Strengthening a Patent Portfolio by Smart Patent Procurement
Authors: Bookoff Leslie I. , Melwani Dinesh N. 
Published: February 2010

Medical device developers frequently invest enormous amounts of money and inventor hours to develop and commercialize new devices and treatments. Once commercialized, however, these devices and treatments often can be duplicated by competitors for a fraction of the initial investments. A strong patent portfolio protects these investments by deterring the manufacture, sale, and importation of unauthorized duplications. In addition, a strong patent portfolio can capture venture capital interest and increase a company’s market value. Medical device developers should employ prudent defensive and offensive patent strategies during the early stages of product development. Such strategies not only provide for an effective defense against unauthorized product duplication but also increase the value of their products. This presentation will provide insights into building a strong patent portfolio that can withstand the attacks of competitors. In particular, this presentation will discuss various effective strategies that include: • Timely Invention Capture and Patent Filings — + Discover the activities that can cause an unintentional loss of patent rights and how to avoid them. + Learn the necessary recording and documentation of inventive activity needed to prevail in litigation. + Hear how patents can help you control a competitor’s ability to improve their products by obtaining blocking patents. • Creating a Valuable Application Disclosure — + Use your technical expertise to help your patent attorney fully disclose your invention and all conceivable variations and modifications. + Know why the Patent Office requires disclosing the “best” way of practicing your invention, and how failing to do so can affect your patent rights. • Obtaining Commercially Significant Claims — + Consider what it will take to prove infringement of your claims. + Ensure your claims target as many infringers as possible through the use of various claim types and scope. + Be certain your claims account for future improvements or “design-arounds” to your product. + Ensure your patent attorney is aware of the competition and has drafted claims that cover their devices and foreseeable enhancements. • Inventorship and Ownership — + Understand improper inventorship and how it can destroy patent rights. + Find out who is an “inventor” and how to determine inventorship. + Ensure your company owns the rights to a patent. • Avoiding Patent Procurement Pitfalls — + Learn about the Patent Office’s “Duty of Disclosure” and who must comply. + Ensure your compliance with the “Duty of Disclosure.” + Understand how inventor and corporate failure to comply with the “Duty of Disclosure” can destroy patent rights. In summary, building a strong patent portfolio in concert with a company’s business objectives is imperative in today’s technologically complex and rapidly changing economy. Many successful companies understand that a strong patent portfolio, which protects core technologies and contains offensive and defensive patents, can provide a competitive advantage in the marketplace. By employing the strategies in this presentation, a company can build a strong patent portfolio that reflects present and future business goals and enhances the value of the company.