Few seminar topics engage a startup audience as wholly as intellectual property, given that it’s viewed as one of the most critical components to success. Not only does it protect a company and allow it to compete among larger players, but it raises a startup’s profile among investors. In fact, 85 percent of medical device VCs say they view patents as a critical factor for funding consideration.
That’s why there was a full house at the Fogarty Institute’s recent seminar that featured a cadre of sought-after IP experts, including Paul Parker, firmwide chair of Perkins Coie’s medical device industry sector; Mika Reiner Mayer, partner at Cooley; Amy Embert, counsel at Hoge Fenton; Antonia Sequeira, partner at Fenwick & West; Ivan Wong, patent agent at Fenwick & West; and Neil Ray, founder and CEO of Raydiant Oximetry, a Fogarty Institute company.
The group provided in-depth patent and due diligence strategies for early-stage startups, with a combination of presentations and panel discussions that offered case studies and best practices.
Here are just a few of the insights they shared with attendees.
Through his extensive experience working with medtech startups, Paul believes it greatly benefits companies to do some of the IP work in-house to save both time and money, but also because the team members have deeper knowledge about their competitors, industry, technology and the problem they are solving.
“Investors look first at the team members and technology, but then the IP portfolio and strategy before making a decision to invest in a company. Companies can use their IP strategy as a key asset for both investors and the marketplace.”
Mika Reiner Mayer:
Mika recommends taking care not to underestimate the importance of a well-drafted provisional application as, this is often the first step in the patenting process with the U.S. Patent and Trademark Office (USPTO) for many companies. This filing could help protect a new invention for a 12-month period before a non-provisional patent application must be filed, as long as the provisional contains an adequate disclosure of the invention.
“This is an important part of the IP process, and companies need to submit a detailed description and fully disclose their invention in order to receive the priority date of the provisional application filing. Keep in mind that whoever is reading the application may not be an expert in the field, so do your best to explain how to make and use your invention in the clearest way possible.”
Don’t make any assumptions and presume that something may be obvious when you’re filing your provisional application, Amy points out. The document needs to stand on its own, fully describing all aspects of the invention. Yet, it can be wise to have it reviewed by an attorney before filing to ensure it is well-written, understandable and complete.
“Be ready to show investors where you can protect your invention and your strategy for the coming years. Your IP portfolio is most important in the early stages of a company, and slightly less as you grow and have other assets.”
Neil concurs that as thorough as your document should be, it’s smart to be personally involved in the process, as well. An active participant on the calls with the patent examiners, he thus was able to explain the unmet need his company was addressing.
“The relationship between the inventor and the IP lawyer is very important – the client should feel listened to, and the counsel should be considered an integral part of the team.”
Ivan says it’s important to remember that the United States uses a first-to-file system, so it’s critical to file early and often. He recommends that if you think there is a chance, file, and don’t count yourself out.
“It’s also important to check if you have freedom to operate (FTO), to mitigate any risk of infringing on existing IP rights. This will help you better understand your licensing needs and strategy, influence your device development in coordination with market testing of prototypes, set your budget and inform your conversation with investors.”
Echoing the main theme of the panel, Neil used his own company’s case study to sum up the importance of IP to his company: “After we received our first patent, it was almost like turning on a light switch in terms of investability – it opened doors for VCs to start talking to us.”