Adv. Zeev Fisher - Medical Strategies, First year


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From the MIT Forum Event "A Roadmap for Medical Device Startups" 19/1/11

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Adv. Zeev Fisher - Medical Strategies, First year

  1. 1. Crucial Intellectual PropertyStrategiesin the Medical Devices SectorMIT Forum, January 2011Zeev Fisher, Advocate & SolicitorManaging Partner, FWJ (c) Fisher Weiler Jones 1
  2. 2. What Will We Talk About Today1. What is IP Strategy?2. Solid rights3. Quality protection4. High chances of protection5. More for less (c) Fisher Weiler Jones 2
  3. 3. What is IP Strategy?• IP Strategy is about defining thegoals that you wish to achieve bybuilding an IP portfolio, taking intoaccount the company’s business andthen finding the most cost-effectiveway to achieve these goals (c) Fisher Weiler Jones 3
  4. 4. Goals of IP in General (c) Fisher Weiler Jones 4
  5. 5. Defensive (protecting own products) Marketing Offensive (attacking/Branding (image of others) innovation) Goals Cross-Licensing Licensing (c) Fisher Weiler Jones 5
  6. 6. Defensive (protecting own products) Cross- Licensing Goals Marketing Offensive /Branding (attacking (image of others)innovation) Licensing (c) Fisher Weiler Jones 6
  7. 7. Goals Defensive (protecting own products) (c) Fisher Weiler Jones 7
  8. 8. How do we achieve these goals?1. We want solid rights2. We want quality protection3. We want high chances of protection4. More for less (c) Fisher Weiler Jones 8
  9. 9. 1. Solid rights (c) Fisher Weiler Jones 9
  10. 10. Solid Rights Solid Rights• Solid rights are rights that belong only to the person/company that sells them: • Have all been assignments been signed and recorded properly? • Were inventors left out? • Were non-inventors added?• Have you said or written anything not in conjunction with the patent applications? (c) Fisher Weiler Jones 10
  11. 11. 2. Quality Protection (c) Fisher Weiler Jones 11
  12. 12. Quality ProtectionThe Cannons of Quality Protection• Protecting all aspects of an invention.• Claims of different scopes.• Claims: • Having only one meaning; • The meaning is clear; • Independent claims includes only the minimum necessary; • Local versions; • Support• Little estoppel. (c) Fisher Weiler Jones 12
  13. 13. QualityWhat not to do in claim drafting Protection• … a first plane substantially perpendicular to said input axis of rotation…;• … transmission means, each of which is coupled to…;• … a. obtaining a toothbrush having… b. moving said toothbrush…• …characteristics that resemble...• …alleviating needle phobia and/or tension and/or anxiety… (c) Fisher Weiler Jones 13
  14. 14. Quality ProtectionHow to minimize estoppel?• Compact prosecution.• Interviews. (c) Fisher Weiler Jones 14
  15. 15. 3. High chances ofprotection (c) Fisher Weiler Jones 15
  16. 16. Chances OfTypical Startup Budget-Restricted Tactic Protection PROVISIONAL PCT NATIONAL PHASE (c) Fisher Weiler Jones 16
  17. 17. Chances OfWhen is it a good strategy? Protection• When inventions are very immature.• When budget is near zero.• Where there are doubts about the strength of thetechnology. BUT (c) Fisher Weiler Jones 17
  18. 18. Chances OfBUT… Protection• ~7 years until patent protection.• ~20 months until first indication of patentability.• Expensive process – PCT fee, ineffective examination, USclaims, IDSs, no PPHs The Result – high risk for investors / buyers (c) Fisher Weiler Jones 18
  19. 19. Chances OfAlternate strategies Protection Full US UK Europe NATIONAL NATIONAL NATIONAL PHASE PHASE PHASE (c) Fisher Weiler Jones 19
  20. 20. Chances OfAdvantages Protection• Inexpensive filing (230 GBP for filing).• 4 months for first search.• ~2 years for first patent.• ~3 years for US patent.• Excellent medical devices examiners with whom you can speak about your patent.• Opportunity to perfect applications before year ends.• Saving ~30% of the overall patent process cost. UK NATIONAL PHASE (c) Fisher Weiler Jones 20
  21. 21. 4. More for less (c) Fisher Weiler Jones 21
  22. 22. Chances OfSaving Cost – by Changing Patent Strategy Protection• Search!• Seek protection reasonable in scope.• Focus on your novelty.• Don’t file anywhere.• Consider skipping PCT. (c) Fisher Weiler Jones 22
  23. 23. Saving Cost – by Changing The Deal with Your Chances Of ProtectionPatent Attorney• Sharing the risk• Prosecution packages• Refuse to %-cap deals• Refuse paper-pushing charges• Docketing deals• Get outsource in-house counsel• Outsource annuities (c) Fisher Weiler Jones 23
  24. 24. Chances Of Protection Filing Annuities/Reporting Renewals Drafting Patents Grant / Petitions/IDSs/ Validation Status Reports (c) Fisher Weiler Jones
  25. 25. Conclusions (c) Fisher Weiler Jones 25
  26. 26. Conclusions• You MUST ask yourself what you want to achieve, before you start filing.• To obtain solid rights you must make sure all assignments are recorded and the inventors are really the inventors.• You can and should read your patents to ensure they comply with the cannons of quality protection.• Take outside advise.• Filing a Provisional patent application is one strategy. Not the only one. Filing full US, UK, European patent applications, skipping PCT, filing petitions and interviewing cases are all part of IP strategy to consider.• Your patent attorneys are your partners. Ask them to charge accordingly. (c) Fisher Weiler Jones 26
  27. 27. Questions? (c) Fisher Weiler Jones 27