Tactics for Successful Patent Outcomes in the Medical-Device Space

Most effective engineering prototyping involves perseverance for rapid design changes and in-depth failure analysis in order to produce a functioning device. When things go wrong during patent prosecution or patent strategy execution, many times the concerned parties rush to treat the problems at hand in a form of reckless triage rather than methodically trace how the situation arose. In doing so, the situation unfolds with 20/20 hindsight frequently illuminating that subsequent actions taken only made the matter worse. Such patenting mistakes can happen at many stages and levels. Frequently, patent prosecution is an area rife with pitfalls that attorneys often don’t realize are occurring until the problems become insurmountable. Such patent gaffes can relate to misleading terminology, weak claim structure, inadequate assessment of the prior art, and more likely than not, a combination of these missteps. Often, medical-device patents fail to protect a broad scope of protection sufficient to justify investment. Decisions made in application drafting and prosecution can significantly impact the potential value for patent monetization and/or commercialization. Through performing numerous day-to-day operations, medical practitioners typically glean deep insight relating to improved functional performance, which can lead to improved patient outcomes. However, a resulting patent frequently ends up focusing on a narrow set of implementations, without considering other applications. This not only leads to weaker patents, but also may result in preventing a patent grant due to undetected prior-art in neighboring technological areas. This talk covers tactics to employ for handling such issues during all stages of the patent process.