Ryan Phelan | Partner & Patent Attorney, Marshall Gerstein | Navigating IP Law & AI Impact in MedTech Innovation

Ryan Phelan is a partner and patent attorney at Marshall Gerstein. He discusses his journey from a background in computer science and fintech to becoming a prominent IP attorney serving clients in the MedTech industry and beyond. He shares insights on the importance of protecting intellectual property, especially for startups, and the burgeoning role of AI in medical technology. This succinct yet fascinating conversation highlights the critical intersection of law, technology, and medical innovation.

Guest links: https://www.marshallip.com | https://www.patentnext.com/ 

Charity supported: Sleep in Heavenly Peace

Interested in being a guest on the show or have feedback to share? Email us at theleadingdifference@velentium.com. 

PRODUCTION CREDITS
Host: Lindsey Dinneen
Editing: Marketing Wise
Producer: Velentium

 

EPISODE TRANSCRIPT

Episode 058 - Ryan Phelan

[00:00:00] Lindsey Dinneen: Hi, I'm Lindsey and I'm talking with MedTech industry leaders on how they change lives for a better world.

[00:00:09] Diane Bouis: The inventions and technologies are fascinating and so are the people who work with them.

[00:00:15] Frank Jaskulke: There was a period of time where I realized, fundamentally, my job was to go hang out with really smart people that are saving lives and then do work that would help them save more lives.

[00:00:28] Diane Bouis: I got into the business to save lives and it is incredibly motivating to work with people who are in that same business, saving or improving lives.

[00:00:38] Duane Mancini: What better industry than where I get to wake up every day and just save people's lives.

[00:00:42] Lindsey Dinneen: These are extraordinary people doing extraordinary work, and this is The Leading Difference.

Hello, and welcome back to another episode of The Leading Difference podcast. I'm your host, Lindsey, and I am so looking forward to my conversation today with Ryan Phelan. Ryan is a partner and patent attorney at the Chicago based intellectual property law firm, Marshall Gerstein, where he counsels medtech companies on protecting their valuable IP. Ryan ultimately believes that AI is an important technology to embrace, but cautions medical device and related companies to approach it pragmatically, developing a policy to govern and protect intangible assets and innovation.

All right. Well, thank you so much for being here, Ryan. I'm so excited to speak with you today.

[00:01:29] Ryan Phelan: Yeah. Thank you for having me. Thank you, Lindsey.

[00:01:31] Lindsey Dinneen: Of course. Well, I'd love if you'd start off by sharing a little bit about your background and what led you to medtech.

[00:01:39] Ryan Phelan: Sure, absolutely. So I'm an attorney by trade. And I started off in probably a different place than most people in MedTech, but I have a computer science degree and I worked in industry first for Accenture, doing a lot of programming and consulting in the FinTech world. So, high frequency trading and programming some pretty complicated data algorithms in order to trade stocks and bonds and securities, and things like this. That let me see aspects of intellectual property that people were doing with respect to the code I was writing.

So I got curious with IP and law, and that led me to law school, Northwestern Law, in pursuing a joint JD, MBA program, which I finished in 2010. And I went into IP law with a passion for technology, pretty much in the computing space. And then in the last decade or so, IP practitioners, not unlike doctors, like to practice in specific areas and one of the ones that I focused on is software medical devices. And so that, that kind of led me into the realm of medtech.

[00:02:48] Lindsey Dinneen: Very nice. Okay. So you have had such an interesting career trajectory and I'm wondering, back in the day, say you're a six year old Ryan, could six year old Ryan have predicted that you would be a lawyer and particularly intellectual property?

[00:03:04] Ryan Phelan: Absolutely not. I mean, first of all nobody in my family, at least immediate family, was a lawyer. And so going to law school was not on the radar. I grew up in Louisiana in a small town, basically farm life, so certainly technology and stuff like that wasn't available in the city. But I did have a passion for things that were tech. I was certainly a kid that loved to take things apart and put them back together and build all kinds of Legos and stuff like that. So that basic kind of STEM acumen or desire was always there from the beginning.

And so, as I, I grew up and got exposed to more things, certainly in college, it became kind of a passion. And so, I ended up doing that. We did have some medical issues in my family, including cardiac and cancer and stuff like that. So, those types of things always hit home with me and you're getting to a chance to kind of lean into medtech, at least on the software side, with medtech devices that include or incorporate medical technology became very interesting to me personally.

[00:04:07] Lindsey Dinneen: Yeah, of course. And so going back just a smidgen when you decided to go into law and you know, you've come from this background that was the software engineering and you've got this fintech background and you have all of these amazing skill sets already, what led you specifically to say, "Okay, I want to focus on intellectual property, and so this is going to be my, my sweet spot."

[00:04:33] Ryan Phelan: Yeah. So when you go to law school, you get exposed to a lot of different classes. In fact, in your first year law school, you're required to take a bunch of baseline courses like criminal law and all these things. And so you quickly figure out what you like and what you don't like.

And so for me, a computer science degree is always kind of the beating heart of what I loved. And so I wanted to, I tended to like, classes that were up that alley, so to speak. And the IP course that I took was definitely there because it was all about technology, inventions, people making things, and how those inventions played out in court.

So I found my greatest joy in law school to be in those classes. So I spoke up the most in class and did the best. There's common saying that "you should do things that you love because you never have to work a day in your life" kind of thing. So I always try to think about that, and certainly fun today because I practice in IP and picked that direction.

[00:05:27] Lindsey Dinneen: Yeah, absolutely. So, in addition to all of the other credentials you have, you are also a published author and you are a speaker. And I would love if you would share maybe a little bit more about how you got into being a thought leader as well in your industry and how that path has taken you.

[00:05:51] Ryan Phelan: Yeah, for sure. It's the same kind of thing. I've always liked to write as well. And I feel that when I write about something, I really get to understand it. And so in my field, there's a lot of stuff happening all the time. Like a court will come out with a new case, an IP and medtech or AI or something like this, and I really like to dig into it to figure out how can I use this court decision as a tool for clients, or how does this change things up? What will clients ask me questions going forward, or how can this be an interesting topic to either write about or to speak about? And so, I try to learn when I'm reading, and then I write it, and that teaches me, and I think and hope that others get a benefit from that too when I publish, so.

[00:06:34] Lindsey Dinneen: Yes, of course. Of course. And you are also, if I'm not mistaken, an adjunct professor. So, first of all, do you sleep? And second of all, tell me more about this as well, please.

[00:06:47] Ryan Phelan: Yeah, so I'm an adjunct professor at Northwestern Law. I teach a course on patenting software inventions. I do sleep because it's only once a year for a power week. You know, I think it's like three days out of the year. There's the long classes, they're like a few hours each, but we pack in several 30 minute core sessions into a day. So one day, maybe we'll go for three hours or two hours. And, you know, we will get the benefit of several weeks of coursework by doing all of that at once in those three days.

And so, I teach on that. We teach fundamentals of patenting softwares and inventions, which includes medtech software devices. For example, the FDA classifies software, medical inventions in, in, in certain ways, like their software as a medical device where you have the software only such as, you have database with medical data and you're either formatting it or storing it or processing in some unique way, or you have software in a medical device where you actually have a physical device. It's a cardiac device where the software is running or at least partially running that device. And so we talk about ways to, to patent those inventions primarily with US law. So.

[00:07:59] Lindsey Dinneen: Very nice. So specifically thinking about your medtech clients, because I know you probably have clients in many industries, but specifically in medtech, what are some of the common mistakes you see medtech companies making? Especially say, you know, an earlier startup or something like that, when maybe they haven't thought through an aspect that really should be thought through a little bit earlier in the process. What are some common things that you see that people should be aware of?

[00:08:27] Ryan Phelan: Yeah, I mean, easily one of them is not filing a patent application early. And if they are a startup company and they have their biggest selling product, or what they think will be their biggest selling product, and they don't file a patent application on it, that could be bad because you have one year to get to the patent office with that, at least in the U. S. to file something once it's been publicly disclosed. And if you miss that deadline, then effectively you're allowing your competitors to copy it. And if you're a startup company, the last thing you want is for your product to become extremely successful and then a big Fortune 500 company gets wind of it, figures out you don't have a patent, and then just starts making it themselves and it takes away your market share. So that would be, you know, I think that's every inventor of startups like worst nightmare, right? So, getting that patent on file before the deadline is pretty important.

[00:09:22] Lindsey Dinneen: Yeah, of course. Now, I noticed you had recently written an article on LinkedIn about when to file this patent. And I know part of maybe some concerns that might arise are, "Well, we don't necessarily want this to be in public awareness yet." So how do you walk that line between "This is our IP, we're really trying to keep it very tight," versus, "But I also need this protection, this legal protection." So how do you navigate things like that?

[00:09:54] Ryan Phelan: Yeah, so the point at which you need to make your invention publicly available or to disclose it because you need to, you know, maybe you're going to pitch competition and you need to show your invention on like a PowerPoint deck in front of hundreds of people. Then that's probably a good point to start thinking about filing a patent application if you're still developing it, and it's like in your basement, so to speak, and nobody's seen it. It's still secret then. You don't need to necessarily file a patent application at that point.

Although, there's a funny thing in patent law where, if you have an idea, sometimes there's somebody else thinking about it too, and the first one to get the patent office, wins, and so, you certainly don't want to wait around too long and find out years later that you filed your patent application the day after somebody else.

This actually happened with Thomas Edison and the light bulb and he had lots of fights about the other person that was claiming the same thing that lost, and we don't remember his name today because of that. So anyway, so that's one thing to keep in mind when you're starting out.

[00:10:54] Lindsey Dinneen: Yeah. Well, and speaking of those kinds of stories, are there any that particularly stand out to you as you've worked with all of these incredible clients who have seriously life changing products they're creating. Are there any that really stand out to you in your memory as affirming, "Oh my goodness, this is why I'm here. This is why I'm doing what I'm doing."

[00:11:17] Ryan Phelan: Yeah, for sure. One that stands out is one in the opioid or the narcotics market. In my family, we have an individual who is unfortunately affected by this. And so, I had a client that reached out to me to create a VR program that helps to eliminate or to reduce cravings in this field. And that one was really impactful because using technology and non pharmaceutical way in order to reduce cravings for people that are struggling with addiction of some type, I felt to be very important. So I thoroughly enjoyed working with that inventor and helping to, to create that patent application for that invention.

[00:11:59] Lindsey Dinneen: Yeah, of course. Yeah. Thank you for sharing about that. I think sometimes those really personal connection kinds of stories are the ones that really stick in your mind because it, it helps to have this moment of realization, like you know that what you do matters, of course, but then having that extra layer of confirmation that "Yes, this is helping somebody who could literally be a family member or a close friend or relative" is really impactful.

[00:12:25] Ryan Phelan: Exactly.

[00:12:26] Lindsey Dinneen: Yeah. So considering all of the industries that you currently serve, and of course, you have this incredibly varied background, which can only be wonderful to draw on from this rich history and experience of yours. What are some interesting crossovers you see between industries that can be useful in terms of, maybe one industry approaches something in a way that you've seen could actually really benefit folks in medtech or vice versa. Are you seeing trends like that?

[00:12:59] Ryan Phelan: Yeah, absolutely. I mean, one of the biggest ones that I can think of now is artificial intelligence coming into play with medtech. I mean, certainly, medtech kind of runs the gamut of, you know, like, like we mentioned before software only to physical devices that incorporate software. And so AI is interesting because you can load it and AI model onto one of these physical devices, or you can have an AI model that's medtech based sitting on a server somewhere that can help doctors look or find particular cause or whatnot like that, based on symptoms that a patient may walk into, or maybe there's a device, like a needle, that allows that has an AI model on it that helps with injection or something like this.

And so, these AI tools are becoming smarter. And I think that they help in the field of medtech and they require a different level of expertise with these inventions to not only create them because they're complex, but also to bring them to market because they require specific FDA regulations. Even the FDA right now is trying to figure out AI. They have approved several AI devices, but it usually comes down to, you know, is your AI device going to change in the near future because you're going to update the model? And if so, does that change it enough to require like a new submission? So the fact that AI moves so rapidly doesn't really mix well with the FDA's process of approving the device and having it set in stone at that approval state.

[00:14:30] Lindsey Dinneen: Yeah. So where do you anticipate that this will take medical devices? Do you think it'll become so naturally ingrained in many of them that it's just sort of part of our reality, or do you think we'll still have those --what do we want to call them-- not AI functionality devices?

[00:14:48] Ryan Phelan: Yeah, I think both will exist. You know, certainly a spectrum of these devices, right? Certainly there's surgical tools that exist now that have hundreds of years, or a hundred years, just in different, maybe better forms. So, those will stay, stick around. The AI assisted ones, I'm sure will find their niche, and live alongside the the existing tools.

[00:15:10] Lindsey Dinneen: Yeah, absolutely. If you could narrow it down, what would be maybe your top piece of advice for a MedTech startup founder from your perspective, in your role?

[00:15:23] Ryan Phelan: Yeah, I guess the number one would be again to, you know, make sure you're not giving away your crown jewels. Have your patent filed before you step out. If you're trying to raise money, just be careful that you're not sharing information publicly. You have to share with a potential investor, consider an NDA or if they won't sign an NDA, you can file a provisional patent application with the patent office. That shows that you have something on file before you talk to others. And as long as you describe the invention sufficiently in the four corners of your provisional application, then that's often the best way to protect yourself going out. So I think, as an IP attorney, that, that would be the number one advice that I would give a startup company in the medtech space.

[00:16:10] Lindsey Dinneen: That's incredible. Thank you for that. That's really appreciated advice. So, it's so interesting because when I was looking at your LinkedIn profile, of course you have all of this incredible experience, and one thing actually really stood out to me, and that was that at least at some point you have been a and --I'm sure you've done this throughout your career multiple times-- but a pro bono lawyer for Lawyers for the Creative Arts. And I was curious about that and how you got involved, and can you share a little bit about that journey?

[00:16:40] Ryan Phelan: Yeah. So LCA or Lawyers for the Creative Arts is an organization here in Chicago that deals with artists of limited means. You know, usually they have some type of basic issue that they want handled and it mainly deals with IP. Typically, I work on a different capacity for these because I see them as like kind of fun learning opportunities. I usually work in the copyright space and the clients that I work with need help either filing a copyright for maybe a piece of art that they've created, or maybe have a question about how their IP is being used or sold in some way, and they need to figure out if their IP has been infringed. And so, we'll work with them in a pro bono capacity to help write a letter to a company or to file a copyright registration and things like that.

[00:17:28] Lindsey Dinneen: Well, as a, as my side thing as also an artist, I just want to say thank you because it is so great that you're doing things like that for the artist community. It is not always easy. So, oh, that's great, appreciate it. Yeah. So as you look towards your own future, what are you excited about say in the next year or two?

[00:17:50] Ryan Phelan: Very excited to see how, I guess, AI is playing out with medtech. You're seeing regulations and guidelines coming out that The United States Patent and Trademark Office and also the Copyright Office about how these laws will impact artists. I've sat on a panel with the Copyright Office and the United States Patent and Trademark Office as they're thinking through these decisions and putting out these guidelines.

There is questions about, is the new administration going to change things up with respect to guidance and guidelines that have come out. So, you know, artists are looking at AI is like a tool, like a paintbrush. And the law is kind of looking at it, obviously from the legal perspective and it doesn't seem like those two things are aligned yet. There's common in, in history that the law typically lags the technology by, you know, a decade or two or more. And so that's certainly the case with AI.

For example, there is a famous -- I wouldn't call it a case-- but a denial of a copyright registration at the copyright office for a gentleman that had created an AI piece of artwork, won the Colorado state fair, I think in 2022, and tried to file a copyright registration, but was denied. And he told the copyright office, basically he had entered in 500 plus prompts in order to generate, or at least partially generate, this work of art, but was still denied . Not because of his effort, just because of the way the law is written under current copyright statutes.

And so, things like that seem to be, at least from a policy perspective, incorrect. And so it'd be great to see exciting how this plays out. Will Congress care enough to change it or how will artists be impacted under these types of laws and policy considerations going forward?

[00:19:35] Lindsey Dinneen: Yeah, absolutely. So pivoting the conversation a little bit just for fun, imagine that you were to be offered a million dollars masterclass on anything you want. It can be within your industry or part of your amazing background, or it could be about something entirely different. What would you choose to teach?

[00:19:55] Ryan Phelan: Yeah. Wow. You know, I guess I would teach what I'm currently teaching. Cause I, I do enjoy the class I teach now. I'm at Northwestern, my alma mater, which I love. It's down the street from the office, get to go in same place where I went to school and teach the law and things that I do every day, which is patenting software inventions, including the medtech space. If I could get a million dollars to teach what I do now, that would be wonderful, in this hypothetical, so.

[00:20:22] Lindsey Dinneen: Right. I love it. Excellent. And how do you wish to be remembered after you leave this world?

[00:20:30] Ryan Phelan: Wow. I hope people remember me as someone who was fun loving and enjoyed tech and hopefully brought some information to the world that helped them in some way.

[00:20:42] Lindsey Dinneen: Yeah, of course. And final question, what is one thing that makes you smile every time you see or think about it?

[00:20:51] Ryan Phelan: Oh, wow. I guess there's a lot of stuff. I also like to do some type of sports. Currently, the ski season is ending, so I certainly enjoy skiing, so when I see or think about that's one of those things, and now coming is the golf season, so I transitioned into that. We're looking forward to some good weather here, finally, in Chicago. It was 80 degrees last week, and it snowed yesterday, so things are changing from golf to ski season, but one of those is always fun, so.

[00:21:17] Lindsey Dinneen: That's awesome. That's fantastic. Yeah. If folks who are listening are in a position, would there be a way for them to get in contact with you and then how early should they do that actually?

[00:21:31] Ryan Phelan: Yeah. There's multiple stages. They can get in touch with me anytime they want. You can always find me at our firm's website, Marshall Gerstein. Or if you want to, you can go to patentnext.com, just patent and the word next. com. That's my blog that I write on typically, and it has my contact information there, including my email address.

[00:21:51] Lindsey Dinneen: Perfect. Well, thank you so much. Well, Ryan, it has been a joy to speak with you today. I really appreciate you sharing a little bit about your career and your insights, your advice, especially appreciate that for MedTech founders who might, you know, not quite know where to start with this whole legal element that they really need to consider. So I really appreciate you sharing kind of when and how to do that.

And we're excited to be making a donation on your behalf, as a thank you for your time today, to Sleep in Heavenly Peace, which provides beds for children who don't have any in the United States. So thank you for choosing that charity to support. And thank you again so much for being here. This has been a wonderful conversation, and I just wish you the most continued success as you work to change lives for a better world.

[00:22:41] Ryan Phelan: Thank you, Lindsey. My pleasure. Happy to be here too. Thank you for having me.

[00:22:44] Lindsey Dinneen: Of course. And for our listeners, thank you so much for tuning in. If you're feeling as inspired as I am, I'd love it if you'd share this episode with a colleague or two, and we'll catch you next time.

[00:22:56] Ben Trombold: The Leading Difference is brought to you by Velentium. Velentium is a full-service CDMO with 100% in-house capability to design, develop, and manufacture medical devices from class two wearables to class three active implantable medical devices. Velentium specializes in active implantables, leads, programmers, and accessories across a wide range of indications, such as neuromodulation, deep brain stimulation, cardiac management, and diabetes management. Velentium's core competencies include electrical, firmware, and mechanical design, mobile apps, embedded cybersecurity, human factors and usability, automated test systems, systems engineering, and contract manufacturing. Velentium works with clients worldwide, from startups seeking funding to established Fortune 100 companies. Visit velentium.com to explore your next step in medical device development.