Last Updated on

In this episode of 4x4 Health, we discuss intellectual property (or “IP”) with David Hyams, a senior technology lawyer at The Marbury Law Group with over 20 years of experience in IP matters.  With the US healthcare system facing rising costs and limited resources, health IT innovators are stepping up with cutting edge technology that accomplishes the triple-aim of healthcare.  However, IP can often be a key challenge that holds companies back as they struggle to make decisions about how to protect their tech while growing and innovating as fast as possible.  David has broad and deep knowledge about IP issues and can explain them while skipping the dense “legalese”. Given his ability to look at IP from different perspectives, from startup to large publicly traded company, we hope you learn as much as we did from this conversation.

About David Hyams

David Hyams is an associate at The Marbury Law Group practicing in all aspects of intellectual property law.  

 

He has experience in the areas of telecommunication and network communication hardware and systems, cybersecurity, digital media hardware, software, and network transport, professional and consumer acoustic products, consumer electronics, clean energy technology, and energy management systems.In addition to his particular expertise in patent preparation and prosecution, Mr. Hyams has worked extensively on software and technology licenses, open source software licensing and use, content licensing, and data privacy issues.  His transactional experience includes intellectual property diligence and deal negotiation for corporate mergers, acquisitions and dispositions, as well as a wide array of commercial agreements including sales, procurement, professional services and service contracts, promotional deals, manufacturing agreements, and nondisclosure agreements.

Prior to joining Marbury, Mr. Hyams served as in-house counsel at Bose Corporation, AOL, and GridPoint, Inc., and was associated with a large Boston law firm.  In addition, Mr. Hyams performed undergraduate research in Pharmacology as an American Cancer Society Summer Fellow and completed advanced coursework in molecular biology and biochemistry.

Don’t miss the next episode!

Episode Transcript

 

Dr. Dave: Welcome to 4 x 4 Health, sponsored by Sansoro Health. Sansoro Health, integration at the speed of innovation. Check them out at www.sansorohealth.com. I’m your host Dr. Dave Levin. A key fame in revitalizing and reinventing the US Healthcare System is innovation. Over the last several years entrepreneurs and investors have set their sights on healthcare services and technology and the result has been a record setting level of investment in healthcare innovation. It has also made Intellectual Property or IP more important than ever. What exactly is IP, why is it valuable, what should entrepreneurs and investors know when it comes to identifying, evaluating and protecting their IP? Today we get into those questions and more with David Hyams, Senior Technology Lawyer at the Marbury Law Group. David has over 20 years of experience in IP matters and has worked as in-house counsel at diverse organizations including Bose Corporation, AOL and the Clean Tech Startup Gridpoint. His broader legal experience includes patents, technologies licenses, open source software, content licensing, data privacy issues, field diligence for corporate M&A and a wide variety of business issues and commercial agreements. David has brought a deep knowledge about IP issues and can explain them and provide it wise while skipping the dense legalese, something we mere mortals really appreciate. Given his ability to look at these questions from different perspectives, from startup to large publicly traded company, you can understand why David is my go-to guy when it comes to IP. One housekeeping note before we start. I’m sure David would want us to remind you that this podcast is for general information purposes only and should not be considered nor relied upon as legal advice. If you have legal questions, you should exceed the advice of a competent attorney. So, with that in mind, welcome to 4 x 4 Health David.

David Hyams: Hey Dave, thanks very much for having me.

Dr. Dave: Alight, let’s get started. I’m gonna ask you a series of four questions and we’ll take about four minutes to answer each one. To get us started, tell us about yourself and your organization.

David: I’m a Business and Technology Lawyer and thanks very much for that great introduction. I work at the Marbury Law Group. The Marbury Law Group specializes in Intellectual Property. Our attorneys have technical backgrounds in a wide array of technology areas. My particular technical expertise includes telecommunications, electronic devices, Computer networks and Cybersecurity. Healthcare IT and Healthcare Technology falls square in the middle of my skillset.

Dr. Dave: You’ve been watching this for a long time and it’s evolved quite a bit over the years. You and I recently wrote an article about IP and one of the important things I learned from that experience was there’s a lot more to IP than just patents. I think a lot of us amateurs, when we hear Intellectual Property, we think that equals patents but what I’ve learned from you is that there are actually these four broad categories of Intellectual Property. Take a few minutes and walk us through these and let’s also talk about some examples.

David: So, the four basic categories of Intellectual Property typically include and start with patents just like you mentioned which cover generally speaking inventions and we can get into in more detail, what the different kinds of Intellectual Property are and what they cover exactly? So, let’s start with patents. Trade secrets are a second form of Intellectual Property. There’s also copyright to consider and there are trademarks. So, patents as I mentioned a second ago, cover inventions generally. Trade secrets, sometimes considered the flipside of patents can cover nearly anything that provides value to a company so long as it remains secret and we talk about what that means and how does one maintain secrecy in a legal sense. There’s also copyright which traditionally is the realm of artistic works but over the years has expanded to cover software which is vitally important to most Healthcare IT Businesses and then there are trademarks which is sort of an outlier compared to the other forms of Intellectual Property but can be among the most important forms of IP for a company because it protects the company’s branding.

Dr. Dave: Well, as I mentioned in the introduction, you have a wonderful way of explaining these things so that us, non-legal folks can follow along and when you and I put the article together, we took some episodes from Seinfeld as examples and I think it might be useful for us to step through some of this in a little more detail and we’ll test your creative capabilities as well Dave. Let’s see how we do here. Why don’t we start first with trademarks? Tell us a little bit more again about, what they are and can you cite an example from a Seinfeld episode that would give us a practical understanding?

David: Sure. So, a trademark that might have been used in the, okay, fictional world of Seinfeld should be the soup man character which you might remember famously denied several characters soup [Unclear]. That character had a particular trademark. Let’s say his business was called soup man. I believe that’s actually the name of the business involved. So, soup man could be considered a trademark and the owner of that business, the eponymous soup man could apply for State and/or Federal protection for that name associated with his provision of soup Collett, soup and soup delivery services. So, that’s an example of trademark.

Dr. Dave: And, that allows him to protect that and use that as his trademark and prevents others from duplicating it or using it as some other way, correct?

David: Right, now that’s an important point. With the registration of the mark soup man, then he would be able to prevent others from also registering not just the soup man mark but confusingly similar marks that are even close to but not exactly the same as soup man.

Dr. Dave: That’s great! Another favorite upper side of mine is when Kramer and one of his many adventures starts a company of his own and I believe the name of that company is Kramerica, I guess a mash up of Kramer and America. So, Kramerica could be trademarked as well if Kramer wanted to protect that as a trademark for his company. Was that another example?

David: That’s a perfect example. What Kramer would have to do in that case is pick a particular set of goods or services that he’s going to provide. The registration for that trademark would be associated with those goods and services.

Dr. Dave: There you go. Not that I think anyone would want to compete with Kramer. I mean, there’s only one but at least he could protect his trademark in that way. You know, going back to the so-called soup man, I think he also provides another illustration of Intellectual Property and that would be his recipes which as I understand it would be considered trade secrets. Have I got that right?

David: I mean, I think that’s right. Provided that so the soup man takes what lawyers call reasonable steps to maintain the secrecy of his trade secrets. So, he could not for example just give out the recipe to anyone who approached him and said, I love your Chicken soup, can you please tell me what’s in it and he would explain yes, it’s my grandmother’s recipe and here’s what’s in it, no. First of all, you have to deny people access to the things that you consider valuable trade secrets and you have to take reasonable steps now stepping back from the Seinfeld example. Let’s say the soup man then required people to sign a nondisclosure agreement before he would tell them what the soup recipe is or perhaps, he limited the number of employees at his restaurant who knew what the soup recipe was to those who only had need to know. Then he could be said to have taken reasonable steps to protect the secrecy of his important secrets.

Dr. Dave: And so, the key here is that, this is something valuable and it’s acknowledged is valuable but the key to protecting that is to build secrecy around it and as you said, to take what would be considered reasonable steps to protect that. So, don’t post the recipe in the restaurant, take appropriate precautions in terms of your staff selection training, their employment agreements and the like and again, all of that is designed to protect the value here which is the secret recipe if you will.

David: That’s exactly right. Now you just alluded to something that’s actually a great example of protecting trade secrets because it’s not simply declaring something a secret and it’s not simply denying people the, you know, ease the ability to access the secret or, you know, read the recipe on the wall in this case. There is an employee training component, there’s a sort of day-to-day business practice aspect of this. All of those are important for companies considering how to protect valuable trade secrets.

Dr. Dave: So, let’s now turn to patents because again, part of what I’ve learned from talking with you is they’re similar to trade secrets but in some ways the mirror image in terms of what is made public and how the information is protected. Explain that to us and as always, my guests have the right to call BS on me and correct me for any misstatements here.

David: Well, you haven’t gotten anything wrong yet but I’ll make sure I’m listening very carefully, okay. You’re right, patents and trade secrets are in many ways considered sort of opposite sides of the same coin and many of the same considerations or legal considerations go into deciding as a strategic matter whether to treat a particular innovation as a trade secret or whether to apply for a patent for that innovation. One of the key considerations is typically, how hard is it for someone on the outside to look at that product or that service or that device and figure out how to do it on their own? If the answer is that it would be easy for a competitor to reverse engineer or figure out how to do that thing or how to make that thing, then it’s worthwhile going through the patent process. On the other hand, if it’s something that’s very difficult to figure out would require tremendous amount of time, be very expensive. Maybe it’s a better idea to keep that secret and that way prevent others from copying it or at least requiring them to make huge amounts of efforts in order to compete with you.

Dr. Dave: It’s an important distinction and I like the way you frame this as these are different options and to some degree, this is a business decision about how to, if you will, categorize your Intellectual property and how best to pursue protection of it and extracting maximum value out of it.

David: Well, I think that’s a really vital way to look at it. One of the ways I try to look at these issues and the way I advise businesses and clients that come to us is, how should we look at these things and approach them from a way that makes the most business sense, that will provide the most value for your company. In terms of looking at whether you should keep something as a trade secret or apply for patent protection or whether you should consider registering for copyright protection or what kinds of trademarks and what your brand’s new strategy should be, all of those are really business considerations and that’s something that’s incredibly important for businesses to keep in mind and that’s typically the way I advise folks who are asking for help.

Dr. Dave: I wanna come back to this set of questions and we’ll go deeper on that in a moment but before we do, let’s get to the fourth category of Intellectual Property. So, tell us about copyrights and again, I’ll challenge you to come up with a Seinfeld example if you can.

David: I actually have a really good example for you that I came up with before we sat down to record this. So, I think I mentioned before copyrights are typically the domain of artistic works and that’s where the name comes from. You have the right to copy a particular artistic expression whether that’s a novel or a work of art but over the years the copyright regime has expanded to cover software which legally speaking is considered a particular expression of an idea. For example, there may be many different algorithms or APIs that can accomplish a particular function in a piece of software but copyright could be applied to protect a particular implementation of an API or a particular implementation of an algorithm in software code. The way this plays out in the Seinfeld regime is actually a real-world example where a company not affiliated with the production company that makes the Seinfeld television show independently produced a book of Seinfeld trivia. The company that owns the rights to Seinfeld, sued the publishing company for copyright infringement and the publishing company defended itself saying, well, these are facts, everyone knows these things. Anyone who’s watched the Seinfeld show, should know these facts and enjoy participating in this trivia game much like any other trivia game and they lost on that. So, as it turns out, Seinfeld is not real, it’s actually an artistic work that was made up and as such the ‘facts’ of the characters and situations of the Seinfeld show are copyrighted and not actual facts, it turns out.

Dr. Dave: Well, you took us from fantasy to reality and back again, that was really good. The example that I came up with was when George and Jerry wrote a script that they pitched the NBC and it was gonna be a show about nothing. Presumably that script could be copyrighted. That would be a subject of business discussions between the two authors and potentially with NBC as the company that would produce and promote this fictional show within a fictional show.

David: I actually like your example a lot. It’s extremely meta, right. You have these copyrighted characters in a copyrighted script discussing a copyrightable script. How deep can we go there?

Dr. Dave: I’m not surprised as a lawyer that sort of complexity would appeal to you, so…

David: Well, what can I say?

Dr. Dave: Ha, ha [Laughing]. If you’ve just joined us, you’re listening to 4 x 4 Health and we’re talking with David Hyams, Senior Technology Lawyer at the Marbury Law Group about Intellectual Property. Dave, that was a really good flyover of the four types. I do wanna get into, you know, why should we care, why is this important to entrepreneurs and investors? But before we leave this subject of these types, just take a brief moment and tell us for example the process of obtaining a patent and I recognize it asking the question. We could spend a whole hour talking about those processes but take that one as an example and give us a kind of layman’s flyover of how that works.

David: Okay. So, from the business’s perspective, after you’ve spent all the time and money to create your, you know, new invention or new innovation, you would then talk to a professional, provide them with a description of an explanation of your invention. What that patent attorney would then do is, write this up in a most likely fairly legalistic way, the patent is ultimately a legal document and would submit that application to the US Patent and Trademark Office. It then goes into a queue at the USPTO is ultimately taken out for examination by a patent examiner who will read through the patent application, look at the claims section which I can explain more about in a minute and determine whether the claims in your patent are novel and non-obvious over any prior descriptions that are related to your invention. If all goes well and the examiner ultimately determines that your claims are new and non-obvious, then you will be granted a patent which provides you with exclusive rights that is rights to exclude others from making, using or selling the invention that’s described in the claims form twenty years from date of filing and that limited monopoly is granted to you by the United States Government.

Dr. Dave: That process can stretch over what kind of time period?

David: Well, it could be very rapid. There are ways to pay fees and accelerate examination. So, you could be talking six months to a year. The typical application I would say in this technology area is two, two and a half, maybe three years. I have seen applications dragged on for longer, in some rare cases much longer but on average I would say, two, two and a half, three years.

Dr. Dave: You know, you and I recently did what I call patent spelunking. We did some exploration in a set of hats. I think it was a family of six that Apple Computer recently filed, it’s fascinating. It is sort of like sleuthing or spelunking. There’s information there but to some degree you have to kind of piece it together and reverse engineer, what’s the broader thing thereafter? We’ll post a link to that article as well as the original article that you and I wrote about IP. Hopefully you found that an interesting experience as well.

David: I really enjoyed it. You know, it’s a little bit like trying to figure out what a large painting looks like by looking at one tiny corner of the painting and examining the brushstroke. So, it’s a super detailed document, it’s very technical that is with a little bit of experience knowing how to read patent application, sort of understanding how lawyers describe things and sort of why they describe them the way they do and then with the industry perspective that you brought to that exercise, we can kind of take a step back and I think makes some reasonable conclusions about the direction that, in that case Apple maybe headed. Patent applications are interesting because of course they are prospective to a certain extent. So, you know, looking at a company’s patent filings can give you insight into what they are thinking or not. They may change direction after that and go in a completely different direction but I think in, especially the case of large corporations, it could be very helpful.

Dr. Dave: I would agree with you that you brought some expertise and thought to that article. I’m not sure how much industry perspective I brought. I think what I brought was some hubris where I speculated about what Apple might be up to on a broader scale. So, we’ll see. The good thing is time will tell whether we were bad [Unclear]. So, we’ll have to wait and see it on that. I want to now turn to the, what I would call the so what part of our discussion here. This has been a good introduction and flyover of Intellectual Property in general and the different types and some examples here and, but, you know, so what, I mean, why should anybody really care? What I’d like to get into with you over the next few minutes is, what are the most important things an entrepreneur or an investor should consider when it comes to Intellectual Property and for those who are wondering if this is even an important issue in healthcare, let me reassure you, this is a huge issue. As I mentioned at the top of the podcast, the amount of investment in innovation that’s going on in healthcare services and healthcare tech has just exploded over the last few years. If you need further evidence, you can go look at the proposed rules that the Office of the National Coordinator for Health IT recently released along with a set of rules proposed by CMS. Looking at issues like interoperability and information blocking in healthcare and these rules deal very directly with a set of issues around Intellectual Property, the exchange of information about system performance and design, even down to details like the sharing of screenshots. So again, I don’t wanna drag us too deep into the quagmire of Government regulation. My point is these things have been important but they’re of increasing importance almost on a daily basis within healthcare and IT. It should matter. I’m hoping you can put some meat on the bones here Dave. Now that I’ve got us all stirred up and worried about these issues, what are some practical things that folks should consider when they approach IP?

David: I love the question, who cares? I think it’s an incredibly important question in, well, all aspects of life but in particular to Intellectual Property, this is an arcane area of the law. It makes people nervous. There’s the sense that it can be very expensive and very time-consuming and then at the end of the day, the question is, okay so, why should I do this at all?  Fortunately for lawyers, the answer to that question is, typically well, it depends and it kind of depends how you’re looking at it. Are you an entrepreneur, are you an investor, are you a large corporation, are you an Academic Research Institution? Every market participant, everybody in this area is going to have different concerns. One of the best things that I particularly enjoy is working with startup companies and working with early-stage companies. For them, they should look at Intellectual Property in the particular way of, alright, I probably have a limited amount of money to spend on any particular project. I probably have time pressure to bring products or services to market as rapidly as possible. So, the question is, how can I maximize the value of my company in a very short period of time and minimize my expenses while at the same time not having my innovations scooped by a company with greater resources? One thing that’s important for entrepreneurs to keep in mind is that investors typically look for patent applications as part of your portfolio. Dave, you and I have talked about shark tank in the past. I love the show. One of the first questions the sharks typically ask folks making a pitch on their show is, do you have patents, do you have patent applications? Of course, this has all been checked out ahead of time but the answer to that question is usually very interesting to me as a Patent Professional, they don’t go into a tremendous amount of detail about the patent in those conversations mostly because it’s for TV and we wouldn’t want to do that but also I think that investors who are looking to a certain extent and I can’t say this about every possible investor. To a certain extent some investors are checking the box. They wanna see, you know, have you taken steps to protect your invention or your innovation with a patent application and maybe they will scrutinize the level of detail of that patent application and maybe they won’t and that will depend on the particular circumstance but patent applications for an early-stage company or for an entrepreneur can be important if you are trying to present your company to an investor or you’re trying to build up a portfolio or round out the way your company looks for outside investment. The other thing to keep in mind is that once you do secure those patent rights, they will give you the opportunity to exclude others from stealing your inventions essentially. So, it’s a way of protecting the value of the innovation that you’ve created.

Dr. Dave: Yeah, I think these are the two themes that I typically hear in these kinds of conversations with investors and entrepreneurs and you’re right, it’s almost exclusively focused on patents, although clearly things like trade secrets, trademarks and copyright can come into play as well and as you said, the goals are typically to protect something that’s valuable for the company to use and also frankly to drive valuation of the company when it comes to others investing. The thing that’s been interesting to me about this is although my investor friends look at these issues, I think they tend to downplay them. I think often the entrepreneur thinks there’s greater value in the patent in terms of valuing the business to the investor than the investor does and so that can make for some interesting back and forth as we haggle over what’s the valuation of the business in its current state.

David: You know, that’s a really good point and I see both sides of it and I completely understand where an entrepreneur might be coming from when they receive a granted patent, looks very exciting. You receive this very official document from the US Patent and Trademark Office, it has a beautiful seal on it, it’s signed by the Commissioner of Patents. It’s also part of our culture, right. That patents are incredibly important; they’re only given out under special circumstances to inventions. Patents are actually mentioned in the constitution itself as being a vital part of our economy. So, I get it. That said, investors are also correct. The value of any individual patent may not confer tremendous amount of monetary value to a particular company. What may be more valuable is the indication that there is novelty in the invention or idea or service that’s being provided by that company and also let’s not forget that the patent gives you the right to take someone to court, to have them either license your technology which is a source of revenue for you or to prevent them from competing with you by copying your idea directly.

Dr. Dave: Let’s take this one step further, we’ll stay on the specific area of patents but let’s say, Dave Levin has been in his garage and he thinks he’s got the next cool thing and he thinks there could be something that’s patentable here. What are the first couple of steps that this budding innovator should take?

David: Well, you can certainly go onto the US Patent Office website and conduct a search and you can look to see whether anyone has done this before and there are also free services that are available on the web that also provide very similar patent searching services for free and in some ways are more usable, maybe more user-friendly than the one directly provide by the USPTO but one thing you can do is educate yourself about what does the Intellectual Property and landscape in terms of patents look like in my particular area. Hopefully in your case, you’ve done that and you haven’t found anything that looks similar to what you’ve done or maybe you’ve found something that’s kind of related but not really. First of all, now you’ve armed yourself with important knowledge. Second of all, you can bring your invention and those things that you’re aware of to your patent attorney for a conversation about next steps. I should also say that some patent attorneys recommend in particular to their large corporate clients that they do no patent searching of any kind but that’s for a particularly narrow reason, especially if you are a large institution becoming aware of patents can subject you to certain kinds of damages in litigation later on. I did mention this was a lawyerly concern.

Dr. Dave: So, in this case, ignorance of the law could be an excuse it sounds like.

David: Well, ignorance of prior art can keep you from triple damages, yes and again, it sounds much better when you say it.

Dr. Dave: Ha, ha [Laughing]. So, we’ve been talking about this almost acutely from the perspective of, I got something, I think it’s valuable, I wanna protect it, I wanna use it to drive value in my company but let’s look at this from the other perspective of I wanna make sure that I’m not infringing on someone else’s Intellectual Property because this is the other thing I’ve learned from working with you. It’s not just about protecting my stuff; it’s making sure that I haven’t strayed into someone else’s property or that if I do so that I do it knowingly. So, I think of this as kind of the defensive part of this work. Tell us a little bit about that and some of the things that you commonly advise clients to be aware of.

David: So, I mentioned a minute ago about searching. One incredibly valuable thing that you can learn is that in fact you’re a competitor or another company in the space actually has patents, that are related to what you’re working on. Being aware of those ahead of time can be immensely valuable to your company. If for example you hadn’t done that and you find yourself in the unfortunate position to be providing a product or service that you later discover infringes on someone else’s patents either because you’ve discovered this through your own diligence or perhaps less fortunately you receive a letter from the lawyers for that other folks telling you that you infringe on those patents. That can be incredibly costly for your business and because of the exclusive rights provided by patent, you may be forced to pay a license to use their technology if they’re willing or you may be forced to change your product or stop producing it all together but it is possible to change a product to design around someone else’s patents, that maybe possible but that of course results in perhaps a delay of entry into a market or you may have to temporarily cease production while you redesign in any event at a minimum it will increase your cost with respect to your competitor.

Dr. Dave: Given that we’re talking about particularly bad healthcare and our particular interest in healthcare information technology. Take a moment and talk about open source licensing and the bugaboos that can come along with that because that’s the other things that I typically see in due diligence reviews.

David: Open source software provides a company with an opportunity to reduce their time to market and reduce their costs, right. A lot of open source modules for various functionality are available in some cases at no cost on the web. The wrinkle that companies need to keep in mind is that sometimes these software modules come with a contract attached to them, open source license and in some cases the typical bugaboo is the general public license. The term of the license then require that a company that incorporates open source software that is associated with this GPL license, release or make available the source code for all of the software that incorporates this one module. So, you could find yourself in the very unfortunate situation of having some legal professionals refer to this having your code tainted by the GPL license came with that incredibly small and well seemed like a very convenient thing to use at the time when you were coding it and now you’re required to release or make available all of the source code for your product or service while this may sound theoretical and far-fetched, there are well-known examples of even very large companies getting caught up by this.

Dr. Dave: I think you’ve explained this really well and the bottom line is there’s an incredibly rich source of open source material out there in the world. Some of it can be really useful and it can save time and it works great in all of that but it can be encumbered by these licensing requirements and so it’s really important for a company that’s looking at incorporating these elements to understand not just the technical aspects of it but what is the business and legal implications of this and as you said, you can incorporate a tiny snippet of code that in effect is the Trojan Horse that opens everything up to the public in a way that might not be so great for your business.

David: Right. Now, this sounds vey scary and potentially it is but it’s another one of these situations where forewarned is forearmed. If you’re aware of these issues going into and through your development process, companies that I have advised have used an enlightened software development process where the software developers are educated about these issues and are aware of them and ideally it’s an open loop communication where software developers are seeking advice about open source software that they want to use and hopefully the time frame isn’t so extreme that there is time to check out the licenses and make sure that you won’t run into any of these issues and typically review of open source licenses, this not very labor intensive, it should not take your contract review person or attorney a tremendous amount of time to review it. So, a small amount of time upfront can save you huge headache later on.

Dr. Dave: That might actually be a pretty big advice in general about these topics that in some cases it’s a go slow to go fast but you end up getting more value out of things that you’ve created and you can avoid stepping into some potholes that are pretty obvious and should be avoided. I think you’ve given us a really good overview and it’s easier now to understand why both entrepreneurs and investors are very interested in this topic. It drives value but it can also be a source of complications and problems in various development situations and in business deals.

David: One other thing I wanted to mention though, we were talking about the patents and the kind of conversations that you wanna have before you apply for them. You know, your brief meeting with your attorney may actually result in a huge cost savings for you. For example, if you’re looking at your innovations and you make the decisions that maybe it’s better to keep this as a trade secret after all. Comparted to trade secrets, the patent process is long and drawn-out and can be quite costly. On the other hand, maintaining trade secrets should impose almost no additional expense on your company. Simply what the company needs to do is make sure that processes are put in place. So, there’s a slightly greater burden in terms of education, maybe the writing of non-disclosure agreements, making sure that people are deploying non-disclosure agreements, making sure that other companies sign them, making sure that there is a, I don’t wanna say company culture but that people are educated that you can’t just go out and talk about these things, that you know, you need to take reasonable steps and you can’t just post the menu on the wall sort of thing and providing sales people and people who are charged with fundraising with topics that they can talk about and a level of detail that they can talk about them until an NDA signed and then once that NDA sign, then they can open the kimono and talk about them in greater detail, that sort of thing. It’s a simple processes and again, the brief conversation in some of the preparation ahead of time can save you a world of pain later on.

Dr. Dave: There’s been a theme in this discussion today and I just wanna call it out directly which is in my experience anyway, great attorneys are partners. They really help you think through not just the cut-and-dried legal questions but how do they really apply in your situation because very often, there’s this balance between the legal options and what is the best decision for the business and so, maybe I’m stealing your thunder a little bit and again, please correct me if you see it differently but my experience has been, the best attorneys are the ones that can really help me think through the problem and potential ways we might get to a solution that obviously conformed with the law but it also makes sense from a business perspective and that’s a real art, there’s real judgement there. It’s not calling balls and strikes as might be thought of in the legal world. So, I guess I kind of went off of my own rant there but really in and, I’m making any sense here at all?

David: No, that sounded great to me. So, Harry Truman famously said that he wanted only to have one-handed lawyers because the lawyers that he kept running into kept giving him advice like, on the one hand this but on the other hand that. As a President or as a business person, that may not be the most actionable or useful advice. I mean, an academic analysis of well, here are all of your options may be informative but it may not actually be useful and so when I tell people what I do, I say I’m a business and technology lawyer. I don’t approach Intellectual Property as an academic exercise although that can be fun. We’re here to conduct business. Clients who come to me for advice are looking for recommendations based on expertise and they’re not necessarily looking for, you know, an academic treatise on Intellectual Property. So, that his how I approach things. I try to, if I’m going to give a range of recommendations, I’ll explain what the thought process is and I really do try to work with businesses to explain not only what the options are both to the best of my knowledge, what the best options are for them. Now, in terms of sage advice, I guess I was thinking about one of my favorite questions and lawyers ask a lot of questions. One of my favorite questions is, so what? And, I like to apply that well, frankly in all aspects of my life but in its application in the law, I find that, that question helps get to the root of, what’s really important, what are the key business considerations, what are the key legal considerations? That is a question, for example, that will help you very quickly decide whether or not you want to commit resources for a patent application or whether you would rather keep something as a trade secret. Is the software that you’re developing incredibly important to the point where you need to go to the Copyright Office and seek protection for it? What is your branding strategy, should you be committing resources to a branding strategy at all? If so, what is the value that you’re seeking and what are the key ways to distinguish yourself in the marketplace. Business people don’t have a lot of time to make decisions and these issues can be complicated and arcane. So, the best legal advice you’re going to get is gonna be from the business partner who can help you sort through the stickit rapidly and come to a quick and useful decision.

Dr. Dave: Well, that is truly sage advice and as you said, that’s for life and for work. I often think of the so what question is starting with the end in mind. You know, why are we doing this, what do we hope to accomplish? And then working backwards. I find very often in healthcare, we forget to do that, we are doers, we want to get in and fix things, we wanna get things done, we wanna make the world a better place. Sometimes we forget to pause and spend the time thinking about, so what, so that we’re clear in our aims. I even see it day to day in just attending meetings. It’s not even clear why we are all around the table, what’s the purpose of this discussion, so what? Again, I think it’s truly sage advice and we probably all could do more of that in our day to day lives. So, thanks for sharing that. We’ve been talking with David Hyams, Senior Technology Lawyer at the Marbury Law Group. Dave, thanks again for joining us.

David: Well, it’s absolutely my pleasure and thank you very much for this. This has been a lot of fun for me.

Dr. Dave: You’ve been listening to 4 x 4 Health, sponsored by Sansoro Health. Sansoro health, integration at the speed of innovation. Check them out at www.sansorohealth.com. I hope you’ll join us next time for another 4 x 4 discussion with healthcare innovators. Until then, I’m your host Dr. Dave Levin, thanks for listening.

Author: Dave Levin

 

Talk with one of our experts today.