Steps doctors should take to protect patent inventions

In the Courts. By Tanya Albert, AMNews staff. April 11, 2005.

Los Angeles orthopedic surgeon Gary K. Michelson, MD, went to court when he believed a company breached technology agreements and infringed on patents involving an implant he invented to help speed recovery after spinal surgery in which doctors remove discs. In September 2004, a federal jury in Memphis, Tenn., said Medtronic Sofamor Danek owed Dr. Michelson and his company $110 million in compensatory damages. It awarded another $400 million in punitive damages.

Medtronic is considering its options, including appealing the jury verdict, a company spokesman said. But the case illustrates that doctors who are inventing new tools need to protect themselves.

Dr. Michelson's attorney, intellectual property litigator Robert G. Krupka, a partner with Kirkland & Ellis in Los Angeles, answered some questions about patents and contracts for AMNews.

Question: If physicians develop new tools they believe could benefit others in their field, what is the first thing they should do?

Answer: Write the idea down. Then the physician should sign and date the written description and any drawings that would be helpful in understanding the invention. Next, have a trusted (nonrelative) colleague agree to strict confidentiality and have him or her countersign the description to confirm the date of the invention. Then the physician should seek out a competent patent lawyer to evaluate the protectability of the idea.