This post is part of our Ask Me Anything series “IP Law for Femtech Founders” with Marshall, Gerstein & Borun Giordana Mahn.

What IP mistakes do you see early-stage companies in the health space make? What pitfalls should I avoid?

There are a number of pitfalls you should be wary of.  One of the most important issues is not filing a patent application with the patent office on time.  You have only one year from your first public disclosure of your technology to protect an invention in the US, and many foreign countries require that a patent application be filed somewhere in the world before even the first publication or other disclosure.  A public disclosure can include a conversation with friends, displaying your technology at a booth at a tradeshow, presenting a poster presentation at a symposium, or even using your technology in public (even if people don’t know you are using it!).  

Another pitfall may be investing a lot of capital in manufacturing a product before doing a freedom to operate search.  For example, we routinely prepare a freedom-to-operate search and opinion for clients before they start manufacturing their product to make sure the space is clear to manufacture their product without the fear of infringing an existing patent.

A similar pitfall, is failing to search the prior art before investing in the preparation and filing of a patent application.  We also routinely prepare patentability searches to make sure that there is an opportunity to file a patent application on the specific technology.  A patentability search can help determine whether a patent application is even economically feasible.  The consequences of not doing a search could be running into a patent application on the same subject matter during patent prosecution after a significant investment has been made in intellectual property or bringing a product to market.  

With that in mind, it is also important to disclose to the Patent Examiner (usually through your patent attorney or patent agent) any prior art you are aware of that might be material to patentability of your invention, as there is an affirmative duty to do so.  In fact, intentionally concealing material prior art can render a resulting patent unenforceable.

DISCLAIMER:  These comments do not necessarily reflect the views of Giordana Mahn’s firm of Marshall, Gerstein & Borun or its clients, and should not be relied upon as legal advice for any particular situations.  Providing these responses is not intended to and should not be considered as reflecting an attorney-client relationship.

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