Organizers: Dorin Panescu, Dieter Haemmerich, Nitish Thakor, Theodore Papagiannis, Michael Christensen
The workshop provides hands-on experience and information about how to write a patent application covering biomedical technologies and which critical aspects to consider before filing it. In the past few years, the US Patent and Trademark Officer has implemented new rules and offered new fast-track facilities. This change implies that a patent may be issued to whoever filed first, even if someone else invented first. As such filing speed is important, but there may trade-offs to consider between speed and the broadness of a patent application claims. 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)). It is important to understand differences between European and US patents laws. For example, certain kinds of method claims are fileable in the US but not in the EU.
The workshop is intended for students, post-graduates, faculty, BMEs from academia and from the industry. It will cover the elements of patent applications, focus on writing claims, with emphasis on US and EU patent rules, and teach how to do effective prior art search, available search tools and how to find official patent office examination information on existing prior art of interest. Attendees will have a chance to write the skeleton of their own patent application during the workshop. Licensed patent attorneys will be on the panel.
List of Speakers
Dorin Panescu, HeartBeam, Inc., Santa Clara, CA, USA
How to translated biomedical-technology ideas into valuable patents
Dr. Dorin Panescu, is Chief Technical Officer and Vice President, Research and Development, with HeartBeam, Inc., Santa Clara, California, USA. Dr. Panescu’s research interests focus on devices for cardiac ablation, pacing, defibrillation, diagnosis and therapy delivery. Dr. Panescu is inventor on over 160 issued US patents, and on over 150 issued international patents. He has co-authored over 150 technical publications. He earned his Ph.D. and M.S. degrees in Electrical and Computer Engineering from the University of Wisconsin at Madison. He held various offices with the IEEE Engineering in Medicine and Biology Society (EMBS), such as Chair of the Industry Relations Committee and past Chair of the Therapeutic Systems and Technologies Technical Committee. Dr. Panescu is the recipient of the 2002 IEEE EMBS Early Career Achievement Award and of the 2009 IEEE EMBS Professional Career Achievement Award. He is a Fellow of the IEEE.
Theodore G. Papagiannis, Knobbe Martens, Irvine, CA, USA
Patent law updates, avoiding common mistakes, US vs. International protection
Mr. Theodore G. Papagiannis, J.D., 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.
Nitish V. Thakor, National University of Singapore, Johns Hopkins University
Technology transfer in biomedical innovation.
Prof. Nitish V. Thakor is the Director the Singapore Institute for Neurotechnology (SINAPSE) at the National University of Singapore, as well as Professor of Electrical and Computer Engineering and Biomedical Engineering at NUS. He maintains his position as a Professor of Biomedical Engineering, Electrical and Computer Engineering and Neurology at Johns Hopkins University in the USA. Dr. Thakor’s technical expertise is in the field of Neuroengineering, including neural instrumentation, nuromorphic engineering, neural microsystems, optical imaging of the nervous system, neural control of prosthesis and brain machine interface and cognitive engineering. He has pioneered many technologies for brain monitoring to prosthetic arms and neuroprosthesis. He is an author of more than 370 refereed journal papers, more than a dozen patents, and co-founder of 3 companies. He is currently the Editor in Chief of Medical and Biological Engineering and Computing, and was the Editor in Chief of IEEE TNSRE from 2005-2011 and presently the EIC of Medical and Biological Engineering and Computing. Dr. Thakor is a recipient of a Research Career Development Award from the National Institutes of Health and a Presidential Young Investigator Award from the National Science Foundation, and is a Fellow of the American Institute of Medical and Biological Engineering, IEEE, Founding Fellow of the Biomedical Engineering Society, and Fellow of International Federation of Medical and Biological Engineering. He is a recipient of the award of Technical Excellence in Neuroengineering from IEEE Engineering in Medicine and Biology Society, Distinguished Alumnus Award from Indian Institute of Technology, Bombay, India, and a Centennial Medal from the University of Wisconsin, School of Engineering. He has given more than 100 invited, keynotes and plenary talks, and was the Chair of the IEEE Grand Challenges in Life Science Conference in 2013, IEEE BIOROB conference in Singapore in June 2016 and the Gordon Conference on Advanced Health Informatics in Hong Kong in July 2016.
Michael R. Christensen, Knobbe Martens, Irvine, CA, USA
Steps to successful IP filings: provisional patents, utility patents, PCTs, new Fast Track US filings
Mr. Michael R. Christensen, J.D., 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..
Dieter Haemmerich, Medical University of South Carolina
Intellectual Property aspects related to successful applications for SBIR grants
Prof. Dieter Haemmerich is a Professor at the Medical University of South Carolina. Dr. Haemmerich has extensive expertise in the field of computational modeling of drug delivery systems, of modeling biophysical effects during tissue heating and in the design of novel medical devices and instrumentation for measurement of electrical and thermal properties. Specifically, his research focuses on the development of temperature-sensitive liposomes in combination with thermal therapies. He 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. Dr. Dieter Haemmerich received his Ph.D. degree from the University of Wisconsin at Madison and his D.Sc. degree from the Technical University, Vienna, Austria. He is President of Society for Thermal Medicine, Fellow of Heart Rhythm Society and Member of National Academy of Inventors.