Counsel to Counsel - September 2008 - (Page 14) in the spotlight PAteNt ForwArd: early collaboration yields a winning Portfolio By Steven Andersen ©iStockphoto.com/Dmitriy Shironosov “It’s one of the places they test medical devices,” explains Theodore “Ted” Naccarella, a partner at Saul Ewing. “Just being there for a few hours, watching them work the bugs out of new technology, really helps me understand what’s important—far more than simply reading the invention disclosure.” OK, it’s not just the cadaver lab. But that’s one great example of forward-thinking partnership. That kind of early collaboration between companies and outside counsel can pay great dividends. The client taps patent expertise early in the process, to more effectively capture innovation and steer development. Patent lawyers, meanwhile, gain meaningful insight into the business, the technology in question and its potential A smart patent strategy starts in the cadaver lab. That’s right, the cadaver lab. applications. It’s the kind of teamwork people notice. “I was at a seminar this morning that dealt with what venture capitalists want to see before they invest in a medical device company,” Naccarella continues. “The presenters thought it was important for the product developers to work very closely “I really appreciated how innovative the product was, and what was so different and important about those differences, more than I probably ever would have had I just interviewed the inventor.” with actual physicians, like observing physicians using the product in a cadaver lab, and encouraged them to talk as much as possible with those physicians because they know better than anyone what’s needed and what will work. I would say that the same is true for the patent attorney preparing the appropriate IP assets. I really appreciated how innovative the product was, and what was so different and important about those differences, more than I probably ever would have had I just interviewed the inventor.” Whether conducting brainstorming sessions, partnering with R&D teams or building customized invention-capture programs, the most effective and efficient IP initiatives start early and rely on a lot of communication. Invention Capture “The traditional model is to develop a product, expending significant R&D resources, that fills a need that a company 14 LexisNexis® Martindale-Hubbell® http://www.iStockphoto.com/Dmitriy
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