Too often, corporate executives focus on the patentability of their own IP. Understanding and tracking 3rd party patents and the progress of their pending claims (i.e., handling questions of Freedom to Operate) often has a greater effect on corporate valuation. A startup with technology that infringes upon another company’s IP can be dead in the water. Design-around is very often an option, but usually represents a costly and time-consuming exercise that should be guided by experienced IP counsel.
- Formulate an IP enforcement strategy: It is important to monitor the market to ensure that your IP rights are not being infringed. However, the bigger question is often what a company should be done if it detects infringement. Venture-capital funded startups are notoriously averse to engaging in litigation. Sending a cease-and-desist letter can open the door for the noticed party taking the fight to you. Again, working closely with experienced IP counsel is key to understanding and pursuing your enforcement goals.
How many of your hospitals are dealing with these types of issues?