CASE I
Cardio Vascular Device
A medical specialist outside the U.S. having an issued patent that relates to cardiovascular devices requires additional technical development in order to improve the value of this innovation to medical device companies.
Response
Identify an expert in field of this development and/or other preeminent specialists to:
- Prepare a working model and animation
- Consult to develop an overall system
- Develop related technology
Requires
Patent licensing the cardiovascular device for further technical development and agreements among funding entities, who include the strategic investor funding the technology innovation in the inventor’s country, and investors in technical development in the U.S.
Patent licensing the cardiovascular device for further technical development and agreements among funding entities, who include the strategic investor funding the technology innovation in the inventor’s country, and investors in technical development in the U.S.
CASE II
Surgical Technique
A medical innovator supported by a strategic investor in a country outside the U.S. develops a new surgical technique.
Response
For this case, which is analogous to the development of laser eye treatment centers, the response is to help the innovator start and operate a facility in his country by identifying a health care service provider capable of supporting pre- and post surgical patient care related to the innovator’s procedure. Next, arrange an agreement with the company identified, which is the largest provider in this field of care in the U.S. In addition, negotiate patent licensing that enables the U.S. company's physicians to work with the technology innovator to further develop pre- and post surgical diagnostic and therapeutic devices and techniques, and design facilities to support the inventor's procedure.
Requires
Patent license agreements, technical development agreements, and an agreement to support expanded operation in the innovator’s home country and promote commercialization of the surgical technique in the U.S.
CASE III
Water Current Energy Technology
A company with initial funding from the U.S. government is involved in development and commercialization of technology that utilizes waterway currents to generate electricity. Corrosion of key components in submerged devices impedes the progress toward utilization of the company’s energy technology.
Response
Identify a university that has expertise developing anti-corrosive nano materials and can provide matching funding for the research.
Requires
Patent license agreement, materials transfer agreement to foreign university, matching funds, and profit sharing from commercialization of a device to be developed having anti-corrosive properties.
Patent license agreement, materials transfer agreement to foreign university, matching funds, and profit sharing from commercialization of a device to be developed having anti-corrosive properties.
CASE IV
FDA Compliant Products
Basic research conducted by a university researcher on the medicinal properties of a substance could lead to patient care outcomes of high value in the researcher's country and worldwide. A U.S. company that wants to expand internationally makes and sells FDA compliant products in the same field the researcher is studying. However, the company’s current product line does not include the substance being studied by the researcher.
Objective
The U.S. company wants to explore developing new FDA compliant products that include the substance under study. The company wants to sell these products in the U.S. and expand its market into the country where the basic research is being conducted.
Requires
Cross patent licensing, a joint product development agreement, agreements with commercialization partners in the country where the researcher’s university lab is located and patent and trademark strategic plans to protect evolving international commercialization plans.
Cross patent licensing, a joint product development agreement, agreements with commercialization partners in the country where the researcher’s university lab is located and patent and trademark strategic plans to protect evolving international commercialization plans.
CASE V
Accelerated Global Patent Plan
University research developed technology with potentially short life span requires an accelerated approach to a global patent process. Using benefits offered by the United States Patent and Trademark Office’s (USPTO) Patent Prosecution Highway (PPH) and other programs. The plan involves filing applications in the U.S. through the Patent Cooperation Treaty and in selected regional and national patent offices in a strategic sequence to optimize opportunities for accelerated examination in target patent offices.
Objective
The objective is to have a substantive number of issued patents prior to the closing of the 30-31 month window for filing national phase applications based on the filing date of a PCT application and to shift expenses for national stage filings to companies and/or partners in multi-national, regional or country applications. With proper planning, this approach can be utilized even for applicants who are not residents or citizens of PCT member states so that they will receive the full benefits of an international patent application.
Requires
Inclusion of patent claims that would increase the chance of being able to participate in the PPH,
selection of an appropriate international search authority, use of programs such as “Interview Before First Action” at the USPTO, and filing of continuation applications to speed up issuance in U.S. and patent offices of importance to the commercialization plan.
