Start-Up IP roadmap: The dos and don’ts of protecting your medical device ideas

Recently, the USPTO changed its rules from “First to invent” to “First to file.” This change implies that a patent may be issued to whoever filed first, even if someone else invented first. Given that many medical-device start-ups first launch or use their products outside the US, it is imperative to understand how international patent filings work (e.g. Patent Cooperation Treaty (PCT). These intellectual property (IP) activities tend to consume significant resources and funds. Therefore, it is important, particularly for start-ups, to know how to assess which ideas are worth patenting, when it is more effective to license, or when to keep things under the wraps (e.g. not divulge the ‘secret sauce’). Our workshop gathers patent-law and tech transfer experts and founders of successful start-ups and will provide hands-on experience on how to do deal with such matters yourself. There will be ample time for questions and answers to discuss each topic in depth.

List of Speakers (tentative)

Howard Levin, M.D.
Title of the presentation: How to decide which medical device ideas are worth pursuing?
Bio: Howard R. Levin, M.D. started his career as an academic cardiologist and researcher and has worked extensively towards the integration of cardiac, respiratory and renal physiological principles into novel clinical treatments initially at Johns Hopkins then at Columbia Presbyterian where he was Medical Director of the Mechanical Cardiac Support Program. In 2003, with Mark Gelfand, Dr. Levin co-founded Coridea, an idea generator that translates ideas into novel therapeutic solutions for clinical practice. His inventions/co-inventions or patents have helped successfully launch 8 companies. He has held a number of positions in these companies including President, Chief Scientific Officer, Chief Medical Officer and VP of R&D. Dr. Levin also has a master’s degree in Biomedical Engineering. He is an author over 80 issued U.S. patents, an additional 100 published patent applications and 70 medical publications.

Theodore Papagiannis, J.D.
Title of the presentation: Start-Up IP roadmaps: Patent law updates, avoiding common mistakes, US vs. International protection.
Bio: Theodore G. Papagiannis is a partner in the Medical Device group at Knobbe Martens. Mr. Papagiannis has over ten years of experience in guiding start-up companies, particularly those in the medical device arena, to build and strengthen their intellectual property (IP) portfolios. He has extensive experience in conducting patent due diligence on behalf of both emerging growth companies and venture capital firms, as well as other investors and strategic partners. Mr. Papagiannis guides both start-up companies and investors in patent and trademark portfolio management, licensing, infringement analysis, IP risk evaluation, strategic IP positioning (both offensive and defensive) and a wide range of other IP matters. Theodore has assisted numerous start-up companies in a variety of areas, including spine and other orthopedics, cardiovascular, ablation and other tissue ablation, skin care, other medical device areas, cleantech technologies, automotive and many other technologies. Mr. Papagiannis is a licensed professional engineer in California.

Mark Gelfand, M.D.
Title of the presentation: How to establish an academia-industry partnership
Bio: Mr. Gelfand has more than 25 years of experience developing medical devices in academic, startup and corporate environments. His expertise is in integrative physiology, systems engineering and intellectual property. With Dr. Levin, he cofounded Axon Therapies, Soffio Medical, Cibiem, CHF Solutions, Ardian and Respicardia and served as the chief technology officer to those ventures. Mr. Gelfand also worked at Nellcor Puritan Bennett, the world’s leading respiratory device company, where he was responsible for the architecture development of a new ICU ventilator platform. Prior to Nellcor, he was co-founder and chief technology officer of CardioLogic Systems Inc., where he was responsible for the development of the Vest CPR device designed to treat cardiac arrest. The successor to that device is now marketed as AutoPulse® by Zoll Medical. From 1987 to 1992, Mr. Gelfand was senior research engineer in the division of cardiology at The Johns Hopkins School of Medicine, responsible for the development of several concept-level medical devices. Mr. Gelfand is an author and co-author of more than 100 issued U.S. patents in the fields of heart failure, resuscitation, sleep apnea and dialysis. He holds master’s degrees in electrical engineering from St. Petersburg Institute of Technology and received graduate-level training in physiology at The Johns Hopkins School of Medicine. Mr. Gelfand is an adjunct associate professor of biomedical engineering at Columbia University, lecturers and mentors students at Mount Sinai and Johns Hopkins Medical Schools and serves on the External Advisory Board of the Johns Hopkins University Center for Bioengineering Innovation & Design.

Michael R. Christensen, J.D.
Title of the presentation: Steps to successful IP filings: provisional patents, utility patents, PCTs, new Fast Track US filings.
Bio: Michael R. Christensen is also a partner in the Medical Device group at Knobbe Martens. While he has helped clients protect a variety of technologies, the majority of his practice focuses on protecting innovation and building patent portfolios for startup medical device clients. The technologies of some representative clients include MRI-compatible infusion pumps and novel devices and therapies for the treatment of stroke, diabetes, atrial fibrillation and back pain. Mr. Christensen also has extensive experience conducting patent due diligence for leading Venture Capital firms and performing IP audits for companies seeking to identify ways to improve their patent portfolios. One of Mr. Christensen’s areas of expertise is developing strategies for expediting patent prosecution both in the United States and abroad.

Yongmin Kim, Ph.D.
Title of the presentation: Technology Commercialization in Academia via Licensing. Even the most promising technologies face numerous obstacles before commercialization. Many die in the valley of death, resulting in lower impact, ineffectiveness and frustration of the stakeholders. Only a few % of innovations made in academia are commercialized. If we could double the current success rate, it would make a huge positive difference around the world.
Bio: Dr. Yongmin Kim is currently Professor of the Department of Creative IT Engineering at POSTECH in Korea. For 29 years from 1982 to 2011, he was Professor of Bioengineering, Professor of Electrical Engineering, and Adjunct Professor of Radiology and Computer Science and Engineering at the University of Washington in Seattle. From 1999 to 2007, he was Professor and Chair of Bioengineering. From September 2011 to August 2015, he was President of POSTECH.  Dr. Kim and his research group made 85 inventions that led to ~70 patents, transferred the invented technologies to industry with 28 licenses, and helped commercialization of these technologies. Dr. Kim received the 2003 Ho-Am Prize in Engineering. In 2005, he received Distinguished Achievement Award from University of Wisconsin. He received IEEE/EMBS Early Career Achievement Award and IEEE/EMBS Distinguished Service Award in 1988 and 2010, respectively. In 2011, he received IEEE EMBS William J. Morlock Award. In 2012, he was selected as the UW Medicine Inventor of the Year.

Organizer I:      Dorin Panescu, Ph.D., FIEEE
Bio: Dr. Dorin Panescu is Vice President, Systems Engineering and IP Strategy, with Advanced Cardiac Therapeutics, Inc. in Santa Clara, CA. Dr. Panescu is inventor on over 155 issued US patents, and on over 100 issued international patents. He has co-authored over 150 technical publications. Dr. Panescu is a Fellow of the IEEE. 

Organizer II:      Dieter Haemmerich, Ph.D.
Bio: Dieter Haemmerich has been actively contributing within EMBS, including chair of the Therapeutic Systems and Technologies Technical Committee (2010 – 2015), and various organizing roles. His research interest is in image-guided therapies, where he published ~90 journal papers and holds 8 patents.