What shows up once the story must survive the terms
At the outset of life sciences transactions, there is usually a strong sense of alignment. Founders and investors tend to agree on the importance of discipline, focus, capital efficiency, and long-term value. That was evident throughout JPM Healthcare Week and in conversations around RESI 2026, where many of the same themes surfaced across different rooms and discussions.
This post is the third in our three-part series, Gearing Up for HTLH USA 2025, where our team of attorneys will share insights on intellectual property, equity, and exit strategies and how these issues intersect in the transactional context.
HLTH USA is a whirlwind—partnering, investor meetings, and press all compressed into a few fast-moving days. That intensity can be great, but it can also be risky for protecting and maximizing the value of your intellectual property. In the rush to network, pitch, and show off your innovation, it is easy to jeopardize your patent or trade secret rights by disclosing too much detail in a conversation or showing more than you should at your booth.
As HLTH approaches, it is worth pausing to consider how a thoughtful IP strategy can protect your company’s most valuable assets not only during HLTH itself, but long afterward.
Capturing innovation is just as important as protecting it. A simple invention disclosure form — recording the technical problem, your solution, key data, and alternative embodiments — can become the backbone of a provisional patent filing. Filing quickly, before public disclosures, is critical. But speed shouldn’t come at the expense of substance. A well-prepared provisional application, rich with enabling detail and variations, buys you time to refine claims and sequence international filings. Resist the temptation to file a “skeleton” provisional unless you have no other option.
In medtech and life sciences, it is often valuable to cover not just the device or system, but also methods of use (including physician workflows), manufacturing or assay methods, and the software or algorithms that deliver a concrete technical improvement. Enabling disclosure for a variety of embodiments can make all the difference when it comes to enforcement or licensing down the road.
This post is the second in our three-part series, Gearing Up for HTLH USA 2025, where our team of attorneys will share insights on intellectual property, equity, and exit strategies and how these issues intersect in the transactional context.
The healthcare industry is undergoing a rapid transformation, with startups driving innovation in patient care, diagnostics, data management, and telemedicine.
In today’s rapidly evolving healthcare industry, startup companies face significant hurdles in bringing innovative solutions to market. Licensing software and intellectual property provides a practical pathway for startups to overcome high development costs, regulatory complexities, and the need for advanced technology. By understanding various licensing models and the strategic importance of partnerships, healthcare startups can accelerate growth while ensuring compliance and security. This guide aims to empower entrepreneurs with the knowledge needed to make informed decisions about licensing, ultimately supporting innovation and better patient outcomes.
Later this month, members our Healthcare group will be presenting at the HLTH USA 2025 conference in Las Vegas. We have the 8 a.m. session on Tuesday, October 21, 2025, titled “Clinic to Cap Table: IP, Equity, and the Path to Exit,” where we will talk about how to turn clinical insight into
On June 7, 2018 the United States Patent and Trademark Office (USPTO) issued a new Memorandum that clarifies its view of Subject Matter Eligibility, under 35 U.S.C. § 101, regarding the patentability of Personalized Medicine discoveries.
The Memorandum was prompted by the Federal Circuit’s recent Vanda decision, where the Court provided its own insights as to the Subject Matter Eligibility of Personalized Medicine patent claims. [1] The claims in Vanda recited a method of treating a patient suffering from schizophrenia with the drug, iloperidone, and included specific steps, such as administering iloperidone to the patient in an amount guided by the genotype of the patient, which can predict the rate of drug metabolism. The Court summarized Vanda by stating: “The inventors recognized the relationships between iloperidone, CYP2D6 metabolism, and QTc prolongation, but that is not what they claimed. They claimed an application of that relationship.”
For those of you who may have lost hope regarding the patentability of personalized medicine discoveries, here’s some encouragement. Recently the Federal Circuit affirmed the validity of a patent directed to a method of treating schizophrenia, which is based on genetic testing of the patient. Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., Nos. 2016-2707, 2016-2708, 2018 WL 1770273, —F.3d — (Fed. Cir. Apr. 13, 2018). The Court found that the claims of U.S. Patent No. 8,586,610 were patent eligible and not drawn to a law of nature under 35 U.S.C. § 101. Claim 1 is representative and is shown below:
For Husch Blackwell’s Northwestern University grad school alums, Laura Labeots (Ph.D. 1992) and Ed Gamson (Ph.D. 1970), it was a huge thrill to learn that one of their own, a fellow chemist from Northwestern, had won the 2016 Nobel Prize in Chemistry last week. Sir J. Fraser Stoddart, who specializes in Nanotechnology, will be awarded the Nobel this December in Stockholm, Sweden, for his groundbreaking work on “molecular machines.” He and his group have devised molecules that remarkably can do mechanical work, such as lifting and moving other small molecules.
An entrepreneurial company may face an early decision as to how it can afford to develop new technology, particularly new technology that does not fit within the technical specialties of that entity. Whether a new company needs to develop a new website, new software, or a compatible piece of technology, that company might consider entering into a contractual alliance with another party to develop that technology.
Healthcare is a highly competitive market. Healthcare companies are hiring marketing teams to lure customers to their facility. This will invariably require making statements regarding the quality of your services and how your services are better than your competitors. Problems will arise if these ads cause patients or their families to expect more than what is or even can be offered. There are many scenarios that could result in claims of false advertising under §43(a) of the Lanham Act. In addition, the Federal Trade Commission (FTC) and the National Advertising Division (NAD) of the Council of Better Business Bureaus have guidelines for what companies may include within their marketing programs. Today, however, we will be looking at “puffery.”
In one of our first posts, we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark became more protectable as it moved up the line. Laudatory trademarks, trademarks that attribute a quality or excellence to the goods or services, are often included in this list as “descriptive marks” requiring a showing of secondary meaning to be protectable. However, it has been recognized that some laudatory marks do not describe any feature of the product it is used with, but rather suggest that the product is of high quality or “better” quality than other similar products. In these cases, the laudatory composite mark may be considered to be suggestive.