3 strategies to a strategic medtech patent portfolio

[Photo by Hassan Pasha on Unsplash] Safeguarding improvements prospects to medtech achievement. Major Greenberg Traurig

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[Photo by Hassan Pasha on Unsplash]

Safeguarding improvements prospects to medtech achievement. Major Greenberg Traurig patent attorneys describe how.

Roman Fayerberg and David J. Dykeman, Greenberg Traurig

A strategic patent portfolio is key to a medtech company’s expansion and achievement, but developing a sturdy patent portfolio will take tactic, time and money.

When there are no shortcuts to constructing a strategic patent portfolio, there are quite a few approaches medtech providers can get a head start off on the levels of competition.

1. Set up processes to discover and secure inventions

Early-phase medtech organizations really should employ in-house processes and techniques to seize and secure improvements in a strategic way.

Many big medtech organizations utilize seasoned in-property patent lawyers whose main responsibility is building and managing their company’s patent portfolio. Devoid of in-dwelling patent lawyers, these decisions turn into but a further duty of the active main technology officer or direct engineer. Even when they realize the significance and are acquainted with the patent course of action, patenting can acquire a backseat to other priorities and duties. As a final result, patent decisions are reactive to the situation, with filings non-strategic and driven by very last-minute possibilities amid failure to capture all creative concepts.

Very best methods contain a patent course of action that is proactive with obvious strategic goals. To assist create and handle a strategic patent portfolio, a medtech company should have official processes and methods built to effectively collect info from inventors, determine likely patent filings, answer to patent application place of work actions and keep track of opposition.

A enterprise need to have an easy-to-use creation disclosure type to assist seize and hold monitor of the inventive developments. It should have often scheduled conversations (month to month or quarterly) with its patent attorney to assessment and deal with prospective application filings and USPTO workplace steps in a strategic fashion, instead than chaotically at the last second.  Wise medtech organizations ought to keep an eye on and overview the patent landscape for rivals in their technology place.  The awareness of the relevant patent landscape will help medtech providers emphasis their product or service progress and patent software filing technique on the technology spaces with less patent coverage, whilst steering clear of the engineering areas with a crowded patent landscape.

Though developing patent procedures and procedures requires scheduling and time to set up, medtech providers will gain from owning them in area in the extensive operate. Providers can defend their innovations in a well timed and strategic manner, though minimizing the danger of possible patent infringement.

2. Make the most of USPTO’s speedy keep track of systems

Medtech providers should really take into consideration utilizing the United States Patent and Trademark Business (USPTO) rapid keep track of packages, which includes Monitor Just one and the Patent Prosecution Highway.

Although the USPTO has produced development in lowering the patent software examination backlog, a usual non-provisional utility application nevertheless requires an average of about 15.4 months to get the 1st motion from the USPTO and about 22.9 months from application filing to patent issuance (28.3 months for apps with request for continued evaluation).

To beat the USPTO’s hold out time, a medtech firm ought to take into account making use of the USPTO’s Keep track of A single system. When the USPTO expenses an more payment for this plan, the Observe Just one program minimizes the time to the first action to an average of 1.8 months. It can consequence in an issued patent in about half the time of the normal evaluation, about 10 months from patent software filing to a patent. To fully consider edge of the application, the Keep track of A single application should really be targeted on the business embodiment of the product or service to get the application to allowance and issuance a lot quicker. Prior to the very first application issuing as a patent, the applicant can file a continuation software with statements of distinct scope to variety a “picket fence” of patent safety all-around the technology’s core factors.

A further preferred process to accelerate USPTO assessment is the Patent Prosecution Freeway (PPH). Below the PPH application, the applicant can request an accelerated evaluation in the USPTO of promises considered allowable in a corresponding intercontinental software, such as a PCT application. The applicant may well will need to narrow the pending claims right before the USPTO assessment to correspond to the allowable promises outside the United States, but, equivalent to the Monitor One particular system, the applicant will be able to pursue statements with a broader scope of security in a continuation software.

It is also achievable to speed up a USPTO examination based mostly on the age or wellness of an inventor. For example, the applicant can ask for accelerated assessment and overview if an inventor is at minimum 65 years previous.

The USPTO speedy track systems are far more costly than frequent examinations, but medtech businesses can nevertheless make the most of these programs for their important patent programs to make a patent portfolio a lot quicker

3. License verified technological innovation and patents

A medtech business should consider supplementing its patent portfolio by licensing in 3rd-get together patents.

Yet another gain of checking the patent landscape in the related area is to detect possible licensing opportunities. The certified patents can complement the company’s patent portfolio to offer broader defense all-around the company’s engineering and offer you further possibilities for patented industrial merchandise.

A single probable supply for licensing alternatives are tutorial institutions and research hospitals. For the reason that the academic institutions and analysis hospitals are commonly at the forefront of innovation, patents licensed from them can offer an previously priority date than the patent purposes created in-dwelling. Even if the as-filed claims of the licensed patents do not immediately protect the industrial technology, medtech organizations can utilize the continuation application strategy to get extra suitable promises with a precedence date that predates the level of competition.

If such an chance occurs, medtech providers must take into account licensing an currently-tested, patent-protected technological innovation to speedily build their existence in the technological place.


Even though there are no quick cuts to developing a patent portfolio, medtech corporations can correctly establish a strategic patent portfolio by operating with business enterprise-minded patent lawyers to put into action official processes and methods, make the most of quickly-monitor USPTO prosecution applications and establish patent licensing opportunities.

This article displays the opinions of the authors, and not of Greenberg Traurig or Clinical Layout & Outsourcing. The short article is offered for informational functions only and it is not supposed to be construed or applied as typical legal tips nor as a solicitation of any form.

Roman Fayerberg is a registered patent legal professional with much more than 15 yrs of knowledge in patent and mental assets law at Greenberg Traurig in Boston. He advises consumers on procurement and enforcement of IP legal rights, which includes domestic and worldwide patents, with the concentration on medtech and lifestyle science systems. His patent practice builds on seven years of knowledge he gained as a study and improvement engineer at C.R. Bard (now Beckton Dickinson) and Boston Scientific. He can be achieved at [email protected] or (617) 310-5206.

David J. Dykeman, is a registered patent lawyer with approximately 25 many years of knowledge in patent and mental assets law, and co-chair of Greenberg Traurig’s world-wide Everyday living Sciences & Health care Know-how Group. Dykeman’s practice focuses on securing all over the world intellectual house security and associated enterprise strategy for higher-tech shoppers, with specific knowledge in medical equipment, wearables, robotics, existence sciences and information engineering. He can be arrived at at [email protected] or at (617) 310-6009.