Medical Device Companies Must ID Intellectual Property Pitfalls Before Collaborating, Wolf Greenfield's Ferraro Writes in MX

BOSTON, MA--(Marketwire - January 27, 2009) - Medical device companies entering collaborations or joint ventures must make smart decisions about thorny intellectual property issues before joining forces with another company or university, Neil P. Ferraro, a shareholder with Wolf, Greenfield & Sacks, P.C., a Boston IP law firm, writes in MX: Issues Update, the monthly e-newsletter of MX magazine.

Kicking the IP tires before doing a deal is crucial, he writes.

"A prospective partner may boast about its IP position, suggesting that its medical device patents will prevent others from competing in the area in which the executives' company intends to make significant investments," Ferraro points out. "However, that is only one piece of the puzzle, and highlights a common misperception. Although a company may think that it is free to use a technology it has licensed, there may be third-party blocking patents covering some aspect of the technology."

Also find out if the prospective partner is the sole owner of the technology, he advises. This isn't always the case. A doctor inventor who retains certain rights may be free to license his patent to a competitor.

A prior agreement concerning ownership of future IP is critical. Not only should it spell out who can control the assets, but the existence of the agreement can prove beneficial during patent prosecution by taking advantage of the Cooperative Research and Technology Enhancement (CREATE) Act of 2004, he points out.

For instance, a company develops a new medical device based on a university's existing patents. The two parties collaborate and jointly develop new intellectual property, and the company applies for a patent. Absent a joint collaboration agreement that takes advantage of the CREATE Act, the prior university work can be prior art, preventing the company from patenting its new device.

The full article can be read online at http://devicelink.com/mx/issuesupdate/08/12/Ferraro.html.

Ferraro is a member of the Wolf Greenfield's mechanical technologies and licensing and transactions groups. He co-chairs the Boston Patent Law Association's medical device committee.

MX covers business strategies for medical technology executives.

Wolf Greenfield, the largest law firm in New England devoted exclusively to intellectual property law, serves companies that make everything from pharmaceuticals to software to electronics to snowboards, as well as representing academic research centers. The firm counsels clients in the areas of patents, trademarks, copyrights, designs, trade secrets, and related licensing and litigation. Web: www.wolfgreenfield.com

Contact Information: Contact: Henry Stimpson Stimpson Communications 508-647-0705 HStimpson@StimpsonCommunications.com Sara Crocker Wolf Greenfield 617-646-8231 scrocker@wolfgreenfield.com