A medical device startup had engaged a leading Intellectual Property law firm to file its initial patent, describing its product and to perform a Freedom to Operate analysis.
While the vendor provided an excellent patent application, by doing so, it neglected to protect the company from future products before reduced to practice, whether from their own development path or from possible competitors,
To begin with, Faros’ FTO search was based not only on the USPTO and products out there. The company performed a comprehensive search of academic papers, FDA filing and clinicaltrial.gov descriptions, thus indicating what companies may possibly have “hidden IP” in this area. Thus, Faros not only provided clearance, but also set up a tracking system for the client to continue monitoring its possible competitors.
When filing the patent application, Faros engaged in a 2-day brainstorming session encouraging the developers to think outside of the box and not only describe their own product but also alternate embodiments and future products.
Furthermore, to save initial cost, Faros decided to secure the priority date by filing a provisional application, followed by a set of such Provisional filings at regular intervals.
