Medical Device Start-ups: Things to Consider Regarding Intellectual Property
Recent Publications
5 IP Rules to Know to Protect Your Business in the United States (article in French)
Coaching INPI Newsletter
Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.
1968
Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.
Outside the US, we service companies based in Japan, France, Germany, Italy, Saudi Arabia, and farther corners of the world. Our culturally aware attorneys speak many languages, including Japanese, French, German, Mandarin, Korean, Russian, Arabic, Farsi, Chinese.
Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.
From the minute you walk through our doors, you'll become a valuable part of a team that fosters a culture of innovation, client service and collegiality.
The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.
Coaching INPI Newsletter
April 28-30, 2024
November 16, 2023 - In-Person in Munich
October 27, 2023
Oblon recently participated in the Association of University Technology Managers (AUTM) annual meeting in Phoenix, Arizona (https://www.autm.net/2018-annual-meeting/home/). This conference draws over 1700 tech transfer professionals to discuss licensing and IP issues in the context of technology transfer. This year, at the AUTM meeting, a pitch and play venture competition was held where several start-up companies pitched their business opportunity for a chance to be awarded a cash prize.
While watching this competition the importance of early and strong IP in obtaining funding was immediately clear. The companies competing in the event identified their IP positions as one of their most important competitive advantages.
This was true for the companies in the competition and is especially true for medical tech companies as these companies are often entering a crowded market for funding. For instance, medical device companies often have regulatory issues that start-ups in other industries do not have to face. As a result, it is sometimes more difficult for medical device start-ups to impress potential investors making a strong IP position all the more important.
Early and strong IP is often a difficult proposition for start-up companies trying to balance how to allocate precious funds. Provisional patents can be a great tool for medical tech start-ups as provisional patents provide a year of priority while having fewer formal requirements and thus lower cost.
However, it is important to consider enablement. Although provisional applications do not have a specific form, failing to flesh out important concepts could put any future non-provisional patent applications at risk. It is important to consult with legal counsel before disclosing your invention. A good way to start is by drafting a preliminary claim set and making sure all the features are fully enabled in the provisional disclosure. It is also important to ensure that all inventors are properly identified and that all assignments are signed and recorded before further applications relying on the provisional application for priority are filed. Start-up companies should take care to ensure that employment agreements explicitly require inventors to assign rights to the company. This will avoid complications if the inventor was to move on from the start-up.
Making sure your IP is fully enabled and with a clean ownership record will go a long way to ensure your IP is strong and impressive to potential investors.
Coaching INPI Newsletter