What medtech start-ups need to know about protecting intellectual property

The NSW Health Commercialisation Training Program includes a one-day seminar to help start-ups understand how to protect their intellectual property in Australia and around the world.

Co-founder and CEO of Eudaemon Technologies, Robert Gorkin, thought he knew a bit about patents and protecting IP. But, by completing a NSW Health Commercialisation Training Program course a few years ago, he discovered the area is far more complex, nuanced and fraught with danger than he had understood.

“I was aware of the need for IP protection in the early stages of commercialisation,” he says. “What I didn’t understand was the depth of it. You need a whole strategy. It’s more than just patents; it’s a whole arena of confidential information and how you protect it. It’s key to making a deal – your IP is what you have to sell and if you don’t understand how to protect that effectively, you’re dead in the water.”

Five years into its commercialisation journey, Eudaemon is flourishing and ready to launch clinical trials for its ‘next generation’ condoms, which use a soft, tissue-like material. Eudaemon was also a recipient in the 2018 round of NSW Health’s Medical Devices Fund.

Gorkin says that he has completed commercialisation courses on multiple continents, and the NSW Health course was outstanding. “It was one of the most rigorous, challenging and worthy courses I’ve done,” he says. “For anyone who’s interested it’s a really good opportunity to get your feet wet to understand some of those nuances on the journey.”

A free service, the NSW Health Commercialisation Training Program aims to fast-track innovative ideas that will revolutionise the healthcare sector, improve patient outcomes, and provide economic opportunities for emerging medtech and biotech businesses in NSW. Topics covered in a series of one-day seminars include clinical trials and regulatory affairs.

Since 2014, Will Hird, Principal at patent and trademark attorney firm Davies Collison Cave, has been one of the presenters of the one-day seminar on intellectual property.

“The Program focuses on trying to get commercial outcomes and bridging that gap between developing technology and getting it to market,” he says. “To assist with a course like this, interact with these bright individuals and help them and their businesses flourish; is a real privilege.”

Hird says one of the key points made in the seminar is that all information about the new technology should be safeguarded with a well-developed IP protection strategy. “You have to be careful with any publication about the technology,” he says. “It can be very difficult for a start-up company because they want to get out there and talk about the technology to drive investment and interest, but if there’s any disclosure of the technology at those early stages it can seriously affect the strength and commercial value of your IP protection later on.”

Hird says that a properly developed IP protection strategy will include working out the best time to file patents, in line with the development strategy. “You don’t want to file too early because some aspects of the technology might not be fully developed.”

With a background in chemical engineering before his law degree, Hird says medical technology start-up companies need to choose IP advisors carefully. “It’s important for start-up companies to have a patent attorney who is familiar with their industry and who is able to understand the technical details of the technology in development, so they can describe the technical details and properly protect it.”

During the seminar, there are plenty of opportunities for participants to ask specific IP questions about their area, Hird says. The presenters offer tricks and tips on everything from how to do your own due diligence, by searching publicly available databases, through to how to maximise IP protection in the early days of a start-up, while dealing with limited resources.

Gorkin, who is also an Adjunct Professor at the University of Wollongong, says in his experience as CEO of Eudaemon Technologies, the costs to get the right IP advice, although significant, are justified when dealing with multinational companies with their teams of lawyers.

He emphasises the importance of having clarity around “what you own and how you are protecting it”.

“Your confidentiality package needs to be presented and tied up in a bow for the real investors and partnering companies that you need to approach.”

For more information on the NSW Health Commercialisation Training Program, visit www.medicalresearch.nsw.gov.au/commercialisation-training.