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“If you have an employment agreement with a provision on intellectual property, have it reviewed by an attorney before you begin applying for patents. A good attorney should be able to give you some clarity. Suppose, however, that your employment agreement has muddied the waters a bit. In that case, you have a few different options, and all of them will come with some risk. First, you may speak with your employer vaguely about your plans and attempt to get a release, or work out some other agreement so that you can pursue your project alone. In some cases, collaboration may provide you with the resources to proceed, and ease a bit of the financial burden. Of course, this may bring undesired attention to you, and may require some diplomacy and care. Second, you may sit on your invention or change your employment. Here, time is working against you and may affect the patentability of your invention. Additionally, it’s possible that even after the termination of your employment, that your old employer will still claim a right to an invention that was conceived during your employment with them. Third, you can forge ahead without telling your employer. There are no easy answers, but this is the requisite analysis, and it is quite easy to make a mess.
If you do intend to pursue an invention while employed, a good rule of thumb is to work on your invention on your own time, in your own house, using your own resources and your own money. You don’t want to blur the lines. You want to clearly differentiate between your property and your employer’s.”
Peter D. Sleman is an attorney. He is the author of The Physician Inventor: The Doctor’s Handbook to Patenting Medical Devices and Methods.
He shares his story and discusses his KevinMD articles, “Intellectual property provisions in physician employment agreements” and “The COVID-19 breakthroughs are coming.”
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Hosted by Kevin Pho, MD, The Podcast by KevinMD shares the stories of the many who intersect with our health care system but are rarely heard from.
Transcript
Kevin Pho: Hi, and welcome to the show, where we share the stories of the many who intersect with our health care system but are rarely heard from. My name is Kevin Pho, founder and editor of KevinMD. Today on the show, we have Peter Sleman. He’s an attorney and is the author of the book “The Physician Inventor: The Doctor’s Handbook to Patenting Medical Devices and Methods,” and he shared the excerpt from that book, “The COVID-19 breakthroughs are coming.” Peter, welcome to the show.
Peter D. Sleman: Yeah, thank you so much for having me, Kevin. It’s an honor.
Kevin Pho: Thank you. So we’ll get into your book and your excerpt in a bit, but first off, tell me your story and your journey to where you are today.
Peter D. Sleman: Sure. So I was a biomedical engineer, then I went to law school, and I found that patent law was kind of a natural fit between my skill sets, obviously engineering and law. I started working at a New York firm, and I happened to work with a partner that was dealing with medical devices at the time. He was working with Boston Scientific, and that’s really all I’ve been doing the last 11 years. It has just been kind of a natural fit. I handle a host of technologies, but I’m very comfortable with medical devices, and it seems to be kind of where I find the most satisfaction.
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Kevin Pho: Wonderful. And I want to start with your first KevinMD excerpt, “The COVID-19 breakthroughs are coming.” So can you walk my audience through that excerpt and why you decided to share that with my audience?
Peter D. Sleman: Sure. So in the beginning, there was a large number of articles. There was one, the New York Times, that was talking about a ventilator shortage, kind of in the beginning of the COVID pandemic, and a lot of my friends were discussing it and asking questions, and there seemed to be a very real danger that hospitals were going to run out of ventilators. So I happen to be a little bit of an optimist, and in my article I basically argued that we would not have that shortage and that something would happen. I didn’t really know what the thing would be, but I always thought that when you have kind of the general population converging on a single problem like that and cooperating, it would naturally solve itself.
There hasn’t been a shortage yet. There have been some discussions in probably the last couple of months that maybe ventilators aren’t the best therapy or the best approach, but the point kind of remains the same: When everybody kind of converges on the same problem, it’s going to be solved. And maybe that’s the optimist in me, but I found that I was getting a lot of phone calls early on from different people, engineers, physicians, trying to solve that problem. Some of them worked well, some of them didn’t work, but I thought it was always interesting that everybody was kind of using whatever resources they have to try to solve the same problem.
Kevin Pho: Now, can you give us an example from the past where all these people converged to solve a problem similar to the potential ventilator shortage?
Peter D. Sleman: Sure. The COVID-19 pandemic, I mean, that is really kind of very different from everything else that we’ve seen, because it’s happened on a global scale, and because everybody really has been focused on one problem. What I’ve seen that’s very interesting is that there was a shift. So initially, I was getting a lot of phone calls from people trying to solve the ventilator problem and making different mechanical ventilators and different electrical components for ventilators. And then after that seemed to kind of peter out, what happened next was everybody started looking at masks, and then I started getting a lot of calls from people trying to make different masks, and masks with different efficiencies, and masks that let you breathe better. So it was very interesting to me how, when everybody kind of looks at this problem, they try to solve it in different ways.
Kevin Pho: That segues nicely into your book, “The Physician Inventor,” and I think it’s such a much-needed book, because doctors are no longer confined to the exam rooms. They’re trying to solve medical problems outside of the exam room by creating new medical devices, by creating new medical apps, by creating new intellectual property. So tell me the story of why you decided to write that book specifically and what kind of problem you were trying to solve.
Peter D. Sleman: Sure. I thought it was a book that needed to be written. I hadn’t seen anything like it. I’ve worked with large device manufacturers in the past, and I’ve worked with their in-house counsel, and there’s always a group of attorneys that are very seasoned, that know kind of how to go from initial concept to a medical device, to bring it to market. But for your typical physician, that path is not really defined. You may start thinking, “Maybe I need to speak with a patent attorney, or maybe I need to speak to a designer or engineer,” and it’s really unclear kind of who to talk to and who to trust. So I thought it would be a nice primer for physicians, and it’s based mostly on some of my current clients who have kind of gone through that journey and through that process and have kind of found me, and I’ve learned a lot from their journey as well.
Kevin Pho: So let’s take us to the beginning. Let’s say you’re a physician who has come up with a new invention. Can you start at the beginning? Where should they turn to next? What are some of the resources that they can turn to to learn about the next steps?
Peter D. Sleman: Sure. So in my book, I discuss patent searching, and this is something that anyone can do. With Google Patents and with the USPTO website, anyone can kind of hop on and do simple keyword searches to see if their idea’s out there, if their invention has been done already, and then I discuss kind of how to do that. And I like to think that it should be really everyone’s first step to do their own search. I am the kind of person that if I have an interesting idea, it will stay on my mind until I either sort of find that it’s already been done or I do something about it, and I find that most people are like that.
So you kind of go with the approach of, “I have to do the search and see if I could kind of kill this idea and not waste any more time on it, or if it’s viable, then take the next steps.” Maybe speak to a patent attorney, or maybe think about how I would actually solve it, maybe make a prototype. So there are different ways to do it, and certainly speaking to a seasoned patent attorney would help in that process.
Kevin Pho: In your second KevinMD article, you talk about how intellectual property needs to be proceeded with carefully and how it may interfere with the physician’s current contract. Can you outline some of the pitfalls that these physician inventors should look out for?
Peter D. Sleman: Sure. So a lot of people don’t know what’s in their employment contract most of the time. My wife’s a physician, and she didn’t review her own contract. I have to constantly tell her what’s in there. So most people don’t really know what’s in there other than base salary, maybe something about a bonus, and some vacation time. But you should look at that very carefully and try to understand, if you do invent, what happens to that.
The other thing that people should look out for is to make sure that if you’re inventing on company time, using company resources, things of that nature, now you’re getting kind of in a danger zone. Not necessarily a danger zone, but you should be using caution. And it’s always important from the beginning to really kind of delineate what’s your property, what’s company property, and what are my rights and obligations, and make sure that you’re being fair, obviously, with your practice or your hospital if you’re using their resources, and kind of go about it the right way. I find that when people don’t do that, when they ignore the issue for too long, it creates much more work for us as attorneys, but it does make the whole thing a lot more complex.
Kevin Pho: So what should physicians do up front? Should they reach out to their hospital and say, “I’m thinking about inventing this. How is it going to affect my contract?” So what kind of approach do you normally take?
Peter D. Sleman: I usually like to have, obviously, my inventor speak to me first, look at the employment contract, and understand the history of how the idea came to mind. For example, did you have the idea before you joined this hospital? Were you working on it at home? Is this something that you had during residency? So it’s really interesting. It’s really important to kind of understand what the facts are, really kind of piece that together, before you start reaching out to, let’s say, the hospital or your practice group. I think that’s very important. The problem, or the mistake some people make, is to move too quickly and just go out and speak to a colleague or publish something. It’s always a good idea to kind of understand the legal ramifications first and then go ahead and take your steps.
Kevin Pho: And what other tips can you share with potential physician inventors?
Peter D. Sleman: The most important thing is to kind of do something. So what people tend to do is they’ll have an idea, they’ll sit on it, and maybe a couple of years later they’ll dust it off. And in the U.S., the patent system is a first-to-file system. That means it’s basically a race to the patent office, and that’s really important to understand. So your invention may be a great one, your device may be a perfect device that the market needs, but if you wait five years or something like that, someone else may take your place.
So the important thing is to kind of make some moves, maybe try to prototype if it’s possible, and obviously that depends on the type of device. Try to see if the thing actually works, and then see what you can do to protect your IP, and see kind of what the next steps are. For some physicians, that means starting their own company and going out and trying to sell their product. There may be other products that require a lot of FDA approvals, things of that nature, where you can’t bring it to market yourself. You’re going to need a device manufacturer to help you. In that case, the plan or the strategy should be: How are we going to protect the IP and go to someone to license it?
Kevin Pho: We’re talking to Peter Sleman. He’s an attorney, and he’s the author of the book “The Physician Inventor: The Doctor’s Handbook to Patenting Medical Devices and Methods.” Peter, can you share with my audience perhaps some online resources that they could turn to in case they have a great idea or an invention?
Peter D. Sleman: Sure. So like I said, the USPTO website is a great one, and it has a lot of great information. You can do simple keyword searches, and I think everyone that knows how to Google will kind of figure that out. Google itself has a Google Patents page that you can do some searching on. There are several blogs that are kind of written for pro se inventors that you could look at. Obviously, the book would give a nice little primer. But understand that it’s a very dense body of law. You’re not going to be able to kind of understand everything right away, but to become conversant, I think, should be kind of the goal, and to understand what questions to ask. I think that’s always important.
Kevin Pho: And my final question, Peter: What is your take-home message that you want to share with the KevinMD audience?
Peter D. Sleman: I was kind of thinking about that, and I was watching a movie with my son on Disney Plus, and the movie was “Ratatouille.” One of the key messages there was “Anyone can cook.” It’s about a little rat that wants to become a chef. And I just kind of started my train of thought there: I think that everyone can invent. I think that with the tools at everyone’s disposal now, YouTube, different forums, even people who are not traditionally trained or educated in a given industry can learn. And I’ve found that in my practice, I’ve had a lot of people that aren’t necessarily engineers that are coming up with some really terrific devices. So there is a lot of information out there, there are a lot of people that you could reach out to to get help, and if you have an idea like this, if you’re going to do something about it, now is really the time to pursue it.
Kevin Pho: And how can people find your book?
Peter D. Sleman: My book’s available at Amazon, and I think people can feel free to reach me through my contact information, which I’m sure you’ll provide.
Kevin Pho: Fantastic. Peter, thank you so much for sharing your insight, and thank you for being on the show.
Peter D. Sleman: Thank you so much, Kevin.
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