Medical device licensing pitfalls to avoid

Marcelo Barros is an attorney at Finnegan, Henderson, Farabow, Garrett & Dunner. [Photo courtesy of Finnegan]

Prevent costly disputes caused by these common mistakes in patent license agreements.

Marcelo Barros, Kathleen Daley, Brian Kacedon and Matthew Ritter, Finnegan

Licensing and other technology transfer agreements can be critical for medical device companies that invest significantly into new technology R&D and seek and obtain intellectual property protection for those investments. But if these agreements are not carefully drafted, they can create more problems than they solve.

To avoid the common pitfalls that tend to create issues in patent license agreements, watch out for a few of the most common mistakes when drafting them.

Common drafting mistakes

First and foremost, license agreements should avoid terms that are ambiguous and vague. Imprecise language can lead to uncertain…

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How to pass the patent eligibility test for Software as a Medical Device

Kathleen Daley is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner. [Photo courtesy of Finnegan]

There’s “significantly more” to it than a good idea for an SaMD algorithm.

Kathleen Daley, Angeline Premraj and Jason Zhang, Finnegan

Technology continues to change the practice of healthcare, and one area where this has become evident is the increasing prevalence of software aimed at healthcare applications. This can include software that is integral to a medical device, software used in the manufacture or maintenance of a medical device, or software that is itself the medical device, also known as Software as a Medical Device (SaMD).

SaMD is an area of tremendous growth in the medical healthcare field. However, there is still significant unpredictability in the patent eligibility of SaMDs. This article provides an overview of the challenges facing the patent eligibility of SaMDs and…

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Supreme Court’s Arthrex decision creates more review for patent owners — and more questions

Angeline Premraj is an attorney at Finnegan, Henderson, Farabow, Garrett & Dunner [Photo courtesy of Finnegan]

A Patent and Trademark Office director confirmation may solve some problems, but it’s not yet clear how discretionary review will continue to evolve.

Angeline Premraj, Troy Viger and Kathleen Daley, Finnegan

The U.S. Patent and Trademark Office’s inter partes review procedure is a popular avenue for challenging the validity of a patent outside of litigation. These procedures are overseen by a panel of three administrative patent judges (APJs) on the Patent Trial and Appeal Board (PTAB) at the Patent Office. In United States v. Athrex, the Supreme Court ruled that the “unreviewable authority” of APJs to conduct adversarial proceedings for challenging the validity of a patent violated the Constitution’s Appointments Clause. The Supreme Court also ruled that the appropriate remedy was to giv…

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Keys to protecting your medtech AI from competitors

AI is a hot area in medtech.  A panel of intellectual property experts had advice on protecting the IP.


[Image from Pixabay]

Between 2002 and 2019, annual AI patent applications more than doubled, and AI patent applications increased from 9% of all patent applications to 16%. AI is a white-hot area for investment and creation of valuable intellectual property, including artificial intelligence related to medical devices.

Protecting medical device-related AI was the topic of a recent episode of MassDevice and Medical Design & Outsourcing’s DeviceTalks Tuesdays, sponsored by Finnegan, a law firm that handles all aspects of IP.

The discussion involved Anthony Del Monaco and Cecilia Sanabria, both partners at Finnegan, and two CEOs of healthcare companies that have developed exciting AI-related IP: Jan De Backer, CEO of Fluidda, a respiratory imaging company, and Todd Usen, CEO o…

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DTW Podcast: Can AI, advanced imaging and robotics “democratize” surgery?

A new generation of digital surgery systems will level the playing field for surgeons giving them artificial intelligence, robotic tools and other assistive technologies.

In three interviews in this week’s DeviceTalks Weekly Podcast, leaders form Asensus, ActivSurgical and Memic explain how their systems will improve surgeon performance, reduce errors, and deliver the “democratization” of surgical robotics.

Guests this week include

Anthony Fernando, CEO of Asensus Surgical (formerly Transenterix), outlines the company’s bid to push its Sehance system as a solution for laparoscopic procedures. Fernando, who took over as CEO in 2019, explains why the company’s stock crashed in 2019 and details the changes that he says has started the company’s turnaround. Senhance offers more responsive surgical tools along with data that will help with surgical training and scheduling.

Todd Usen, CEO of ActivSurgical, left a job he loved at Olympus to lead a compan…

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