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IP Strategies for Medical Device Technologies: Be Your Own Incubator

Level: Advanced
Runtime: 92 minutes
Recorded Date: April 02, 2019
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  • Building a Patent Portfolio
  • The Basic Basics
  • First to File
  • Limitations of Confidential Disclosure
  • Building your Portfolio
  • Old way of Protecting IP
  • Rethinking IP
  • Generating an IP Asset Map
  • Overview of IP Due Diligence
  • IP Ownership
  • Patentability
  • Freedom to Operate
  • Other Potential Issues
Runtime: 1 hour and 32 minutes
Recorded: April 2, 2019


This program will outline strategies for medical device entrepreneurs, including tips for successful patent prosecution, licensing, and monetization of patents. Building an IP portfolio that will successfully withstand IP due diligence during fund raising or an exit event such as a merger/acquisition or public offering will also be addressed. You will learn the IP nuances of protecting and launching a medical device in the U.S. and abroad.

This program was recorded on April 2nd, 2019.

Provided By

American Bar Association
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Douglas Portnow

Schwegman Lundberg & Woessner

Doug Portnow is a registered patent attorney and a Principal of Schwegman Lundberg & Woessner. His practice focuses on patent preparation and prosecution, IP due diligence and strategic counseling in the medical device and mechanical technologies.

Prior to joining Schwegman, Doug was a Member at Wilson Sonsini Goodrich & Rosati and an associate at Townsend and Townsend and Crew LLP (now Kilpatrick Townsend & Stockton). Before entering the legal profession, Doug worked for over a decade in the medical device industry holding engineering and management positions at start-ups and publicly traded companies commercializing critical care products, vascular grafts, surgical instruments, stents, stent delivery systems, RF ablation catheters, embolic protection devices, and heart failure implants. Doug has been recognized as a Rising Star by Northern California Super Lawyers.

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Roy P. Díaz, PhD, JD

Associate Vice President and Patent Attorney
L'Oréal R & I USA

Roy D?az is the associate vice-president-patent attorney for L’Or?al R & I USA. He started his career as a patent attorney in one of the top patent law firms in the U.S., Finnegan, Henderson, Farabow, Garrett & Dunner. He then joined Intellectual Ventures where he built and developed patent portfolios mainly in the fields of medical devices, wearable technology, information and communication technology, optics and advanced materials. More recently, in 2012, he co-founded D?az|Cook an IP law firm providing clients counseling on the procurement, enforcement, management, and monetization of intellectual property rights and assets.

After earning his B.S. in chemical engineering at the University of Washington, he enrolled in graduate school where he studied the fast and slow internal dynamics of C-labeled deoxyribonucleic acid (DNA) oligomers in solution. Dr. D?az eventually earned an M.S. and a Ph.D. in physical chemistry (biophysics), as well as a J.D. from the University of Washington.

Dr. D?az was raised and lived in various places including Mexico, Alaska, Hawaii, and Washington D.C., and now calls the Pacific Northwest home. He currently serves as a trustee for Seattle Children’s Hospital Board of Trustees, as a member of the Seattle Children’s Research Institute Advisory Board, and as President of the University of Washington Alumni Association.

Dr. D?az was the recipient of the 2012 Latina/o Bar Association of Washington Model of Excellence Award and the 2011 University of Washington’s MAP Distinguished Alumnus Award.

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Jonathan Feuchtwang

Consulting General Counsel

Jonathan serves as a Consulting General Counsel to a number of startups. He has experience with corporate and employment law, and managing litigation.

His practice is transactional and focuses on developing and executing IP strategy, drafting and prosecuting patent applications, mining existing patent portfolios, freedom-to-operate (FTO) and patentability assessments, providing clients with practical, proactive, and timely services in the areas of competitive analysis and portfolio management through each stage of the product development cycle.

Jonathan's practice is focused on software, AR/VR, mechanical and electro-mechanical devices, and computer hardware. He collaborates with business development to evaluate potential acquisitions and licensing opportunities.

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