Invasively Measure Blood Flow Patent Legal System
READ GIVEN SCENARIO – WRITE 500 WORD ESSAY (LESS THAN 1 PAGE).
identify patent-related issues (including Bayh-Dole), describe why each issue is important to the patent process, and suggest actions to protect potential IP. Essay should include supporting explanations based on specific details in the hypothetical case. State assumptions or unmentioned facts as necessary, and identify the necessary facts. PLEASE DON’T REGURGITATE ANY MORE FACTS THAN NECESSARY!! Discuss which points of information the technology transfer team will need to determine if there has been a public disclosure, who the inventors may be, and other information that is important for determining whether to file a patent.
SCENARIO
Professor Greene is a faculty member in the School of Medicine, Department of Surgery at the University of Maryland, Baltimore. Prof. G teaches surgical residents, treats patients clinically, and researches improved surgical techniques. Prof. G sees many patients and leads a collaboration with other leading hospitals, for which she has access to a tremendous amount of surgical outcome data and many ideas on how to improve surgical devices.
At a joint networking event, Prof. G describes one idea to Professor Chris Vonn, a professor in Materials Science at Johns Hopkins while having a drink at a private table. Prof. G describes her idea for a surgical monitoring device that can non-invasively measure blood flow without radiation that could be useful to detect internal bleeding and blockages. Prof. CV mentions that a new material can measure flow of adjacent structures using a low-voltage electrical signal. Over several months, Prof. G asks other members of the collaboration if she can use the surgical outcome data for private development. Prof. G and CV develop a rudimentary prototype for testing on benchtop models in Prof. G’s lab. Prof. CV primarily creates and integrates software for interpreting the device’s electrical signal using open-source code and Prof. G provides a framework and methodology for using the device.
Profs. G and CV decide that they need funding to create a clinical device. They decide to apply for a joint NIH grant, then approach a market leader, like Medelectric Corp., for funding. [question on public disclosure, CDA]. In the meantime, however, Prof. G uses the device in cadaver experiments that were already scheduled to test other devices. Prof. CV files an invention disclosure to the Office of Technology Ventures (JHUTV) at JHU, but Prof. G does not disclose to the Office of Technology Transfer (OTT) at UMB because she doesn’t think the device is UMB’s business or is patentable. JHU evaluates the disclosure, meets with Prof. G, and files a U.S. provisional application prior to NIH application submission