7 strategies to protect intellectual property for medical devices

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Passed in September 2011, the final phases of the America Invents Act went into effect in March. Cyrus Morton, a partner at the Minneapolis office of Robins, Kaplan, Miller & Ciresi said this law represents the biggest change since the 1950s.

"This bill spent eight years in Congress and finally got passed when this administration pitched it as a jobs bill," he said.

At the MedTech Investing conference in Minneapolis on Wednesday, Morton offered seven tips for how medical device companies should manage intellectual property and patent applications under the new law.

  • File early and often.

Morton recommended filing discrete applications and more of them.

  • Do not disclose invention before filing.

Morton said the new law really is a pure first-to-file system.
"The best practice is to absolutely not publicly disclose an invention before filing an application," he said.

  • No foreign use or sale before filing.

What happens abroad now may bar patents in America.

  • Monitor applications and patents in your field.

Morton said there is a new derivation proceeding that involves determining whether the person who files the patent first is the real inventor. "If you have employees who have left or if you have disclosed something at a trade show, watch to see if someone has stolen your idea," he said.

  • Documentation is still key.

Don't throw out your inventor notebooks and keep documentation for R&D also. Morton said that trade secret protection is now more attractive, especially for companies with important internal processes.

  • Use virtual marking.

The new law makes marking much easier by creating a virtual option. Now all companies have to do is put a list of all patent numbers for all products on the company website. Products must still be marked with "patent" or "pat." False marking is greatly limited now and can be raised only by a party that suffers competitive injury.

  • Be careful about statements of value.

Morton advised companies to assume everything except communications with trial counsel will be discovered and used against them in court, including:

  • Internal email and documents
  • Licensing discussions
  • Confidential discussions with strategic partners and investor

He also recommended that companies define the value of IP in terms of what the value is at that moment. "The value of IP changes over time and that should be reflected in any documentation of value," he said.

[Photo by - Sean MacEntee]

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