An Interview with Bernie Greenspan on IP Management
Bernie Greenspan joined SDEE in 2017 and is a member of the SDEE Consultants Committee. He likes to attend the monthly networking happy hours and other special programs. He is a professional consultant as well as an instructor at UCSD Extension and Rady School of Management. We sat down to learn more about his consulting company and how he helps life science and medical device companies.
What does Greenspan IP Management do?
I help companies develop and manage strategies for their intellectual property assets. I also help in a variety of other ways ranging from organizing and managing their patent portfolios to performing IP diligence on potential licensing deals or product acquisitions. These activities can also include patentability and clearance searches, concept screening, establishing in-house training and patent committees, and being an efficient liaison between their outside counsel and in-house scientists and engineers. I specialize in biotech, medical devices, diagnostics, and pharmaceuticals.
Using experienced consulting services streamlines your effectiveness with outside counsel and ensures protection of your most valuable asset, your intellectual property.
Tell us a little about your background.
My Ph.D. Is in biophysics, and I spent 25 years in research and development for Union Carbide, Battelle Pacific Northwest Laboratories, and Dura and Elan Pharmaceuticals. My research experience is in inhalation toxicology, aerosol physics, and respiratory drug delivery. I then became a registered patent agent and led intellectual property efforts for 18 years at Pfizer La Jolla, Verus Pharmaceuticals, and Prometheus Laboratories.
What is the difference between a patent agent and a patent attorney?
Both attorneys and agents are required to pass the same patent bar exam before becoming registered. A patent agent is licensed to practice patent law only at the US Patent & Trademark Office. This allows drafting and prosecuting patent applications. A patent attorney is licensed to practice law more broadly.
What are some of the key things a company needs to know about developing an IP strategy?
A proper IP strategy will be customized and keyed to the specific product development cycle. Confidentiality agreements need to be in place. IP diligence and filing decisions occur at the beginning of this cycle. Periodic IP reviews and invention capture take place throughout development. Product clearance determinations must be made before launch. Of course, there are many more details, and SDEE members can contact me for a free checkup.
So, an IP Strategy is only for companies with products?
Not at all. An IP strategy is even more important for startups because they are just beginning to lay the groundwork for product protection. They need to decide what to patent, which countries to file in, what to keep as trade secret that might not be patentable, and many other decisions. If the company’s goal is to be acquired, the potential buyer will almost certainly ask about the IP plan.
What mistakes do companies tend to make when it comes to managing their IP?
I think many companies wait too long before paying attention to their portfolios. Often responsibility is assigned to someone with other pressing duties, such as the director of research or the business development person. Another thing they tend to do is fail to educate their patent counsel on the research and business objectives and keep him or her informed of changes in those areas.
Greenspan IP Management provides clients with a detailed strategy and roadmap for managing their IP. Some companies think that their outside counsel will make all of the necessary decisions and manage their portfolio for them. Your patent attorney will provide guidance, but ultimately it is up the company leadership to make the decisions with appropriate expertise and understanding.