4
Intellectual Property Approaches To Safeguard Value Program Descripon Trademark protecon Robert Adelson will discuss development and use of trademarks as business assets and safeguard- ing their value in medical device and life sciences product and service businesses and product lines including: • Value of choosing “suggesve” brand names for businesses, products and services • Benefits of availability searches and then seeking Federal protecon • Protecng of brand names in use and those desired on an Intent To Use (ITU) basis • Costs and benefits in safeguarding trademarks • Pialls to avoid loss of trademark protecon Patent protecon Kirk Teska will present an intellectual property case study of a medical device which will demonstrate: • An outline of the problem and need solved by a medical device company • The soluon to problem • The product developed • Strategy and plan developed for patent protecon including: – Early intervenon – Searching – Planning – Budget Upcoming Events Wed, Oct 22 5:30 - 8:00 PM MDG Entrepreneur & Clinical SIG Keys to Successful (And Somemes Not) Medical Device Startups (Constant Contact) Thurs Oct 30 11:30 AM – 5:00 PM Joint MDG-FDA Medical Device Workshop Working Together – Keeping Informed (Constant Contact) Wed Nov 5 5:30 8:30 PM Forum: Opcal Cancer Detecon: 20 years of Lessons Learned and 20 Years Of Future Promise (Constant Contact) Trademarks, Patents, and Trade Secrets. The three key areas of intellectual property protecon that may be used to safeguard the value of your medical device company. Wednesday Oct 1, 2014 October FORUM Meeng Agenda: 5:30 - 6:15 Arrival, Networking & Dinner 6:15 - 6:30 Announcements & Introducons 6:30 - 7:30 Speakers 7:30 - 8:00 Q&A 8:00 - 8:30 More Networking Trade Secrets Somemes patent protecon is not the best solu- on to protect a medical device or medical soſt- ware. Dr. Stanley F. Chalvire will discuss: • Trade Secrets and the protecons they can provide • Disnguish Trade Secrets and Patents • Discuss Strategic Consideraons to Maintain Trade Secrets Premier Sponsors opmum-tech.com Design and Development of Opcs-based Medical Devices nextstagesoluons.com The GPS of finance™ your partner in growth

Intellectual Property Approaches To Safeguard Value · 2018-04-02 · • Benefits of availability searches and then seeking Federal protection • Protecting of brand names in use

  • Upload
    others

  • View
    0

  • Download
    0

Embed Size (px)

Citation preview

Page 1: Intellectual Property Approaches To Safeguard Value · 2018-04-02 · • Benefits of availability searches and then seeking Federal protection • Protecting of brand names in use

Intellectual Property Approaches To Safeguard Value

Program DescriptionTrademark protection Robert Adelson will discuss development and use of trademarks as business assets and safeguard-ing their value in medical device and life sciences product and service businesses and product lines including:

• Value of choosing “suggestive” brand names for businesses, products and services

• Benefits of availability searches and then seeking Federal protection

• Protecting of brand names in use and those desired on an Intent To Use (ITU) basis

• Costs and benefits in safeguarding trademarks

• Pitfalls to avoid loss of trademark protection

Patent protection Kirk Teska will present an intellectual property case study of a medical device which will demonstrate:

• An outline of the problem and need solved by a medical device company

• The solution to problem

• The product developed

• Strategy and plan developed for patent protection including:

– Early intervention – Searching – Planning – Budget

Upcoming EventsWed, Oct 22 5:30 - 8:00 PM MDG Entrepreneur & Clinical SIG Keys to Successful (And Sometimes Not) Medical Device Startups (Constant Contact)

Thurs Oct 30 11:30 AM – 5:00 PM Joint MDG-FDA Medical Device Workshop Working Together – Keeping Informed (Constant Contact)

Wed Nov 5 5:30 – 8:30 PM Forum: Optical Cancer Detection: 20 years of Lessons Learned and 20 Years Of Future Promise (Constant Contact)

Trademarks, Patents, and Trade Secrets. The three key areas of intellectual property protection that may be used to safeguard the value of your medical device company.

Wednesday Oct 1, 2014

October FORUM

Meeting Agenda:5:30 - 6:15 Arrival, Networking & Dinner

6:15 - 6:30 Announcements & Introductions

6:30 - 7:30 Speakers

7:30 - 8:00 Q&A

8:00 - 8:30 More Networking

Trade Secrets Sometimes patent protection is not the best solu-tion to protect a medical device or medical soft-ware. Dr. Stanley F. Chalvire will discuss:

• Trade Secrets and the protections they can provide

• Distinguish Trade Secrets and Patents

• Discuss Strategic Considerations to Maintain Trade Secrets

Premier Sponsors

optimum-tech.com

Design and Development of Optics-based Medical Devices

nextstagesolutions.com

The GPS of finance™ your partner in growth

Page 2: Intellectual Property Approaches To Safeguard Value · 2018-04-02 · • Benefits of availability searches and then seeking Federal protection • Protecting of brand names in use

Roy Coleman Biomedical engineer and patent attorney practicing at Iandiorio Teska & Coleman LLP in WalthamMr. Coleman’s practice specializes in developing intel-lectual property strategies for his clients including preparation and prosecution of patent and trademark applications, patent infringement, validity, and freedom to operate opinions and patentability search requests.

Prior to attending law school, Mr. Coleman worked for two years as biomedical research engineer investigating ultrasound back-scattering from spherical tumors and has over ten years experience as a software engineer. Mr. Coleman is the Director of Programming for the Boston Chapter of the Biomedical Engineering Society, Chair of the Entrepreneurial Medical Development Group SIG, and member of the board of the North Shore Technology BioScience Group.

Robert Adelson Business and tax attorney and partner at Engel & Schultz LLP in BostonRob has been an attorney for over 30 years specialized in business, tax, stock and options, employment, contracts, financings, trademarks and intellectual property. He joined his present firm in 2004 and represents entrepreneurs, start-ups and small companies, independent contractors and employees and executives, mainly in technology based in life science fields including medical device.

He speaks frequently on business law topics and has authored numerous articles published in Boston Business Journal, Mass High Tech, Genetic Engineering News and other publications. Rob has been on the ENET Board since 2002 and Chairman since 2009 and is also a Co-Founder and Board member of the 128 Innovation Capital Group. He holds a B.A., summa cum laude, from Boston University, a J.D., law review, from Northwestern University (Chicago), and a LL.M. from New York University in Taxation.

Stanley F. Chalvire Registered Patent Attorney at Morse, Barnes-Brown & PendletonDr. Stanley F. Chalvire is a Registered Patent Attorney, specializing in patent prosecution, the licensing of intellectual property and related counseling. Stan focuses his practice on counseling clients in developing and implementing strategies to protect their intellectual property, particularly in areas relating to pharmaceu-ticals, biotechnology and medical devices, as well as advising clients with respect to freedom-to-operate and related clearance studies.

Before joining MBBP, Stan practiced as in-house Intellectual Property Counsel, representing a NASDAQ-listed pharmaceutical company. Prior to beginning his legal career Stan practiced as a Registered Pharmacist in both hospital and clinical settings. He is a graduate of Massachusetts College of Pharmacy and Health Sciences holding the degrees of B.S. in Pharmacy and Doctor of Pharmacy. He earned his J.D. from Suffolk University Law School, where he successfully completed the Health and Biomedical Law academic concentration, focusing his legal studies on matters which are pertinent to clients in the life sciences, pharmaceutical and medical device industries.

Kirk TeskaManaging partner of Iandiorio Teska & Coleman LLPHe has over 20 years of intellectual property law experience and teaches patent law at Suffolk University Law School. He specializes in patents landscape analysis, patent portfolio development and management, trademarks, copyrights, trade secrets, licensing, litigation of intellectual property matters, employee and consultant contracts, confidential disclosure agreements, government contracts, and other related areas of intellectual property. His clients include startup companies, military engineering firms and larger

corporations. He is a regular columnist for Mechanical Engineering Magazine and IEEE Spectrum.He co-authored a chapter in two books:: “The Portable MBA in Entrepreneurship” and “Entrepreneurship” (John Wiley & Sons) and wrote “Patent Savvy” (2007, Nolo Press) and “Patent Management” (2010, ASME). Mr. Teska was a Director of SBANE and a past Chairman of the IEEE Entrepreneurs’ Network. His degrees are: a Bachelor’s in Mechanical Engineering, a Master’s in Systems Management, and a Juris Doctorate. He is a member of the patent bar, the Massachusetts bar, and New Hampshire bar.

Panelists

Moderator

Co-Champions for this ForumRob Adelson, Business and tax attorney and partner at the Boston law firm of Engel & Schultz LLPRoy Coleman, Managing partner of the law firm, Iandiorio Teska & Coleman LLP

Page 3: Intellectual Property Approaches To Safeguard Value · 2018-04-02 · • Benefits of availability searches and then seeking Federal protection • Protecting of brand names in use

MDG BostonWe would like to thank the hundreds of volunteers who help to make this organization a success.

Sponsors

MDG Officers, 2013-2014President Stephen Amato [email protected] Jerrold M. Shaprio, PhD [email protected] Treasurer Peter Fuchs [email protected]

MDG Board of DirectorsPaul Hartung [email protected] Madras [email protected] McIlhargey [email protected] Lisa Sasso [email protected] Sherman [email protected] Xia [email protected]

MDG Special Interest Groups Marketing & Sales SIG John Knott [email protected] Development SIG Michael Aprea, Co-Chair [email protected] Pelletier, Co-Chair [email protected] & Clinical Roy Coleman [email protected]

bridgemedica.com We get you there….Product

Development, Manufacturing & Regulatory Affairs

coghlincompanies.com/cogmedix Medical Technology Brought to

Life | FDA compliant medical device contract manufacturer

Product Development for the

Medical Industry

farmpd.com Product Development for Medical, Life Sciences & Consumer Health

foleyhoag.com

g-cpa.com

goodwinprocter.com

intertek.comQuality and Safety Solutions

MDG Committee Co-ChairsProgram Central Ed Dolan, Co-Chair [email protected] Berkowitz, Co-Chair Networking [email protected] Mills, Co-Chair Networking [email protected] Operations David Ennen [email protected] Paul Hartung [email protected] & Alliances Alan Kivnik [email protected] Joe Berkowitz [email protected] Nugent [email protected] Sherman [email protected]/Resources

Marie Cloutier (Membership) [email protected] Jeff Karg (Program Central) [email protected] Sean Phillips (Membership) [email protected] Rijk (Membership) [email protected] Tom Rose (Membership) [email protected] Science Nation: Dennis Ford,CEO, Jack Fuller, Bus Dev’t, [email protected]

FoleyHoag: David Pierson, Partner; Claire M. Lawless

MDG StaffDirector of Operations William Munger [email protected]

MDG ConsultantsCPA Andrew S. GoloboyAdmin Support Patti Clark [email protected] Design Bill Denison [email protected]

Page 4: Intellectual Property Approaches To Safeguard Value · 2018-04-02 · • Benefits of availability searches and then seeking Federal protection • Protecting of brand names in use

About MDG BostonMDG is the professional association for career building, knowledge acquisition and mutual support for New England medical technology professionals.

MDG sponsors Forums, Networking, SIGs (Special Interest Groups), Workshops and Special Events where diverse industry leaders can share their experience and knowledge as presenters and one-on-one.

provenprocess.com Engineered from Concept to

Customer™

Sponsors

sunriselabs.com

ximedca.com

Media Sponsors

medsmagazine.com

massdevice.com

MDG Boston 2014-2015 Program Calendar

Forum Panels (Location: Constant Contact Headquarters, Waltham, unless noted otherwise)

Sept 10 Bringing Bionics To Life Co-Champions: Kevin Franck, Dan Healey

Oct 1 Intellectual Property Approaches To Safeguard Value Co-Champions: Rob Adelson, Roy Coleman, Stanley Chalvire

Nov 5 Optical Cancer Detection: 20 years of Lessons Learned and 20 Years Of Future Promise Co-Champions: Bob Andrews, Randy Chinnock

Dec 3 The Radical Transformation of Healthcare: The Rise Of Virtual Care Delivery Co-Champions: Kevin Fickenscher, MD, Shankar Krishnan, MD

Jan 7 Making Medical Technology More Human Co-Champions: Mike Wiklund, Sean Phillips

Feb 4 Devices And Combination Products For Neurodegenerative Disease Co-Champions: Paul Hartung, Richard O’Brien

Mar 4 Combination Devices: Diversity In Type And Application Co-Champions: John O’Gara, Rich Andrews

Apr 1 The Surgical Suite Responds to the New Business Model of Healthcare Co-Champions: Bill McIlhargey, Melvin Prenovitz

May 6 Advancing Women’s Health: Gender Centered Treatments for What Worries Women Co-Champions: Anna Xia, Jerry Shapiro

June 3 Keep It Agile – Keep It Legal Co-Champions: Eric Poole, Jeff Karg

Member NewsMDG welcomes these new members:

Lawrence C. Pieper Mark Emery Meenajshi Pandey Rodolfo Archbold Jack Beszczak Tun Liu Gang Li Yan Liu Nancy Teasdale Kristian DiMatteo Denny Lo Arthur Leary John Rosala Jennifer Kamerman

In addition, we welcome back those who have renewed their MDG membership:

Sean Phillips Jennifer Anderson John Merhige Ian Mcrury David Bonneau John Vittal Jerrold Shapiro Bruce Horwitz John Gillespie Alan Kivnik Charisse Sebastian Joyce College

microtestlabs.com

ronaldtrahan.comBuilding Media and Investor

Relationships in Medical Technology Sector

toxicon.com Your full service preclinical

contract research organization