Scott Talbot

Partner

Cooley LLP

Scott Talbot is an accomplished patent partner focused on counseling innovative clients on intellectual property issues, particularly on patent-related matters. His experience spans all aspects of patent law,including patent procurement, licensing, enforcement, transactional support, and technology transfers.  He has more than two decades of experience in the medical technology industry, including medical devices, diagnostics, and digital health.

HTA - Tell us about your personal/professional background?
 
I did not originally plan to be a lawyer, much less a patent lawyer – I started my career in engineering, designing rocket motors for the defense industry. After three years in engineering, I pursued a law degree for the intellectual and professional diversification and fulfillment. In two years of practicing corporate law, I realized that I could make the greatest impact at the intersection of law and technology, and switched to patent law. 

I thrive on the challenge of learning a new client’s technology and business, as well as helping them use their intellectual property to support their commercial objectives and enhance their value. The medtech sector is particularly challenging and exciting because the products typically combine several technologies and they have the potential to have a large positive impact on healthcare.
 
My wife and I are proud parents of two sons. My older son is working in healthcare and planning to attend medical school, and my younger son will finish his bachelors in aerospace engineering this year. I am working on my private pilot’s license, and home brew beer when I can squeeze it in.
 
 HTA - What excites you about Austin’s burgeoning health care technology market?
 
The Austin market is like an early stage medtech company, with lots of potential. It presents an opportunity to play a larger role and make a bigger impact than in more established markets like the Bay Area or Boston.
 
HTA - How do you learn? What are you reading?
 
Relentlessly. I take advantage of podcasts and Audible.com to learn while driving, working out, walking our dogs, etc. I get daily news from the New York Times and several BBC news podcasts and support my pilot aspirations with a dozen aviation-related podcasts. I feed my interest in history and economics with Malcolm Gladwell’s “Revisionist History,” “Freakonomics Radio,” and Dan Carlin’s “Hardcore History.” I consume anything written my Neal Stephenson and Robert Harris, among other authors. I get my daily news on the medtech industry from BioWorld MedTech.
 
HTA - What did you learn as an engineer that impacts how you practice law today?
 
Although it’s important to see the big picture, you still have to pay attention to the details. The rocket motors I designed as an engineer were tested at our on-site static test firing facility, and the tests were important and expensive. I specified the material for the nozzle in a test motor, but hadn’t researched enough to find out that the propellant in the test motor aggressively erodes that nozzle material. Although nothing blew up, the test results were useless and the test firing was wasted. From that mistake, I learned the lesson of thorough preparation and ensuring that I knew everything I should about any project.
 
HTA - What should a cash-strapped start-up consider when weighing the benefits and risks of filing for a patent?
 
Few products/technologies can be protected well without patents. If you don’t secure patent protection, you may just end up validating a product or market for a bigger, better funded company to dominate. With good patent protection for your company, the calculus changes for potential competitor companies. Good patent protection means they will need to acquire or license from you, or focus their efforts on another product. The cost of taking the first big step on the path to patent protection – filing a solid, professionally-drafted patent application – can be significant, but should be high on the list of financial priorities for any early-stage company.
 
HTA - At what point should an inventor rush an “inventive concept” to the patent office?
 
You definitely want to file before you make your first non-confidential disclosure, to fully preserve patent rights outside the US. That filing should include at least all of the information that you are planning to disclose, but in general your first patent filing should be as robust as possible to get the most benefit from your earliest filing date. Since the US changed from a “first to invent” to a “first inventor to file” system, there is also a higher premium on filing sooner than later.

If you are in a fast-moving area, and/or have reason to believe that others are working on similar concepts, err on the side of filing early. One technique is to file both early and often – file an early provisional application and continue to file additional provisionals that add new developments to the earlier provisional(s). Pull everything together in a robust non-provisional application within one year from your first provisional filing. Your first non-provisional filing is likely to be the most important one you will make, providing the foundation for your patent program – make it the best one you can.
 
HTA - Do most young companies tend to hire patent attorneys to file for them or do they do it themselves? If a company decides to file on its own, what pitfalls should they avoid?
 
The majority of companies hire patent attorneys to prepare and file their early patent applications, which I also STRONGLY encourage companies to do. The mechanics of filing an application at the US patent office are not difficult, but it is critical that you do the following: 1) Keep a copy of the exact document(s) that you filed, including the electronic filing receipt with serial number and filing date, and be sure that you provide a correspondence address that you actively check. 

If you receive something from the patent office after your filing, check with a patent attorney to be sure you know whether a response is needed, and what that response should include. 2) If you are drafting the patent application yourself, model it on an issued patent or published patent application that is for an invention similar to yours. 3) Don’t try to draft claims. 4) Only file a provisional application on your own – there are many more opportunities to get things wrong with a non-provisional application, and you should really engage patent counsel for that.
 
HTA - Can you share an example of a startup mostly formed around its IP, and how it turned that into a success story?
 
A good example of startups formed around their IP would be all the companies that were started in The Foundry in Menlo Park.  As I understand their process, they work on IP as an intimate part of the process of evaluating market opportunities and generating product concepts. They end up with robust patent applications on file before they’ve finalized their product design, and have an enviable string of successful exits on their companies.