Dominique's Desk: The right questions to ask about your company’s intellectual property
Christina Hernandez Sherwood, eMed Editor, MedCity News
Intellectual property is one of the toughest subjects for life science and digital health entrepreneurs to understand. From dealing with the tech transfer office to hiring an attorney to filing a provisional patent, IP is a common stumbling block for early-stage entrepreneurs.
The first time many entrepreneurs encounter this area is when they want to license their IP from a university technology transfer office. (This step generally applies to therapeutics, medical technology and the diagnostics/platform space.) The questions that arise during this step include: Is this IP crucial? Was the patent work done well or do gaps remain? (Universities don't always have the resources to do the most robust patent filings.) What is this patent worth - and what are some reasonable terms the tech transfer office should ask? How much rework is required and what gaps need to be addressed to support a new enterprise? (Entrepreneurs might need to completely redo the work. This should be considered when negotiating with the tech transfer office.)
Next, the entrepreneur should interview and hire an experienced IP attorney within his or her particular sector. Assuming the attorney has a proven track record and good references from existing customers - and the entrepreneur can accommodate the attorney's fee schedule (negotiation on deferred payment can be helpful) - it's now time to focus on developing the IP strategy. This often involves a deep dive into existing patents to ensure the entrepreneur's freedom to operate and a prioritization exercise around milestones for provisional and other filings. Developing this strategy requires an understanding of the difference between what is key and what is nice to have when it comes to IP. It's also important to consider what's practical, given the limited resources at hand.
At the Life Science Ventures Summit last year, Jeffrey Schox of Schox Patent Group presented a detailed overview on IP for life science and digital health entrepreneurs and led a panel to further discuss the topic. An introductory video montage and the full presentation and panel are available here.
Director of Innovation and Networks