The IP Factor

I travelled up to Haifa to attend the LES event on “Medical devices but not only”.

I want to applaud LES for bravely breaking out of the Tel Aviv – Herzliya region and holding an event elsewhere.

The speakers were all distinguished professionals.   

Adv. Myla Kaplan, Associate General Counsel, Lumenis Inc. spoke about Medical Device Company Contracting Issues, focussing, as would be expected, on lasers. The area is certainly important, though is outside my practice. We do have clients run contracts past us though. It was a competent and thought-provoking lecture that raised intelligent questions from the small (approximately 40) but elite audience of mostly in-house practitioners.  

The most prestigious lecturer was Dr. Ami Altman, Scientific Director, Philips Healthcare who spoke on “New Trends in Medical Imaging as Reflected in Patent Publications During the Last Decade.” Dr Altman’s presentation gave an interesting glimpse into how the large innovative companies see patents as part of their overall business strategy. It was also fascinating to see where CT had come to in recent years. Dr Altman showed images of a hand and peeled away the layers to show the tissue, blood vessels and bones, thereby justifying his contention that diagnostic surgery is a thing of the past. Although, clearly there is still a place for biopsies, but cutting someone open to see what’s inside does indeed seem obsolete.

The final lecturer was Mr. Ohad Mayblum, the Director of IP at Given Imaging who spoke about “Patents and Trade Secrets”. He compared and contrasted the two regimes competently, but had little original to contribute. I did found one insight interesting though. He argued that in contradistinction to patent applications with inventor disclosures, committees and procedures in place for streamlining the process, trade secrets are often more valuable but companies seem to handle ad hoc without established procedures. Dr Altman responded that the patent procedure was essentially a trade secret documentation procedure to the extent that after deciding not to file a patent application (or not to file a regular patent application that publishes) the company does consider academic and defensive publications or if to keep the invention secret.

Ohad went on to compare the proposed US amendments to the patent law to the current text. As an academic exercise as a springboard to discussion, the effort was admirable. I am suspicious of the practical value however since the general informed opinion on the blogosphere seems to be that the final version may change somewhat, that it could take 10 years for the USPTO to implement, and that there are decades of work for trial attorneys and the courts to interpret what the changes really mean.

The refreshments included an eclectic mix of spinach burekas, chocolate chip cookies and fresh fruit. There were soft drinks and milk on the table but no evidence of coffee or tea. I arrived a little late so cannot tell if there had been hot beverages or whether milk was intended to be prescribed neat.

The post lecture chat around the cookies was a useful opportunity to discuss thing issues with friends and colleagues. Participants of our event on Sunday thanked me, and lawyers who registered but due to health and other problems defaulted apologized. One of the university tech transfer people acknowledged receipt of the draft I sent her before hitting the road, that she promised to review the following day.

On leaving the room we found that the corridors and doors all looked rather similar, and, Jeremy pointed out wittily that there was something somewhat amusing in watching the IP counsel for an endoscopy camera-on-pill bump along corridors, take wrong turnings, then descend to the lower regions by peristalsis via elevator before excretion from the building!
  
Although the focus, target audience and rationale were different at each conference, it is, nevertheless, a shame that LES, ourselves and the Israel Patent Office all scheduled events for the same week. This cannot help attendance levels by busy practitioners with tight deadlines.

Congratulations to Hananel Kvatinsky ()rbotech) and Suzanne Erez (IBM) and the LES team for organizing this.

Earlier this evening, I enjoyed a well structured and informative presentation by Adv. Pat O’ Reilly, President of LES International, who stopped off in Tel Aviv on his way back from Turkey. Adv. O’Reilley, who is presumably of Irish Catholic ancestry, is a partner of Finnegan, Henderson, Farabow, Garrett & Dunner, and spoke on “Implementing Open Innovation: Research, Collaboration and Pooling Arrangements”.

Apart from great almond croissants, the main thing I came away with an understanding that when negotiating a collaboration deal between two parties, the details of the deal are up to the sides and do not matter so much as the need to forsee and relate to all possible eventualities.  It also transpires that such deals - often between a small start-up on one side and a big company on the other - are often renegotiated as time passes and the product, market share and other issues become clear.

If I need to recommend a US attorney to handle such issues for a local Israel client, I would unhesitatingly recommend Mr O’Reilley.

I knew that I was previously ill-informed regarding such matters, but thought I knew what a closed pool was. After all, I swim in one in the winter. Apparently, the term is used for pooled patent licenses, and raises various anti-trust issues. We were treated to an overview of such issues, and I learned that in the 19th and early twentieth century, various fields like sewing machines, airplane developments and so on, gave rise to patent pools and to government concerns on anti-trust. Apparently this happened with the Davenport folding beds. One wonders why a monopolistic regime in this niche area for a few years bothered anyone.

It was a good opportunity to see familiar faces. I was narked to see that the BlogMeister and IPKAT, Professor Jeremy Phillips has beaten me to it, blogging during the lecture – see Open licensing: the word according to DPat.

I hope that this versatile feline is unable to lecture and blog at the same time, as he is guest of honour at our trademark event on Sunday, which has had to relocate to a bigger venue, no doubt due to the crowds that Jeremy attracts.