Mechanical engineering encompasses a wide range of technologies and specialties. Our team of attorneys provides guidance in all stages of development in the medical device industry.
Mechanical and Medical Device IP Services
Our mechanical and medical device practice is broad and crosses many business sectors. For example, we have expertise in electron beam equipment that is used widely in the ink industry to cure chemical compounds and products of same. We regularly work on medical device technologies, including drug delivery systems using antibodies and dry powder aerosol technology. More recently we have sought patent protection on a health care safety device used to help prevent accidental needle sticks – a significant healthcare safety issues for doctors, dentists, and related healthcare personnel. Our comprehensive intellectual property services include business strategy, licensing, due diligence, patent prosecution and procurement, legal opinions, and litigation support. McGurk Group acts for a variety of clients in the clean energy field.
Our strengths include:
- IP strategy development
- IP audit and landscape analysis
- Due diligence for mergers, acquisitions, and partnering
- Drafting and negotiating license agreements
- U.S. & International patent filings, including drafting, filing, and prosecuting services
- Litigation support
Some of Our Work in Mechanical Engineering IP
Energy Metering Technology
The energy metering space is highly competitive with hundreds, if not more, competitors, in a highly regulated space. Our client was seeking guidance on a potential funding opportunity from a clean energy venture group, that would allow our client to expand their business in the U.S. and beyond. Given the size of the market, we recommended the undertaking of an FTO study to determine the level of head-on competition. As expected, the global market was large with many known and unknown competitors. In view of the novel aspects of our client’s patented and pending applications we were able to steer the client away from any impediments and/or advise of any easy work arounds if impediments presented themselves.
Diesel Fuel Engines
Conducted due diligence for a company addressing the pollution caused by diesel fuel engines. Among other things, we conducted a FTO study to determine the scope of the relevant market for cleaner fuels for use in diesel engines. Based on our review of the target company’s patented technology and the FTO results, we were able to advise our client that the target company was a sound investment.
Due Diligence: Medical Devices Company acquisition
A Japanese-based client in a multi-million dollar deal sought to acquire a U.S. based company that makes medical devices (“the Technology”). The due diligence of the target company and the Technology included a thorough review of the entire IP portfolio and related files. We met with and had numerous calls with the target’s IP counsel to review the IP and coverage for the related Technology that was being acquired. We also undertook a very careful review of all known third party IP. We worked closely with the target’s counsel to review each piece of third-party IP that the target or the client identified to successfully confirm the absence of any potential infringement issues.
One major issue, and potential deal breaker, that we addressed during the due diligence process involved a third-party technology used with the Technology. The third party had the right to cancel the contract with the target if the target was sold or otherwise acquired. We were able to work with the target’s counsel and with the client to arrive at a mutually beneficial approach to assure that the deal moved forward.
In addition to the above IP due diligence, we reviewed a significant number of contracts, including service providers, consultants, employees, NDA’s, other license agreements.
Dry Powder Insulin: Due diligence of a Licensing or Acquisition Deal
We represented a large Japanese company concerning the due diligence of a licensing or acquisition deal involving dry powder insulin technology (hereafter “the Technology”) of a large U.S. based company. We reviewed an extensive patent portfolio covering the Technology, including composition of matter, methods of use/treatment, delivery technology and devices. We performed a comprehensive review of each patent and their related file histories and conducted extensive prior art searches of the Technology. In addition, we met with the target’s leadership team and key personnel. We also worked with regulatory counsel to ascertain the potential path forward for FDA approval. At each stage of our project, we kept the client informed about progress and the budget.