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Articles written by John W. Boger, Esq.

Trade Secrets Go Federal

by John W. Boger, Esq. | Jun 2016

Passage of the "Defend Trade Secrets Act" (DTSA) federalized the trade secret law. One of the key aspects of DTSA is that companies will now be allowed to file civil lawsuits in Federal court if their trade secrets have been stolen, possibly creating a new level of consistency in how trade secret la ... Read more »

Harvesting Engineers’ Ideas through Invention Disclosure

by John W. Boger, Esq. | Dec 2015

The key precursor to the development step is the “harvesting effort.” Answering specific questions allows inventors to organize their thoughts and give a clear explanation about their invention. ... Read more »

Product Development and IP Considerations: A Marriage Made in Heaven?

by John W. Boger, Esq. | Sep 2015

This article outlines the stages of the R&D process and the corresponding parallel issues that the legal department would want addressed either prior to or at the same time. ... Read more »

The Dos and Don’ts of Trademark Registration

by John W. Boger, Esq. | Aug 2015

The investment of time and money to obtain trademarks may take a significant hit if the respective trademarks are not properly used and noted. This article serves to suggest best practices regarding a company’s use of its trademarks. ... Read more »

Training Your IP Police Force to Catch Infringement

by John W. Boger, Esq. | May 2015

It is critical for all companies to establish and properly train their own IP police force to enforce their own protected inventive designs. ... Read more »

You Secured a Utility Patent; Now What about Your Design Patent?

by John W. Boger, Esq. | Mar 2015

Recent high-profile lawsuits have demonstrated the importance of design patents to protect inventions. Understand the difference between a design and utility patent to ensure that your IP portfolio is appropriately armed against attack. ... Read more »

How to Get the Most Out of Your IP Firm

by John W. Boger, Esq. | Dec 2014

Device companies often mistakenly focus solely on patents to protect their ideas. Taking this narrow approach could hurt the long-term growth of the company. ... Read more »

Can I Make, Use and Sell My Patented Invention? The Answer May Surprise You

by John W. Boger, Esq. | Oct 2014

Obtaining a patent does not always guarantee the ability to build and commercialize your invention. Follow these tips to avoid infringement and ensure success. ... Read more »

Protecting Inventions and Brands: IP Due Diligence in the Product Development Process

by John W. Boger, Esq. | Jun 2014

The importance of IP due diligence is often overlooked when bringing an orthopaedic device through each of the eight stages of product development. ... Read more »

3D Printing and IP: Can They Coexist?

by John W. Boger, Esq. | Mar 2014

Analysts have predicted that by 2018, 3D printing will result in a loss of $100 billion per year in IP globally. Here is a look at why enforcing one’s IP against 3D printer infringers will be challenging. ... Read more »

Mitigate Patent Infringement Risk with an FTO

by John W. Boger, Esq. | Oct 2013

Performing an FTO search is a critical tool when developing or getting ready to launch a new product. Here's how to execute the three-stage process. ... Read more »

Trademarks vs. Domain Names, Part II: There is a BIG Difference

by John W. Boger, Esq. | Feb 2013

What happens if your trademark or company brand becomes a victim of cybersquatting? Part II on trademarks vs. domain names provides legal steps that can be taken to protect you or your company's name. ... Read more »

Trademarks vs. Domain Names, Part I: There is a BIG Difference

by John W. Boger, Esq. | Dec 2012

What happens if there is a dispute over the use of your domain name, or if someone is using your trademark as a domain name? It’s tempting to lump both under the heading “cybersquatting,” but they are not. Cybersquatting is the act of registering, selling or using a domain name with the intent ... Read more »

The IPXI® - An Alternative to the License Agreement? Maybe!

by John W. Boger, Esq. | Oct 2012

  Monetizing intellectual property is the process of deriving tangible value from the IP or the technology that is protected by the IP. Currently, however, there are only a limited number of ways of deriving such value. For example, monetizing a patent usually follows one of two paths: 1) deri ... Read more »

The IP License Agreement: A View from 5,000 Feet

by John W. Boger, Esq. | Aug 2012

It is commonplace for medical device manufacturers to “license” technology to allow them to either manufacture, sell or develop a product. Licensing of patents, trademarks, copyrights or trade secrets (collectively, intellectual property or IP) from third parties is governed by a special kind of ... Read more »

Trademark Searches and Availability Opinions

by John W. Boger, Esq. | Jun 2012

Branding of products and services is the key to success for almost any medical device company. For example, the NexGen® Knee by Zimmer, Rapid Recovery® Services offered by Biomet and the X-Stop® IPD® System owned by Kyphon are all well-recognized brand names in the orthopaedic marketplace. If th ... Read more »

An Introduction to Patent Opinions

by John W. Boger, Esq. | Mar 2012

Whenever a medical device company develops a new product, process or technology, the topic of getting an “opinion” inevitably arises. Many different types of patent or Intellectual Property (IP) opinions exist, each one with a specific purpose. If one were to follow the typical product developm ... Read more »

IP Portfolio Management Strategies for Medical Device Manufacturers

by John W. Boger, Esq. | Dec 2011

Management of a company’s intellectual property (IP) is all about two things: controlling the innovation produced by the Research and Development (R&D) staff and transforming these ideas in valuable assets, and coordinating the R&D innovation output with the sales and marketing strategy of ... Read more »

Final Office Action Rejections for Patent Applications: It Ain’t Over until the Fat Lady Sings…Usually

by John W. Boger, Esq. | Oct 2011

The patent process can be a long and, at times, tedious process. Many inventors assume that once you file your application with the United States Patent and Trademark Office (USPTO), the hard work is done. Unfortunately, for most cases, the hard work has just begun. It is highly unusual for a patent ... Read more »

Patent Reform is On the Way…Maybe

by John W. Boger, Esq. | Jun 2011

For the past several years, Congress has debated several bills that would change the way that patent laws are currently written. The amendments that have been discussed would have significantly changed the way companies, both big and small, do business. The major stumbling block for all past failed ... Read more »

Beware of the Falsely Patent Marking Boogey Man

by John W. Boger, Esq. | Mar 2011

Within the past 18 months, a cottage industry has started to emerge.  This disruptive industry exists to sue companies for allegedly mismarking products or packaging with expired or incorrect patent numbers. Importantly to the readers of BONEZONE, the reach of these “entrepreneurs” has touc ... Read more »

You May Own a Copyright and Not Know It!

by John W. Boger, Esq. | Dec 2010

Copyrights are rampant in the world of orthopaedics and are, most of the time, ignored or forgotten. Copyrights can be quite valuable intellectual property to both an individual and a company and, if used strategically, can provide an immensely competitive edge. Works that are protectable under copy ... Read more »

Truth or Myth: Does an International Patent Exist?

by John W. Boger, Esq. | Sep 2010

Almost every inventor has asked, “Can I get an international patent?” The simple answer is, no. Let’s be clear, there is no such thing as an international patent. However, an inventor can file an “international patent application” that essentially takes the place of the many individual fo ... Read more »

Pssst…It’s a Secret…Don’t tell anyone!!!

by John W. Boger, Esq. | Jun 2010

Remember back to your youth when keeping secrets was an everyday occurrence? Sometimes it was between classmates or siblings, and the results of not keeping it were temporary. As one grew older, keeping secrets took on a more serious tone as the consequences of disclosure usually had a more signific ... Read more »

Filing a Provisional Patent Application – Applicant Beware

by John W. Boger, Esq. | Mar 2010

The world changed as we knew it on June 8, 1995, when the United States Patent and Trademark Office (“USPTO”) was required to implement certain provisions from the GATT Uruguay Round Agreements. One of the modifications that occurred as a result of the GATT Agreements was that the lifetime of a ... Read more »