Activity

  • Over a year ago I was assigned to manage the development of a robotic device. We had a prototype and since it is now first to file, we filed a patent so we could further the development while also pitching to outside companies to see if we could get a collaborator. At the time, the device did not have the resources or funding available that it needed to create a functional clinical prototype. Time had passed and then we received the funding we needed to contract out, by that time we did not finalize the design and we were at the PCT conversion deadline. We still wanted to keep the priority filing date, but we also did not want the patent to publish and needed more time to work on the final design elements that we would ultimately want to have protected in the patent. This created a very complex patent strategy which incurred more patent costs than we would normally have for a device. Overall I learned for projects moving forward that unless there are imminent public disclosures, it makes sense to have a more concrete design and functional prototype before filing and setting realistic deadlines so that the PI, patent counsel, and key stake holders are all on the same page and making sure that the technology development timeline complements the patent prosecution timeline.