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March 31, 2025 13 mins

Patent litigation can devastate a small medical device company when a well-funded competitor decides to flex its legal muscle. Mario Milano, owner of Milano IP, reveals the strategies that startups and mid-sized companies can use to protect themselves in this high-stakes environment.

The cornerstone of protection starts with thorough patent searches before product release. As Milano explains, conducting searches months before final engineering allows companies to identify potential infringement risks and adjust designs accordingly. This proactive approach helps avoid the nightmare scenario of receiving a cease-and-desist letter after significant investment in product development.

The financial reality of patent litigation creates a significant power imbalance. Large corporations maintain litigation war chests as part of their business strategy, while smaller companies rarely have the resources to sustain lengthy legal battles. This disparity often forces innovative companies to abandon promising technologies or sell their intellectual property under duress. However, Milano outlines several defensive strategies that level the playing field, including comprehensive portfolio analysis and strategic patent planning.

For medical device companies considering eventual acquisition, patent strategy takes on additional importance. Milano recommends maintaining "open patent families" through continuation applications, which significantly increases company valuation during acquisition talks. Many large companies acquire smaller competitors specifically for their patent portfolios, particularly when those patents could be asserted against other market players. By understanding these dynamics and implementing a holistic approach to intellectual property protection—including patents, trademarks, and strategic trade secrets—small medical device companies can navigate the challenging landscape of patent wars with confidence. What steps will you take to protect your next medical innovation?

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Episode Transcript

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Speaker 1 (00:03):
And welcome to the Secure your Creation podcast
starring Mario Milano.
I got to make sure I say thatproperly Milano from Milano IP.
Hey, mario, explain toeverybody who you are and what
you do.

Speaker 2 (00:16):
Thanks, craig.
Yeah, I'm Mario Milano, ownerof Milano IP.
We help clients protect theirinventions with patents,
trademarks, copyrights and tradesecrets.
We help them identify whatwould be the best form of
intellectual property to protecttheir ideas, and then we help
them go ahead and obtain thatprotection.

Speaker 1 (00:36):
Awesome, awesome.
So today's topic that we'regoing to talk about here is
patent wars and litigation.
That's the focus of our podcasttoday is patent wars and
litigation.
That's the focus of our podcasttoday.
And I know when we were doingour pre-recording brief, mario,
we were talking about patentportfolios.
So just for the clarity, tomake sure we're all on the same

(00:56):
page, tell me what a patentportfolio is.
Sure.

Speaker 2 (01:00):
So a patent portfolio is a collection of patents that
are owned by a company or acommon entity.
The patent portfolio I wouldsay contains any issued patents
that they have and any pendingapplications that they might
have.
Sometimes people will includeexpired patents to make it pump
up the numbers a little bit, butgenerally the expired patents

(01:23):
aren't something that we'reconcerned with, and so it's
usually just pendingapplications and issued patents.
It can also be broken down intowhat each portfolio you know a
company.
they might have an entire patentportfolio, and then they could
also have a portfolio directedto product A, which would be
their patents that are onlycovering product A and then a
portfolio for product B as well,are only covering product A and

(01:44):
then a portfolio for product Bas well.

Speaker 1 (01:45):
Awesome.
So in terms of, we're going totalk a little bit more
specifically today about medicaldevice companies.
So a question I guess I havefor you is how does startup and
midsize medical device companiesprotect themselves against
patent lawsuits from largercompetitors who are trying to
block their entry into themarket?
What strategies can they use todefend themselves?

Speaker 2 (02:07):
Yeah, that's a big problem for smaller companies
when a large company you don'twant a large company asserting
their patents against you, andso the number one way to avoid
that is to do a patent searchbefore you release your products
commercially.
And typically I tell clientslook, let's you know.
Once you have your idea, youknow what you want the product

(02:27):
to do.
You have a general idea of howit's going to function and the
components of the device.
Well, let's do a patent search.
You know, a couple of monthsbefore you get to final
engineering stages, before youget to production, let's do a
patent search.
We'll identify yourcompetitors' patents and their
pending applications and we canmake sure that the design that
you have in mind, or the coupleof designs that you have in mind

(02:48):
, are not going to infringe therights of others.

Speaker 1 (02:57):
Once you do, the patent search, then you'll know
what's out there and you canthen design your product
accordingly.
And so I know, when we talkedbefore as well, we talked about
basically how the big boys, ifyou will, that's what we'll coin
them in this conversation thebig boys have a money bank right
.
Talk a little bit about thatand how that affects maybe a
small to medium size or even amedical device company who's
just in the entry or startingthis process.

Speaker 2 (03:18):
Yeah, when the big device companies have to file a
patent lawsuit, it's veryexpensive.
When the big device companieshave to file a patent lawsuit,
it's very expensive.
The bigger companies are ableto finance those types of
lawsuits, and it's part of thecourse for them.
But for a smaller devicecompany, defending against a
patent infringement lawsuit canbe very expensive.

(03:39):
And so the bigger companieswill recognize that and
sometimes will just assert theirpatents, knowing that the
smaller company may not be ableto afford an ongoing lawsuit
litigation.
And so the smaller company willthen have to decide either stop
selling their products and notenter their market, or to sell

(04:02):
know to sell their patents, or,to you know otherwise, somehow
just relinquish their patents orabandon their commercial
activities.
Awesome.

Speaker 1 (04:13):
Okay, so let's talk about planning.
That comes with these patents.
So if you're in a situation,tell me about what Milano IP
might do for a small to mediumsized medical device company who
comes in and maybe has a twoyear plan, a five year plan, a
20 year plan, a 50 year plan, Idon't know you tell me what type
of things would you guys do forsomebody who has that plan,

(04:35):
who's entering the marketagainst the larger competitors?

Speaker 2 (04:39):
Yeah, and that's a conversation that we'd like to
have with any new client orexisting client.
You know we constantly talkabout OK, what's the plan here?
And so you know they come to meand they say we're going to be
releasing a new product.
Ok, what's the plan for theproduct?
Is this something that we thinkis just going to?
sell for two or three years?
Is this something that's goingto be sold for 10 or 20 years?

(04:59):
Is this going to be?
Is this new product going to bethe platform that the whole
company is built around andyou're going to specialize in
this one product?
For example, you might be asmall medical device company and
you're going to make spinalimplants.
Well, those spinal implants youknow, that might be what the
company is known for some ofthese smaller companies.
If you only have this one teamof engineers, they might all be

(05:20):
working on spinal implants, andso we might come up with the
base product and then expandfrom there.
If that's the case, then wewant to get very robust patent
protection and get a reallyrobust patent application that
we can then build off of later,and so we ask the company not
only what is the product for.
Then we start to talk to thecompany about okay, what is the

(05:41):
founder's plan?
Are they going to be in thisbusiness forever?
Are they just trying to?
you know, get some commercialsuccess.
Build up a patent portfolio andthen sell to a larger company.
Uh you know.
If that's the case, then we takesteps to make sure that it's
attractive to outside investorsor larger companies.
Uh, and you know, the thing youhave to do there is make sure

(06:02):
that you have a really goodproduct and make sure that you
have very robust patentprotection.
Keep your patent applicationsopen, meaning that once you have
a patent that's issuing, youfile a continuation application
so that you can then getadditional patents directed to
those products, and the bigcompanies certainly like to see
that.
When you have open patentfamilies like that, as we call

(06:24):
it Now, the big guy can come in,he can buy your, buy your
patents from you, and then theycan also use those patents to
then get additional patents forthemselves.

Speaker 1 (06:36):
Wow.
So give me a rough idea Rough.
I know this is a spur of themoment thing, but what can
having so many patents do forthe value of your business when
you go to sell?

Speaker 2 (06:46):
yeah, that's certainly going to increase your
value a lot.
Sometimes the biggercompetitors will look at smaller
guys and they'll say, okay,they have a decent product, but
they're you know there's roomfor improvement there.
And of course the largercompanies all think that they
can improve on products that areout there.
And not only is the producthave some room for improvement,

(07:08):
but the intellectual property iswhere some real value is.
Maybe company the big company Aknows that big company B is
infringing the patents of thesmaller company, but the small
company might not have the fundsto go ahead and assert their
patents.
So sometimes large company willsay I'll just buy that patent
portfolio, I'll buy the companyand then I can assert those

(07:30):
patents against other people orjust use those patents for
myself to come up with asuperior product.

Speaker 1 (07:38):
Wow.
So in framing this nextquestion, think about it from
the context of the largercorporation.
And when we spoke before aboutthe terms of the patents and
being able to make sure thatit's, you know, a two to five to
20 or whatever year space, whatwould you suggest for a smaller
company who's just looking toget started and compete?

(08:00):
What would you suggest theirprocess or their steps should be
beyond the?
I'm losing it here.
What would their process bebeyond the search?
Sorry.

Speaker 2 (08:17):
Yeah, so their process, you know, would start
with the search and when we dothe search we can identify the
entire patent portfolio of thelarge companies and we look at
you know the entire patentportfolio and we make sure that
we understand.
How are we going to defendagainst the lawsuit if you know

(08:39):
the large company goes ahead andasserts their patents against
us Because you don't want tohave, you have your product.
you don't want to say, oh well,this is how our product operates
and while you're backing awayfrom the claims of one patent,
you might be backing into theclaims of another patent within
that portfolio, and so we take aholistic approach by looking at

(09:00):
the entire patent portfolio ofa competitor and making sure
that any of the arguments thatwe're making, that we can say
how our product is made, whatthe components of it are and how
those components function andits shape and form, and make
sure that we have a clearargument on how we are not
infringing any of the patents.
Instead of just looking at eachpatent one by one, we look at

(09:22):
the entire patent portfolio tomake sure that we have some room
to operate.

Speaker 1 (09:27):
Very good, very good.
So you're always looking outfor the person who you're
working for.
I love to hear it.
So tell me about, briefly, someof the other stuff that you're
looking for from an IPperspective for, maybe, a
medical device company, whetheryou're talking about trademarks,
whether you're talking abouttrade secrets.
Tell me a little bit more aboutthat side of your business when
it comes to medical devicecompanies.

Speaker 2 (09:49):
Yeah, so, trademarks are certainly going to be
something that you're going towant to get established early
Again, just like with patents,you want to do a search there,
make sure that you're going tobe able to get a trademark for
your company or for your newproduct.
You know, you come up with anew product name, new product
tagline, all those things are.
You're going to want to protectall those things, and so you
know we can go ahead and do asearch, make sure that you're

(10:11):
clear and then file for it andmake sure that you get the
trademark that you need.
And so the trademark, you knowit helps if you need a great
product and you also need to beable to market it, and so that's
where the trademark certainlycomes into play.
Now, sometimes, from a devicestandpoint, you know, sometimes

(10:33):
you might come up with somethingnew that's hard to detect
exactly what you're doing, butit might not be patentable.
So in that case, you know, wetalk to the client, we say, ok,
if somebody else was to just buythis product off the shelves,
would they be able to tell whatyou're doing to achieve the
superior results of your product?
And if the answer is no, thensometimes it's not worth it to

(10:56):
file a patent application.
Then we just keep that underour, under our hat, if you will,
and keep that as a trade secret.

Speaker 1 (11:04):
So, in terms of your service with your client base,
there's obviously a consultationside of that right, because
most people come in.
I would assume they come in,they know how their product
works and they have all thesedifferent options to it and
they're very strong in terms ofhow that thing should work.
What type of consultation sideof things when it comes to
patents and trademarks and soforth do you offer your clients?

Speaker 2 (11:26):
Yeah, so we offer an initial free, initial
consultation where we talk aboutthe product.
How did you come up with it?
Who do you know that's acompetitor that's out there?
Let's make sure that we are atleast clear of the competitors
that you know of.
And then not only do we talkabout what the product is, and

(11:55):
this is one of the keycomponents that some inventors
or smaller companies might notrecognize is we don't want a
patent just on what you're doing.
If you had five different waysto do this or to make this
product, we want to put all fivedifferent ways into the patent
application.
That way, if your competitorscome along and try to adopt a
similar concept to what you weredoing, maybe your competitors
say, okay, they came out withthis great product, let's just
design it this way.
Well, that was an idea that youalready have, and now you

(12:16):
already have that in your patentapplication.
You can prevent yourcompetitors not only from doing
what you're doing but from doinganything even close to what
you're doing.

Speaker 1 (12:27):
That's awesome.
That's awesome.
So, as we round out the showhere, what I want everybody to
know if you enjoyed the Secureyour Creation podcast, don't
miss a single episode.
Hit the subscribe button onyour favorite podcast platform
to stay informed on the latestIP strategies, legal insights
and expert advice.
And if you're finding value inthe content, leave a review.
It helps us as creators,businesses, creative businesses

(12:47):
to discover the show.
For others to discover the show, I should say, before I take
off here Mario, do you have anylast parting things in terms of
these patent wars and litigationthat people should be thinking
about?

Speaker 2 (13:00):
It's always better to find out what your risks are
before you get a letter ofaccusing you of infringement.
So do the search early, andanytime you come up with
improvements for your products,make sure you go ahead and do
another search for that.

Speaker 1 (13:14):
Awesome, awesome.
I'm Craig Andrews.
This is Mario Milano, and staytuned for our next episode of
Secure your Creation podcast,and we'll talk to you next time.
Have a great day.
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