IP Best Practices: Tips for mHealth Companies, Investors and Acquirers. Presentation by Yoheved Novogroder-Shoshan, Partner at the law firm of Yigal Arnon, June 29th at the mHealth Israel Investors Summit. Includes checklist of five things Founders / Inventors can do to protect their Intellectual Property and increase value.

1. IP Best Practices:
Tips for mHealth Companies,
Investors and Acquirers
Yoheved Novogroder-Shoshan
June 29, 2015

2. Creating a mHealth Platform
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Third Party
Technology
(in-license)
Existing IP –
Founder’s
Invention
Employees
Consultants

3. IP Ownership- Debunking the Myths
 Myth #1: If I pay someone (employee, consultant) to create an
invention, I own it.
 General Rule: The one who creates the IP owns it, unless an exception
applies
 Exception: Employee “Service Inventions”: absent agreement to the
contrary, inventions developed by an employee during the term of
employment and as a consequence of employment are owned by the
employer (Patent Law 132).
 Key issues:
◦ You will not own consultant-developed IP unless there is a written
agreement assigning rights to you
◦ Potential employee claims
 Solution: Sign clear IP assignments with Employees and Consultants.
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4. IP Ownership- Debunking the Myths (2)
 Myth #2: If a consultant assigns an invention to my
company in a written agreement, of course I own it.
 Key issue: if a developer develops IP for you and the
developer is employed by someone else, the invention may
be a service invention owned by the consultant’s employer.
 Solution: Waiver
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5. Special Cases: Academics
 Employment Agreement
 Institutional IP policy
o Applies to unrelated work
o Tail period
o Applies to PhD students.
o Applies during sabbatical
 Solution: Written Agreement with
Institution’s Technology Transfer Office (TTO)
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6. Solutions:
•Stipulate No IP creation permitted
•Cost/Benefit Analysis; Consider
Alternatives
•Explore License Option
Special Cases – Hospitals,
Government Institutions
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 Private Hospital- like academic
 Government Affiliated Hospital
 Real World Examples:

7. Service Inventions- Inventors’ rights
 Myth #3: If my employee assigned an invention to my
company, I don’t have to pay him/her a share of my
revenues from commercializing the invention
 Employee’s right to royalties for service inventions:
Patent Law 134: Absent an agreement to the contrary, Patent
Compensation Committee authorized to determine
employee’s entitlement to royalties for service inventions
 Solution: Express royalty waiver
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8. 5 Things You Can Do
1. Diligence on employee and consultant third-party relationships,
especially academic institutions, hospitals and government bodies
2. Engage local counsel familiar with the law, local practice
3. Obtain written IP assignments from employees/consultants -before
work begins
4. Get third party approvals - before work begins
5. Address title issues immediately upon discovery
Real world consequences
• Title questions can delay an exit
• A cloud over IP that can be cleared for a few hundred thousand dollars
when a company is in a Series A round can cost the company millions of
dollars on the eve of an acquisition
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9. THANK YOU!
Yoheved Novogroder-Shoshan
yohevedn@arnon.co.il
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