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Medical Device Intellectual Property

Wednesday, April 11, 4:00-5:30
Meridian Ballrooms 4, Graduate Minneapolis

Organizer: Vaughn Schmid, Assistant Technology Portfolio Manager, Office for Technology Commercialization, University of Minnesota

"Current Trends in Patent Examination at the USPTO"
Linda Dvorak, Supervisory Patent Examiner, US Patent & Trademark Office

"Tools You Can Use: Commercially Available vs. Patentable"
Amy Salmela, Shareholder, Patterson Thuente IP

"Patent Eligible Subject Matter: Drafting and Prosecuting Medical Device Patents in View of Alice/Mayo"
Kent Sieffert, Principal, Shumaker and Sieffert, P.A.

"Successfully Navigating IP Diligence"
Scott Smith, Partner, Merchant & Gould P.C.


Session Abstract:

When it comes to innovation in medical device technologies, Intellectual Property protection can be paramount to success and developing a strong IP strategy is a key consideration for inventors and businesses alike. What is (and isn’t) patentable? How does the USPTO examine patent applications? What are some strategies for protecting medical device IP? Join us for a discussion of these questions and more, led by our panel of experienced IP specialists.


Session Organizer Bios:

Vaughn Schmid, Assistant Technology Portfolio Manager, Office for Technology Commercialization, University of Minnesota
Vaughn is a Technology Portfolio Manager for the University of Minnesota's Office for Technology Commercialization, where he works with faculty and researchers to evaluate and protect the IP generated here at the University. Prior to joining the University of Minnesota, Vaughn received his J.D. from the University of Wisconsin Law School, focusing on intellectual property and business law


Speaker Bios:

PH-FMLinda Dvorak, Supervisory Patent Examiner, US Patent & Trademark Office
Linda Dvorak attended The Catholic University of America for two years before graduating from the University of Maryland with a Bachelor of Science in Engineering degree. While in college, she completed internships with both the Army at the Ballistics Research Lab and the Navy at the David Taylor Research Lab wherein she co-authored two publications. In industry, she worked for a biomedical engineering firm in developing instrumentation such as a pulse oximeter and a blood pressure monitor. Linda joined the Patent and Trademark Office in 1990 as an examiner in the medical related arts. She was granted Full Signatory Authority in 1995. During her career, Linda has served on career development details to PCT and to the Board of Patent Appeals and Interferences where she drafted opinions and performed legal research. Ms. Dvorak was awarded the Department of Commerce Bronze Medal Award in 1998, the Exceptional Career Award in 2004, and the Distinguished Career Award in 2013. She has been a Supervisory Patent Examiner for 19 years in the electrosurgical technology area. Linda lives in Baltimore with her husband and 5 children.

Amy Salmela, Shareholder, Patterson Thuente IP
Amy Salmela is a shareholder at Patterson Thuente IP. As a registered patent attorney and electrical engineer, Amy’s practice focuses on patent prosecution for medical devices and technology; telecommunications; and electronics and electromechanics. Her practice includes strategic IP portfolio growth and management for clients that range from start-ups to multi-national Fortune 500 and FTSE 100 corporations.

Kent Sieffert, Principal, Shumaker and Sieffert, P.A.
Kent is a Principal and Founder of Shumaker & Sieffert, which has grown to one of the largest patent prosecution firms in the country. Kent's practice includes all facets of patent prosecution, patent portfolio counseling, clearance analysis and freedom to operate opinions. As an MSEE and prior software engineer, Kent specializes in complex electrical, software and medical device technologies. Kent has been an adjunct Professor of Law at the University of Minnesota Law School since 2001, where he teaches advanced courses on US and international patent practice.

Scott Smith, Partner, Merchant & Gould P.C.
As an M.D. and registered patent attorney, Scott has spent nearly two decades advising medical device companies and the investors who fund them. Having worked as both outside counsel to companies in all stages of development and in-house counsel at several highly successful medical device companies, Scott brings an insider’s perspective and unique skill set to his medical device clients. He has witnessed, first hand, what makes medical device companies succeed, and he leverages this experience to provide practical advice and strategic insights, tailor-made for each client’s needs.


Presentation Abstracts:

"Tools You Can Use: Commercially Available vs. Patentable"
What do you do when a medical device or tool you need is not commercially available but also already publicly disclosed or patented? This presentation will discuss this conundrum and offer practical advice to get you the tools you can use.

"Patent Eligible Subject Matter: Drafting and Prosecuting Medical Device Patents in View of Alice/Mayo"
What exactly is patentable?  Developing valid and enforceable patent portfolios in the medical device industry can be very challenging given the evolving law regarding subject matter eligibility.  In his presentation, Kent will spotlight current legal trends and provide a series of practical tips and practice points geared toward managers, inventors and IP professionals in the medical device industry.  The presentation will include case studies applying the current state of the law and practical tips to disruptive technologies in the medical industry, including additive manufacturing (3D printing) and blockchain technologies.

"Successfully Navigating IP Diligence"
I will touch on the three main parts of any IP diligence: freedom to operate, patent protection, and IP ownership. I will also discuss the IP diligence process and how to avoid common mistakes.


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