• Login
    • Join
  • FOLLOW:
  • Subscribe Free
    • Magazine
    • eNewsletter
    Checkout
    • Magazine
    • News
    • Opinions
    • Top 30
    • Research
    • Supply Chain
    • Device Sectors
    • Directory
    • Events
    • Resources
    • Microsites
    • More
  • Magazine
  • News
  • Opinions
  • Top 30
  • Research
  • Supply Chain
  • Device Sectors
  • Directory
  • Events
  • Resources
  • Microsites
  • Current / Back Issues
    Features
    Editorial
    Digital Edition
    eNewsletter Archive
    Our Team
    Editorial Guidelines
    Reprints
    Subscribe Now
    Advertise Now
    Top Features
    Pharmaceutical Focus: A Look at Combination Products

    The Printed World: Additive Manufacturing in Medtech

    The Lost Year: 2020 Year in Review

    Extrusion Evolution

    Little Big Parts: Micromolding Under the Microscope
    OEM News
    Supplier News
    Service / Press Releases
    Online Exclusives
    Press Releases
    People in the News
    Product & Service Releases
    Supplier News
    Medtech Makers
    Technical Features
    International News
    Videos
    Product & Service Releases
    Live From Shows
    Top News
    Twist on Heart Valve Design Boosts Blood Flow, Prevents Clots

    FDA Clears 3D Acellular Dermal Matrix

    Inogen to Undergo Leadership Transition

    Asia-Pacific Advanced Wound Management Market to Undergo Robust Expansion

    Butterfly Network Appoints New Leader
    From the Editor
    Blogs
    Guest Opinions
    Top Opinions
    Pharmaceutical Focus: A Look at Combination Products

    The Printed World: Additive Manufacturing in Medtech

    The Lost Year: 2020 Year in Review

    Extrusion Evolution

    Little Big Parts: Micromolding Under the Microscope
    Top 30 Medical Device Companies
    Market Data
    White Papers
    Top Research
    Fixing Face Mask Form and Function

    The Heart of the Matter: Trends in Cardiology

    Virtually the Same? The Challenges of Online Conferences

    Digital Health Delivers During a Year for the Ages

    Advanced Technology for Staking and Swaging Medical Plastics
    3D/Additive Manufacturing
    Contract Manufacturing
    Electronics
    Machining & Laser Processing
    Materials
    Molding
    Packaging & Sterilization
    R&D & Design
    Software & IT
    Testing
    Tubing & Extrusion
    Cardiovascular
    Diagnostics
    Digital Health
    Neurological
    Patient Monitoring
    Surgical
    Orthopedics
    All Companies
    Categories
    Company Capabilities
    Add New Company
    Outsourcing Directory
    MW Life Sciences

    K-Tube Technologies

    Unicep

    Medicoil

    Element
    MPO Summit
    Industry Events
    Webinars
    Live From Show Event
    Industry Associations
    Videos
    Career Central
    eBook
    Slideshows
    Top Resources
    Meeting Critical Ventilator Product Requirements Amid Pandemic

    Impact of COVID-19 on the Medtech Supply Chain

    Finding the Upside to a Challenging Year

    Preparing Your Design Controls for FDA Approval

    A 'Trial and Error' Approach to Micromolded Parts
    Companies
    News Releases
    Product Releases
    Press Releases
    Product Spec Sheets
    Service Releases
    Case Studies
    White Papers
    Brochures
    Videos
    Outsourcing Directory
    Medbio LLC

    K-Tube Technologies

    FUTEK Advanced Sensor Technology Inc.

    PTI Engineered Plastics Inc.

    Unicep
    • Magazine
      • Current/Back Issues
      • Features
      • Editorial
      • Columns
      • Digital Editions
      • Subscribe Now
      • Advertise Now
    • News
    • Directory
      • All Companies
      • ALL CATEGORIES
      • Industry Associations
      • Company Capabilities
      • Add Your Company
    • Supply Chain
      • 3D/Additive Manufacturing
      • Contract Manufacturing
      • Electronics
      • Machining & Laser Processing
      • Materials
      • Molding
      • Packaging & Sterilization
      • R&D & Design
      • Software & IT
      • Testing
      • Tubing & Extrusion
    • Device Sectors
      • Cardiovascular
      • Diagnostics
      • Digital Health
      • Neurological
      • Patient Monitoring
      • Surgical
      • Orthopedics
    • Top 30 Company Report
    • Expert Insights
    • Slideshows
    • Videos
    • Podcasts
    • Resources
    • eBook
    • Infographics
    • Whitepapers
    • Research
      • White Papers
      • Case Studies
      • Product Spec Sheets
      • Market Data
    • MPO Summit
    • Events
      • Industry Events
      • Live From Show Events
      • Webinars
    • Microsite
      • Companies
      • Product Releases
      • Product Spec Sheets
      • Services
      • White Papers / Tech Papers
      • Press Releases
      • Videos
      • Literature / Brochures
      • Case Studies
    • About Us
      • About Us
      • Contact Us
      • Advertise with Us
      • eNewsletter Archive
      • Privacy Policy
      • Terms of Use
    Online Exclusives

    Avoiding Problems While Collaborating in the Medical Textile Industry

    When to include or exclude an inventor from a patent application.

    Avoiding Problems While Collaborating in the Medical Textile Industry
    The medical textile industry is constantly evolving and looking for ways to improve the efficacy and wearability of medical products. Image courtesy of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.
    Related CONTENT
    • Medtech Makers: Material Science for Micromolding
    • Alleviant's Transcatheter Tech Obtains Breakthrough Status
    • At-Home COVID-19 Test Kits Boosts Disease Monitoring Capabilities
    • QT Imaging Signs Distribution Agreement With Freedom Ventures for Breast Scanner
    • MedAcuity, Fathom Partner on Human Factors Engineering Services
    Mareesa Frederick and Courtney Bolin, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP12.19.19
    In the textile industry, medical textiles represent one of the fastest growing segments of the
    market. Driven by a demand for new innovative products, the medical textile industry is constantly evolving and looking for ways to improve the efficacy and wearability of medical products. However, as with many textiles, commercializing a medical textile can be prohibitively expensive—the manufacturing equipment is costly, research budgets can balloon, and the timeline to reach the market is frequently unpredictable. In addition to the costs of developing a medical textile, companies also must obtain U.S. Food and Drug Administration approval before selling their products in the domestic market; this process can take years.
     
    Companies may seek to overcome these barriers by outsourcing parts of the manufacturing process to partner companies or universities—this kind of arrangement is often referred to as a horizontal supply chain. A horizontal supply chain can be beneficial because it fosters a more collaborative environment that helps get a finished product to market faster. For example, when companies work together, there is more specialized expertise and varied approaches to problem solving—which can reduce upfront costs, lead to an improved finished product, and allow for more competitive pricing later on. However, from a legal standpoint, working collaboratively can also create problems.
     
    In this article, we highlight how collaboration can affect patent rights, and provide suggestions that may help companies avoid problems arising out of improperly including or excluding an inventor from a patent application.
     
    The Legal Implications of Working Collaboratively on Inventorship
    In the United States, patents grant the right to exclude others from making, using, selling, offering for sell, or importing the patented invention. Essentially, obtaining patent rights provides the patent holder an opportunity to enter the market exclusively and profit from the invention before his or her competitors. Another benefit of obtaining patent protection is that patents can be sold or licensed to others, which means that a company can profit from their patented invention even if they do not manufacture it themselves. In order to obtain a patent, the invention must meet the legal requirements of patentability. In this article, we focus on the legal requirement that the true inventor(s) must be named in the patent application.
     
    Conception of any idea begins with an inventor—an individual who had a light-bulb moment, offered a solution to a problem, or had a spark of creativity. However, identifying the inventor (or joint inventors) is not always a straightforward task. This is especially true in the medical textile industry where scientists at different companies often collaborate.
     
    There are several requirements to keep in mind when determining whether one is a joint inventor. Each of these requirements must be satisfied:
     
    • Collaboration: Joint inventorship can only arise if some form of collaboration or common effort exists between one or more individuals. For example, scientists who work in groups and share ideas would be considered collaborators regardless of whether they are in the same physical location.  
    • Contribution: Each inventor must contribute to the idea that ultimately becomes the patented invention. This requires more than just providing general research tips or an overall goal, rather to be an inventor one must have a specific idea in mind and a particular means of achieving that result. As an example, if two scientists jointly agreed to develop an improved hernia mesh, and Scientist 1 suggests a specific fabrication and Scientist 2 suggests a specific finishing, both would be considered joint inventors.
    • Considerable Contribution: Finally, the contribution that each inventor makes must be significant. In other words, the contribution must be one that is new and not just a concept well-known by others in the medical textile field. For example, if the fabrication proposed by Scientist 1 was already known to improve hernia meshes, he would not be considered an inventor, because he did not contribute anything new. As another example, if Scientist 1 came up with the idea to use both the fabrication and finishing to make the hernia mesh and Scientist 2 merely used well-known techniques to manufacture Scientist 1’s invention, Scientist 2 would not be an inventor.
     
    Establishing collaboration, contribution, and the significance of that contribution is highly fact-specific and requires a close look at the work of each individual participating in the collaboration. Thus, collaborating companies must have measures in place to track individuals’ contributions to product development and ensure that each company understands their right to any resulting patents from the collaboration.
     
    Avoiding Legal Issues Caused by Incorrect Inventorship
    In view of the legal requirements required to be a joint inventor, good record-keeping is important to collaboration. Good record-keeping may take different forms for certain companies; however, there are some general guidelines that we suggest for recording and tracking the product development process:
     
    • Have a System for Recording Information: No matter what form it takes, a company should have a permanent, complete, and continuous method of recording where ideas originated and the work conducted to carry out those ideas. These records may be in the form of bound or digital laboratory notebooks where the details of meetings, experiments, and data are kept.
    • Track Who Enters Information: Further, it’s just as important to know who recorded information as it is to record the information itself. Make sure that all record keeping entries are dated and signed (preferably by two people; more preferably, at least one person from each collaborating company). This will allow companies to track the source of information and follow up with questions if needed later on.
    • Have a Contract in Place that Discusses Intellectual Property Rights: Collaborating companies should ensure that contracts are in place that address the intellectual property rights of each party. Joint development agreements typically state that patents on inventions jointly made by employees of both contracting parties will be jointly owned. However, parties should also carefully consider all provisions relating to ownership rights, in particular, the rights and obligations of the parties with respect to jointly owned patents. Patents are property rights and may be owned by one or more parties. This means that, if there is a dispute between the parties and no writing exists regarding ownership, the outcome may be unpredictable. When considering ownership provisions, it is important for companies to talk to each other and determine how patent rights will be owned. For example, Company 1 may fund the research and development of Company 2’s product, and in return Company 1 may own any resulting patent rights and grant Company 2 a nonexclusive license.
     
    By taking measures to maintain good records and clear contracts, collaborating companies are better equipped to file patent applications naming the proper inventors and reduce the likelihood of future disputes. Although the initial undertaking of putting record keeping systems and contracts in place between the parties can be daunting, these measures are essential to collaborating on product development and maintaining healthy long-term business relationships.
     
    Mareesa Frederick is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Her practice focuses on complex, high-stakes intellectual property litigation, with a particular emphasis on Section 337 proceedings before the International Trade Commission (ITC). She was named by The Legal 500 U.S. as a Next Generation Lawyer for ITC patent litigation. Frederick also has extensive experience counseling clients on pre-trial strategy, strategic licensing opportunities, and patent portfolios. 
     
    Courtney Bolin is a law clerk at Finnegan. She focuses on all aspects of patent litigation and prosecution, and client counseling and works with a variety of technologies, including textiles, aerospace materials, consumer products, medical devices, and mechanical and electrical systems.
    Related Searches
    • supply chain
    • track
    • Medical Devices
    • patent
    Related Knowledge Center
    • Materials
    Suggested For You
    Medtech Matters: Medtronic Medtech Matters: Medtronic's Robotic Surgery Status
    Medtech Makers: Material Science for Micromolding Medtech Makers: Material Science for Micromolding
    Alleviant Alleviant's Transcatheter Tech Obtains Breakthrough Status
    At-Home COVID-19 Test Kits Boosts Disease Monitoring Capabilities At-Home COVID-19 Test Kits Boosts Disease Monitoring Capabilities
    QT Imaging Signs Distribution Agreement With Freedom Ventures for Breast Scanner QT Imaging Signs Distribution Agreement With Freedom Ventures for Breast Scanner
    MedAcuity, Fathom Partner on Human Factors Engineering Services MedAcuity, Fathom Partner on Human Factors Engineering Services
    Cretex Companies CEO Steps Down Cretex Companies CEO Steps Down
    Are you prepared for EUDAMED actor registration module? Let’s get started Are you prepared for EUDAMED actor registration module? Let’s get started
    Data Show Porex Data Show Porex's Medical Device Filtration Materials Protect Against Virus, Bacteria Spread
    Endoscopic Hemostasis Devices Market Valued at $730 Million Endoscopic Hemostasis Devices Market Valued at $730 Million
    Henry Schein Buys Majority Interest in Prism Medical Products Henry Schein Buys Majority Interest in Prism Medical Products
    Boston Scientific Boston Scientific's Vercise Genus DBS Earns FDA Approval
    TPI Partners with Zeiss TPI Partners with Zeiss
    Neurent Medical Closes $25 Million Series B Financing Neurent Medical Closes $25 Million Series B Financing
    FDA OKs Canon Medical FDA OKs Canon Medical's AI-Powered, 90cm Bore CT

    Related Online Exclusives

    • Materials
      Setting the Standard: Protective Nanocoatings for Today

      Setting the Standard: Protective Nanocoatings for Today's Medtech

      Ensuring medical products are safe from the outside environment is a significant challenge that nanocoatings can help resolve.
      Zsolt Pulai, EVP, Technology & Development, HZO Inc. 12.02.20

    • Materials
      Stock vs. Custom Springs for Medtech

      Stock vs. Custom Springs for Medtech

      A review of the pros and cons for medical equipment designers.
      Edward Jones, Marketing Manager, John Evans’ Sons 10.08.20

    • Materials
      New Materials Impact the Medical Technology Outsourcing Market

      New Materials Impact the Medical Technology Outsourcing Market

      How UHMWPE fiber is driving innovation in a quickly expanding sector.
      Abey Paul, Global Business Leader for Honeywell 06.02.20


    • Materials
      Addressing the COVID-19 Crisis: Best Practices in PPE Development and FDA Review

      Addressing the COVID-19 Crisis: Best Practices in PPE Development and FDA Review

      How a supply partner can help a non-traditional medtech manufacturer navigate the regulatory process successfully.
      Lise H. Moloney, Director of Business Development—Healthcare, Sciessent 05.18.20

    • Materials
      Plastics and Medtech: Annual Industry Survey Results

      Plastics and Medtech: Annual Industry Survey Results

      Medical device manufacturers prefer domestic plastics manufacturing and many use thermoforming on a project.
      Jason Middleton, Vice President of Sales & Development, Ray Products 04.24.20

    • Electronics | Materials
      Ultra-Thin Base Materials Take PCB Miniaturization to the Next Level

      Ultra-Thin Base Materials Take PCB Miniaturization to the Next Level

      Flexible and rigid ultra-thin base materials enable highly reliable, thinner PCBs.
      Daniel Schulze, Engineering Manager at Dyconex 02.07.20


    • Materials
      Advancing Infection Prevention Tools

      Advancing Infection Prevention Tools

      The applications and benefits of porous polymer materials and components.
      Jack Chan, Global Marketing Director, Porex 01.17.20

    • Materials
      Understanding Key Processes for Mixing APIs with Silicone

      Understanding Key Processes for Mixing APIs with Silicone

      The pros and cons of drug delivery and device enhancement.
      Andrew Gaillard, Healthcare & Medical Segment Manager, Trelleborg Sealing Solutions 12.05.19

    • Materials
      Novel Polymers for Sustained Release: Trends Impacting the Drug Delivery Market

      Novel Polymers for Sustained Release: Trends Impacting the Drug Delivery Market

      An interview with ProMed Pharma's director of pharma services James Arps analyzes the diverse drug delivery/combination products market.
      Sam Brusco, Associate Editor 11.15.19


    • Materials
      5 Questions for Scapa Healthcare at Medica/CompaMed 2019

      5 Questions for Scapa Healthcare at Medica/CompaMed 2019

      Formulation development, adhesive coating, filling, converting, printing, and packaging for skin-contact adhesive and skin care topical solutions.
      Sean Fenske, Editor-in-Chief 11.15.19

    • Materials
      5 Questions for NuSil Technology at Medica/CompaMed 2019

      5 Questions for NuSil Technology at Medica/CompaMed 2019

      Celebrating 40 years of high purity materials for medical devices.
      Sean Fenske, Editor-in-Chief 11.15.19

    • Materials
      5 Questions for Elkem Silicones at Medica/CompaMed 2019

      5 Questions for Elkem Silicones at Medica/CompaMed 2019

      Range of implant-grade silicones, comprised of injectable and extrudable silicone rubbers, as well as adhesives.
      Sean Fenske, Editor-in-Chief 11.15.19


    • Materials
      5 Questions for DSM at Medica/CompaMed 2019

      5 Questions for DSM at Medica/CompaMed 2019

      Material solutions for cardiology, soft tissue repair, wound care, diabetes, cellular therapies, and orthopedics applications.
      Sean Fenske, Editor-in-Chief 11.15.19

    • Materials
      5 Questions for Saint-Gobain Life Sciences at Medica/CompaMed 2019

      5 Questions for Saint-Gobain Life Sciences at Medica/CompaMed 2019

      Filtration technologies and custom-developed, purpose-built, filtration-based solutions.
      Sean Fenske, Editor-in-Chief 11.15.19

    • Materials | Molding | Packaging & Sterilization
      5 Questions for Colorite at Medica/CompaMed 2019

      5 Questions for Colorite at Medica/CompaMed 2019

      Thermoplastic elastomer compound line for a wide variety of uses in medical devices and packaging.
      Sean Fenske, Editor-in-Chief 11.15.19


    Trending
    • Senseonics Forges Strategic Collaboration With Ascensia Diabetes Care
    • Portable, Home-Use Device Quickly Measures Inflammation Levels
    • Henry Schein Buys Majority Interest In Prism Medical Products
    • Top 10 Trends In The Medical Device And Equipment Industry
    • Masimo Earns CE Mark For New Fingertip Pulse Oximeter
    Breaking News
    • Kwivik Therapeutics, EirMed Partner to Accelerate Product Commercialization
    • Europe Marks its First Successful Remote Robotic-Assisted Coronary Angioplasty
    • Twist on Heart Valve Design Boosts Blood Flow, Prevents Clots
    • FDA Clears 3D Acellular Dermal Matrix
    • Inogen to Undergo Leadership Transition
    View Breaking News >
    CURRENT ISSUE

    November/December 2020

    • Pharmaceutical Focus: A Look at Combination Products
    • The Printed World: Additive Manufacturing in Medtech
    • The Lost Year: 2020 Year in Review
    • View More >

    Cookies help us to provide you with an excellent service. By using our website, you declare yourself in agreement with our use of cookies.
    You can obtain detailed information about the use of cookies on our website by clicking on "More information”.

    • About Us
    • Privacy Policy
    • Terms And Conditions
    • Contact Us

    follow us

    Subscribe
    Nutraceuticals World

    Latest Breaking News From Nutraceuticals World

    Omega-3s Evidenced to Reduce Low-Grade Inflammation in Elderly Men
    MIND and Mediterranean Diets Linked to Later Onset of Parkinson’s Disease
    Kerry Launches Web-Based Tool for Plant-Based Formulation Challenges
    Coatings World

    Latest Breaking News From Coatings World

    IFS Coatings Launches IFS Puroplaz PE20 Texture
    Keyland Polymer UV Powder, LLC Launches UVMax Defender
    Scott McLaughlin to Race in PPG Colors During Rookie INDYCAR Season
    Medical Product Outsourcing

    Latest Breaking News From Medical Product Outsourcing

    Kwivik Therapeutics, EirMed Partner to Accelerate Product Commercialization
    Europe Marks its First Successful Remote Robotic-Assisted Coronary Angioplasty
    Twist on Heart Valve Design Boosts Blood Flow, Prevents Clots
    Contract Pharma

    Latest Breaking News From Contract Pharma

    Novartis Invests in Credence MedSystems
    Ajinomoto Bio-Pharma, Humanigen Expand Manufacturing Agreement
    Almac Expands Global Biologics Testing Services
    Beauty Packaging

    Latest Breaking News From Beauty Packaging

    Coty to Shut Down Manufacturing Site in Cologne, Germany
    L’Occitane Files for Bankruptcy in U.S.
    Bésame Cosmetics Collaborates with Disney on Mary Poppins Collection
    Happi

    Latest Breaking News From Happi

    HI Beach Installs Reef-friendly Sunscreen Dispenser
    RB Partners with Airbnb
    L'Occitane US Files for Bankruptcy
    Ink World

    Latest Breaking News From Ink World

    Epson Partner Creates Label Applicators for Pharmaceutical Products
    Smurfit Kappa Sets New Sustainability Targets with Better Planet 2050
    Georgia-Pacific Acquires 3rd HP PageWide Corrugated Press to Expand Hummingbird Digital Printing
    Label & Narrow Web

    Latest Breaking News From Label & Narrow Web

    Great Lakes Label debuts new website
    Epson partner creates label applicators for pharmaceutical products
    ACTEGA removes chemicals from laminating adhesives
    Nonwovens Industry

    Latest Breaking News From Nonwovens Industry

    American Made Production Equipment for Mask Manufacturers
    Kimberly-Clark Releases Q4, Full Year Results
    Freudenberg to Establish Apparel Interlining Competence Centers
    Orthopedic Design & Technology

    Latest Breaking News From Orthopedic Design & Technology

    ChoiceSpine's Tiger Shark Cervical Spacer Earns Additional 510(k)
    FDA Green Lights Inspired Spine's Trident SI Joint Screw System
    FDA Clears Method to Extract Bone Measurements From X-Rays
    Printed Electronics Now

    Latest Breaking News From Printed Electronics Now

    North American Semiconductor Equipment Industry Posts December 2020 Billings
    Midsummer Signs Cooperation Agreement in Spanish Market
    First Solar Signs Definitive Agreement to Sell US Development Platform to Leeward

    Copyright © 2021 Rodman Media. All rights reserved. Use of this constitutes acceptance of our privacy policy The material on this site may not be reproduced, distributed, transmitted, or otherwise used, except with the prior written permission of Rodman Media.

    AD BLOCKER DETECTED

    Our website is made possible by displaying online advertisements to our visitors.
    Please consider supporting us by disabling your ad blocker.


    FREE SUBSCRIPTION Already a subscriber? Login