1-3-15, Patent Metrics for Medical Device Startups

IP protection, and particularly patent protection, is critical to attracting funding for new ventures in the medical device field. Accordingly, one question asked by startup medical device companies as they develop their patent filing strategy is: How many patents and patent applications does our company need before pursuing startup financing, first-stage institutional financing, later stages of institutional financing, or IPO? The answer to this question depends on a number of specific factors such as the specific technology, the specific product, the prior art in the field, patenting trends in the field, and so forth. However, some general information can be provided based on our experience representing startup medical device companies to develop a patent strategy, our experience representing established companies considering partnership/licensing with a startup medical device company, and our research related to the patent portfolios of medical device companies at IPO during the past 10 years.

One Pending Patent Application to Seek Outside Financing

A new medical device startup company typically must own or control at least one U.S. patent application that is pending with the USPTO before seeking startup financing from outside investors (investors outside of the friends and family of the company founder). A pending patent application directed toward the company's core technology is the first step toward protecting the technology upon which the new company will be based; it stakes out the area of potential patent protection, and it also provides an indication to potential investors of the sophistication of the new company.

Intermediate Stages — Three Is the Sweet Spot

As the medical device startup seeks intermediate stages of funding (e.g., VC financing, partnership/licensing with established medical technology companies), having three patent properties is the sweet spot: one granted U.S. patent, one pending U.S. continuation application, and one pending international (PCT) or European application. The granted U.S. patent provides a zone of exclusion for the company's core technology, and it also provides an indication that the foreign patent applications also will be granted. The pending continuation application provides flexibility to seek additional patent protection. This flexibility can be...