When does disclosing a secret actually help the secret-keeper? In the world of patents and patent protection, it can be a key strategy.
Most entrepreneurs understand that an invention must be truly novel to receive a patent. According to the U.S. Patent and Trademark Office (uspto.gov), an invention cannot be one that has been previously “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
As an example, I once worked at a company that acquired a medical device patent from a physician. The resulting product achieved rapid market penetration, and the physician inventor received substantial royalty payments – until a competitor discovered that the inventor had described the concept to a group of physicians during a Grand Rounds at a small hospital a few days before he had filed the patent. As a result, the patent was invalidated, the competitor began marketing a look-alike product, and the company and inventor had to deal with the rather nasty legal business of all the royalties that had been paid.
You have to be especially cautious to not disclose a patentable idea to anyone before filing a patent, unless your audience has signed non-disclosure agreements in advance. Otherwise, it is considered to be a “public disclosure,” even if it is to one person.
You can, however, use such public disclosures to your advantage. Let’s say you are a start-up company with a patent covering your first product. A common defensive patent strategy is to file additional patents covering improvements and line-extensions to your original patent – a tactic known as the “picket fence.” In this way you create a “fence” surrounding your product, making it much more difficult for competitors to get around your patent.
These new patents are all subservient to your core patent in that they are offshoots of the original and cannot be independently practiced. As a start-up company, however, you may not have the cash to file all these new applications. A well-financed competitor, on the other hand, may decide to file patents covering improvements to your product as an offensive strategy.
By filing enhancements to your original patent, they can create bargaining chips to use with you to negotiate a cross license, giving them the right to your original patent in exchange for you to use their patents covering product improvements. It is a common and effective strategy, but it’s crucial to realize that it can also undermine your company’s competitive advantage.
A simple way to avoid becoming fenced in by a competitor in this way is to publish a description of the improvement in a paper or on your website. If you are not going to file a patent on the improvement, publicly disclose the idea so no one else can patent it. In that case your product would still be protected by your core patent.
The Intellectual Property Pyramid Assessment©, a workbook published by the Pittsburgh Life Sciences Greenhouse, will soon be available to order on Amazon. To sign up to get more details please email email@example.com.
by Marissa Kuzirian, Investment Manager
Any project begins with an idea, the kernel of a concept that you hope pops into something bigger, something better.
The same holds true for those involved in the life sciences. A new treatment or device or biochemical breakthrough begins with a simple idea. It might be to ease patients’ suffering, or to make a surgeon’s task easier and more effective. It could be any number of things.
And, in more instances than one might surmise, that idea could come from a personal experience or connection. Take the case of PECA Labs, run by founder Doug Bernstein, as one example.
PECA Labs, begun in 2012 as a Carnegie Mellon University and University of Pittsburgh spin-off, focuses on pediatric and cardiovascular surgical devices. Its proprietary MASA valve greatly lessens the likelihood of reconstructive surgery later in life for newborns with rare congenital heart defects, like the one suffered recently by the infant son of late-night host Jimmy Kimmel.
Bernstein had a great motivator for delving into research and development of these devices in particular – he had been born with the same kind of congenital heart defect.
“My life was saved, shortly after being born in Los Angeles, by a pediatric cardiac surgeon,” explained Bernstein. “I only survived because a surgeon had been flown in when another baby, born at the same time, had a congenital heart defect. When the doctors realized that I needed the same attention, they called the airport and had that surgeon come back to the hospital before flying off. He saved me, which was so unbelievably lucky because there weren’t many surgeons who could perform that procedure then.
“When I had the opportunity to conduct research and start a company dedicated to addressing this issue, I was eager to do it,” Bernstein continued. “I had the technical experience, passion, and drive, but right out of school, no business experience. If not for the PLSG and the one-to-one help, guidance, and perspective received from the Executive In Residence program there, we could never have advanced to where we are today.”
And it all started with a simple idea – to save and improve the long-term lives of babies born with the same heart defect Bernstein had.
Robots like the healthcare companion Baymax in Disney’s animated film Big Hero 6 are not too far from reality. In fact, the inspiration for the inflated robot physician came from the robotics lab of Pittsburgh’s Carnegie Mellon University. As more industries converge with one another, robotics innovations like Baymax are becoming more and more common in the healthcare and life sciences sectors. Innovators are creating new robotics technologies that could transform the way that we provide health care, treat diseases, conduct research and approach a number of other life science procedures.
The market for medical robotics is opening up too. A recent report estimates that the market for surgical medical robots alone will be over $20 billion by 2021. And in 2014, venture capitalists (VCs) invested over $341 million in robotics, $77 million of that went to medical robotics startups. How will robotics continue to make a mark in healthcare and life science innovation?
Assisting In Surgery
According to the Princeton Journal of Science and Technology,the first robot-assisted surgery actually took place over 30 years ago, in 1985. Medical robotics have come a long way since then. In recent years, robotics have assisted in a number of surgeries in gynecological, gastrointestinal, urological, and other areas. They have been most helpful with highly precise and minimally invasive surgery.
Robotics has allowed surgeons to visualize certain areas of the body more clearly. One of Pittsburgh Life Sciences Greenhouse’s portfolio companies, Medrobotics, is one company that is using robotics to improve how surgical procedures are conducted. Its Flex® System uses surgical robotics with a flexible endoscope technology to enable surgeons to visualize hard-to-see anatomy and perform surgery.
Catalyzing Life Science Research
Robotics have helped life science research companies and other scientists handle and study hazardous materials more efficiently and safely. For instance, a team of scientists from the University of Manchester have developed a robot called Eve that is helping to accelerate the drug discovery process. Eve’s design aims to automate early-stage drug development to make testing new treatments faster and more economical. At a screening rate of over 10,000 compounds per day, the robotic system could help identify new drug candidates for diseases like malaria and Chagas’ disease in record-breaking time.
Interest in telemedicine has surged in recent years. Studies have shown that there is a high level of interest amongst both consumers and healthcare providers and organizations seeking telehealth innovations. According to Software Advice, 75 percent of patients express at least a moderate interest in using telemedicine solutions. When it comes to providers, a 2013 study by Healthcare Intelligence Network found that 67 percent of providers have used telehealth, and 74 percent of them are planning a telemedicine initiative in the next 12 months.
The need for robotics in telemedicine exists now and will likely continue to grow with the market expected to increase at a compound annual growth rate of 18.5 percent through 2018.
But how these robotics technologies are used in healthcare will continue to evolve. Telemedicine robots have been used to help physicians diagnose concussions, increase the productivity of staff in hospitals and clinics and have even helped in slowing the spread of deadly diseases like Ebola. As the technology and automation behind them gets more sophisticated, their possible applications in healthcare are expanding.
Now more than ever before, the healthcare and life science industry is converging with other sectors like technology and robotics. Patients and providers are showing more interest in high-tech tools that have the potential to improve healthcare and life sciences. Both of these factors are igniting a growing entrepreneurial interest in robotics technologies that will ultimately revolutionize the way the current system operates.