Publications

Medical Device Start-ups: Things to Consider Regarding Intellectual Property

March 23, 2018

Oblon recently participated in the Association of University Technology Managers (AUTM) annual meeting in Phoenix, Arizona (https://www.autm.net/2018-annual-meeting/home/). This conference draws over 1700 tech transfer professionals to discuss licensing and IP issues in the context of technology transfer. This year, at the AUTM meeting, a pitch and play venture competition was held where several start-up companies pitched their business opportunity for a chance to be awarded a cash prize.

While watching this competition the importance of early and strong IP in obtaining funding was immediately clear. The companies competing in the event identified their IP positions as one of their most important competitive advantages.

This was true for the companies in the competition and is especially true for medical tech companies as these companies are often entering a crowded market for funding. For instance, medical device companies often have regulatory issues that start-ups in other industries do not have to face. As a result, it is sometimes more difficult for medical device start-ups to impress potential investors making a strong IP position all the more important.

Early and strong IP is often a difficult proposition for start-up companies trying to balance how to allocate precious funds. Provisional patents can be a great tool for medical tech start-ups as provisional patents provide a year of priority while having fewer formal requirements and thus lower cost.

However, it is important to consider enablement. Although provisional applications do not have a specific form, failing to flesh out important concepts could put any future non-provisional patent applications at risk. It is important to consult with legal counsel before disclosing your invention. A good way to start is by drafting a preliminary claim set and making sure all the features are fully enabled in the provisional disclosure. It is also important to ensure that all inventors are properly identified and that all assignments are signed and recorded before further applications relying on the provisional application for priority are filed. Start-up companies should take care to ensure that employment agreements explicitly require inventors to assign rights to the company. This will avoid complications if the inventor was to move on from the start-up.

Making sure your IP is fully enabled and with a clean ownership record will go a long way to ensure your IP is strong and impressive to potential investors.