Stephanie Rupp, Patent Attorney at Hoffmann Eitle & Ryan Phelan, Partner at Marshall Gerstein | Navigating Medtech IP Protection: U.S. & European Perspectives

Stephanie Rupp (Hoffmann Eitle) and Ryan Phelan (Marshall Gerstein) explore how AI is reshaping medtech innovation and the IP strategies founders need to know. They break down key trends, from traditional model training to today’s generative AI workflows, plus common pitfalls like novelty-destroying disclosures in pitch decks, websites, and investor conversations. Ryan explains why “file early” matters in the U.S. (and how provisional applications can backfire if they’re too thin), while Stephanie shares how Europe’s strict novelty rules and EPO “technical effect” requirements change how AI patents must be drafted. The conversation also covers cross-border collaboration, the Unified Patent Court, and why strong IP can become a startup’s moat for investors and future growth.

Guest links: https://www.marshallip.com | https://www.hoffmanneitle.com/ | rphelan@marshallip.com | srupp@hoffmanneitle.com 

Charity supported: Save the Children

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

PRODUCTION CREDITS
Host & Editor: Lindsey Dinneen
Producer: Velentium Medical

 

EPISODE TRANSCRIPT
Episode 089 - Stephanie Rupp & 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 today I'm delighted to welcome as my guests Stephanie Rupp and Ryan Phelan. Stephanie's technical expertise stems from working in various fields of electrical engineering and information technology. She is particularly interested and experienced in communication technology, telecommunications engineering, and artificial intelligence due to her time at the university and various projects in the industry. For example, Stephanie gained industry experience with a leading technology company of measurement and high-frequency technology in the field of measurement technology for LTE. Working with a variety of clients from all over the world, Stephanie specializes in prosecution and oppositions at the European Patent Office and German Patent Office, freedom to operate, and patent drafting, in particular in the fields of computer-implemented inventions. Stephanie studied electrical engineering at the Technical University of Munich. She wrote her master thesis at the Chair of Communication Networks in the field of artificial intelligence with a focus on reinforcement learning.

Ryan is a registered patent attorney who counsels and works with clients in all areas of intellectual property with a focus on patents. Clients enjoy Ryan's business-focused approach to IP. With an MBA from Northwestern's Kellogg School of Management, Ryan works with clients to achieve their business objectives, including developing and protecting their innovations and businesses with IP. Ryan has been published in several well-known IP publications, including World Intellectual Property Review, Bloomberg Law, and IP Litigator, and has spoken as a panelist at various IP conferences, including for the International Intellectual Property Law Association and for the University of Illinois Chicago Annual IP Conference. Since 2024, Ryan has been selected for inclusion in The Best Lawyers in America list in the practice of patent law.

All right, Ryan and Stephanie, welcome to the show. I'm so glad that you are here. Ryan, this is your second time. Delighted to have you return, and Stephanie, I can't wait to learn more about you and all the ways that you both contribute to the industry. So thank you both so much for being here.

[00:02:54] Ryan Phelan: Yeah, thank you. Yeah. Glad to be back.

[00:02:56] Lindsey Dinneen: Awesome.

[00:02:56] Stephanie Rupp: And thank you v- very much for having me.

[00:02:58] Lindsey Dinneen: Yes, of course. Well, I would love, if you don't mind, starting off by sharing just a little bit about yourself, your background, and what led you to medtech.

[00:03:09] Ryan Phelan: Yeah. So I'll kick it off. My name's Ryan Phelan. I'm a partner at Marshall Gerstein, which is an IP boutique here in Chicago. I have a computer science background, so I see the world through, you know, everything computers and, of course, nowadays that means AI. On the, the medtech side you know, I, I have, experience in robotics and so, a lot of medtech devices are in the robotics field, so it's very natural for me to apply my skill set, to that, area of expertise, one of which is, prosthetics.

So you have a robotic, prosthetic medical device, and that lends itself to, you know, some type of computational control. And there's certain, legal issues that usually come up in, the US practice. So I enjoy, applying that skill set, to the, to medtech space. also, you know, family members als- have, you know, ailments and things that, I have, grown up with, you know, as a, you know, young boy and, now I'm very happy to you know, give back in my own way. I'm not a doctor. I'm just a-- I'm a, I'm a humble patent attorney, but, helping the, IP world, and, doctors and physicians, with not only, you know, in the robotic space, but also, software medical inventions as well, and I, enjoy working in this space.

[00:04:22] Lindsey Dinneen: Love it. Thank you so much. Stephanie?

[00:04:26] Stephanie Rupp: Yes. So as you hear from my accent, I'm from Germany, specifically from Munich, so that's a city in the southern part of Germany, close to the Alps. people might probably know Munich from the Oktoberfest that we have each year. And, so I'm a German and European patent attorney at Hoffmann Etile. I also throw it in as well, I'm also UPC representative, so we have, for three years now, we have the Unified Patent Court, so a really new court in Europe for centralized litigation for infringement and revocation actions.

So I can also represent clients there. yeah, Hoffmann Etile is a, also a p- a IP boutique firm. not only in Germany, we also have offices, in other places in, Europe. And, yeah, my technical background is electrical engineering and information technology. And, during my studies, I just didn't work a lot in the medtech space. I was, ... my work concentrated more on the telecommunications side, working in a, bigger f- company that, concentrated on measurement and high-frequency technology.

But, my master thesis was already about AI, so it was at the Chair of Communication Networks, and it was about, like, reinforcement learning, virtual network embedding. I won't say too much about that. I think it will bore the listeners. But so I didn't know at that time, but it opened my way to the medtech space afterwards. because when I joined Hoffmann Etile nine years ago with my training, the partners were really happy to hear that I have experience in the AI field and the technical background on that.

And, around nine years ago, we saw a lot of patent applications being filed in the AI space, like using AI technology in different technical fields, and especially also in the medtech, field. And, so I had the opportunity to jump in there, like, right away when I started and was really happy to do that and also, like, still very glad to have that opportunity to work with the medtech, companies and to get the best patents for them in that, especially in that field.

[00:06:26] Lindsey Dinneen: Awesome. Thank you so much. Yeah, thank you both. So, all right. I have so many questions, but I will start here. I'll just, 'cause I'm curious. So how, how did you two meet? Do the firms come together and, and, collaborate?

[00:06:38] Ryan Phelan: Yeah, absolutely. so Marshall, Gerstein and Hoffmann, Eitel had a relationship prior with, attorneys, that go back a generation or two, before Stephanie and I met. And so, their-- one firm would send attorneys to the other and vice versa. And then, after a while, given that Stephanie and I have similar backgrounds, it was very, simple just to connect us. And then we've worked together on matters, before and have similar backgrounds like Stephanie mentioned. She has electrical background, but has done a lot of stuff with AI. And so whenever you're doing, matters across the pond, as they say, you need expertise, in the EPO and the US and the laws are different, so you have to collaborate. And it's great to have, have people that you can collaborate and work with.

[00:07:21] Stephanie Rupp: Yeah, and a lot of clients, they're not only interested in getting an EP patent, but they also want to get a US patent. And, I'm not a US patent attorney, so, usually tell them, "Oh, yeah, I know a really good patent attorney in the US." And, thank you ... so I will, like, hand over the work to him and then the other way around if they have, like, clients that they want to get a EP patent, and that's how we work together and, also dis-discuss these cases together. And, so yeah, I'm currently in Chicago for a week, also to meet Ryan in person again. I do that, usually once a year. And, yeah, just have time to discuss some cases more regularly.

[00:07:55] Lindsey Dinneen: I love that. That's cool.

[00:07:56] Ryan Phelan: Yeah, I was in, And I was in beautiful Munich last year, so it was, it was great.

[00:08:00] Lindsey Dinneen: Very nice. That's wonderful. Okay. So again, so many things to talk about, but I, I, I'm curious in your interpretation of how AI has affected, especially the legal components of, say, filing a patent or IP protection or all of those things. When it comes to medtech founders, what are you seeing the trends to be, and also, what are some of the pitfalls to avoid?

[00:08:29] Ryan Phelan: Yeah. So I've seen AI affect everything from filing strategy or information, gathering, like on the pre-stage of a patent, and then also, the invention itself, has also included AI. I think about it as like AI 1.0 and 2.0. before, 1.0 AI is, a lot of software inventions would train their own models with their own data. Maybe you have a, a cardio, application or something like that, that would use existing, information from patients and, that information, would be used to train a model, and that model would be able to output some type of response for a future patient. Maybe that model was inside of a device that was, implanted or, put on top of, a patient where that sensor data would be collected.

 Nowadays, in, in tho-those inventions, usually incorporated some type of trained model. Nowadays, you have a lot of generative AI, where newer inventions are using out-of-the-box models from OpenAI, ChatGPT models, or Anthropic's Claude models. And, a lot of the same issues are still being addressed, where data will, will come from various sources, whether it's a patient's data or clinician's, or maybe it's, a diagnostics or maybe it is more in the robotic space for, prosthetics. But that data is now, instead of being pushed into more traditional models that would be trained, is now being used by these generative, LLMs. And then you can have combinations of the two.

So it's, become an explosive field in AI at least from what I have seen. People are getting excited that you have these large treasure troves of data that you can synthesize, the information inside of it and then get some type of, useful output, and then you also have inventors that are seeking solutions, asking, LLMs to help find a particular solution, and they'll add to it. And our invention disclosures that we get, I, I typically joke and say, "Used to, it was hard to get an invention disclosure from an inventor." They would send you, like, a paragraph or two of the invention, and you'd be, "Well, is there anything else?"

And now it's, they'll send you 100 pages of stuff. And like, "Well, let's, well, let's talk about what's relevant. Let's find the needle in the haystack here." So AI is, is influencing all sides of the invention from when it's coming in the door and then how, how, what the invention makeup is itself and how that's gonna be protected in the future. I, I see a lot-- In, in the future, I, I can predict or hopefully predict, there's gonna be, a lot of litigation or a lot of, like, questions about who owned what in the future for patents. So that's, that'll be interesting to see, too.

[00:11:06] Lindsey Dinneen: Yeah. Absolutely.

[00:11:07] Stephanie Rupp: Yeah- I think what I just want to add is, that it also changes how we work. I think in the past it was, so we had, like, these different departments. We had mechanics, e-tech, biotech, chemistry, and it was, like, very clear when you get a new patent, like an invention disclosure in which department you will push it and, like, who will work on that. But now we have, like, more these interdisciplinary inventions especially, like, in medtech, pharmaceutical companies that are using AI and, and that also changes how we work, that we are trying to then find a interdisciplinary team as well, having, like, patent attorneys from different technical backgrounds, because I'm looking at a invention disclosure differently than a patent attorney with a chemistry background.

And, so that makes very interesting for us as well, 'cause we have to work together and, that's why sometime I get a call from the biotech department saying, "Oh, we have a invention disclosure with a lot of AI in there. Could you maybe help us out?" And, so that, yeah, it, like, changes our way of working in there as well. That makes it very interesting.

[00:12:12] Lindsey Dinneen: Yeah. That's very interesting, and I actually love that. It seems like a lot of, ability to learn from each other in that way, and so yeah, I love that exposure. So, okay, when it comes to filing patents, and protecting your IP in general, I'm, I'm curious what your advice is for, for founders that maybe have, like, basically timeline, when should they be thinking about engaging with you all, and h- how do they go about that? Just what is, especially for these younger startup founders, what's some advice that you just, you go, "Okay, now's the time. Here's what we need," and, and whatnot?

[00:12:51] Ryan Phelan: Yeah, I always advise as early as possible. Okay. usually it's-- usually most founders or startups are not thinking about patents in the beginning. But, you know, I always like to, to tell them when, when I'm speaking to a founder of a startup, think about it as insurance or similar to insurance, because at the end of the day, if you become very successful with your, medtech product, whatever it may be, people are gonna wanna copy you.

[00:13:13] Lindsey Dinneen: Yeah.

[00:13:13] Ryan Phelan: And, that, that's probably not only important to you, but also to your investors, if you have them. If, like, you're seeking money from others, whether it be seed money, angel money, or series A, series B the, these people are probably gonna ask you what's your moat, what's your, what's your barrier to entry for others, so if your product, takes off, because they're thinking in terms of, "How much money will I get back if I invest?" It's gonna be s- 20x. And so, it-- they know, and the startup founders should also be aware that if somebody else comes into the market, especially a big player, and they, replicate your product or your software, then that could take market share from you. And so having a patent or building that patent portfolio at the same time, it protects you, from that. It also, of course, there's times, timing, that you have to be mindful of. As soon as you disclose something in the US, it kicks off a, a one-year clock...

[00:14:04] Lindsey Dinneen: Hmm ...

[00:14:04] Ryan Phelan: ...for you to file something. Just to get an invention in the US, and Stephanie, can let you know about, you know, elsewhere- Mm-hmm ... and in the EU, I understand that there's an absolute bar. Yeah. But for that reasons, for that timing purpose of when someone discloses your invention, and that can be a part of a pitch deck to a set of in- investors, if you don't have a non-disclosure a- agreement, an NDA, then that could also start that clock ticking. So you wanna be mindful. Do this in parallel at the same time, seeking to get your, patent, at least a provisional patent, on file before you go forward.

[00:14:37] Stephanie Rupp: Okay. Yeah, as Ryan said, at the, in Europe, we don't have this kind of this year to file a application. Once you publish something, then it's out on, out there in the world and, endangers your own patent application. Because if you want to get a patent the claimed subject matter needs to be novel and inventive. And if you have, like, published this before, then that's prior art with respect to your own patent application. So you always have to keep that in mind and, that's why it's so important to file the patent application first before you use that information for advertisement, for example.

And I, we see that often, with startups, and I complete- completely understand. They're super excited with regard to their, like, great idea, and they want to shout it out to the world. But once it's out there that hinders you to get a patent. so- As Ryan said, it's good to think about patents from the beginning and also, the market you're interested in, maybe about competitors and where they're in, which countries they're involved, and then you could also think about, okay, maybe, that is a market of your interest, and then also get advice from patent attorneys in that country because it's different from which d- like, from jurisdiction to jurisdiction how to get a patent, and you want to get the broadest patent as possible.

And, especially with AI inventions, where they're the requirements are so different in the different countries, it's, good to have the advice from the beginning on so the patent application is written in the right way. Because once the patent application is filed, we cannot add anything anymore, or we cannot change it. That's why it's, like, good to have really a, like, a well-written patent application also for the jurisdiction you want to go in.

[00:16:25] Lindsey Dinneen: Okay. Yeah. Thank you both. That was really insightful. I'm, I'm curious about the patent application itself. Is there-- Well, two questions, I suppose. Is there also a kind of provisional patent opportunity outside of the US, just out of curiosity, as, as well as in the US? And then also, you know, you mentioned being very careful and cognizant about the way that it is written, which of course now you two being experts in this, you know, back, you know, like the back of your hand. But I wonder, if people try to do it themselves. I would love just to hear some advice about that as well.

[00:17:06] Ryan Phelan: Yes. Stephanie, do you wanna talk about the provisional outside the US and-

[00:17:09] Stephanie Rupp: Yeah. So in Europe, we don't have that provisional applications or non-provisional applications. what you have though is the priority year. So you can, like file an application, for example, first in Europe, and then you have a year to decide which other countries you want to go to, and then claim priority from that European patent application. So, I file a EP application, then after a year I think, okay, I want to go in other countries, I want to maybe file it, one in the US, then you can claim the priority from there. And the previous patent application that you filed will not endanger the other patent application. So that's one way of doing it, to buying yourself a little bit of time.

Also, sometimes clients when they're like very cost sensitive, especially for startups, would first think, okay, we file a patent application first to Europe, and you get a, a search report within the priority year from the EPO. And then you already know the prior art that is out there, and you can assess how strong your patent application is, and then you can still decide, how to proceed from there. So there are like some ways of how you could do that.

[00:18:19] Lindsey Dinneen: Awesome. Thank you.

[00:18:22] Ryan Phelan: Yeah. In the US, of course, we have provisional applications. It, it causes a great, amount of confusion, though, the provisional applications. A lot of startup companies will think that they can file a provisional application and it'll be, you know, a page or two in length, and then they can wait a year and inflate that to 20 pages or, or something like this. And of course, the, the trap for the unwary is, of course, if the claims, when you draft those for the non-provisional or the conversion application, if they are not grounded in that first provisional application, if one element of one of the independent claims, for example, is, s- solely supported by the new material added in the, the new, you know, 20 pages or whatever it may be, then the support gets you the date of your non-provisional conversion filing and not of the provisional.

So, usually for startup clients, I have to-- we ta- we have this conversation called the delta. What's the delta between your provisional and your non-provisional? If there's a lot of it, then, that could be a problem because if your claims aren't supported by the text of that provisional application, you're not gonna get that original date. And so, usually that kicks off a conversation of how much of a provisional that you want, or do you just wanna go all non-provisional. Now, I do litigation as well, and I can tell you, the, the, the pitfall is if you file that provisional and you file a non-provisional later and you end up getting that later date, if there is intervening prior art in between, the provisional date and the non-provisional date, that comes before your non-provisional date, that could invalidate your patent despite your provisional.

And there's, parties debate this. They, excuse me, fight about this in court all the time. Now, did you have sufficient written description and enablement in your provisional application in order to substantiate your claims later? And if they can find intervening prior art between that year or whatever the time may be, that can be a real problem. So, I, I always c- I always tell clients, like, the, the more you can file up front, the better, because you're gonna get more support or more, possibility to have that support earlier in time. Of course, it takes more work. Most startups don't like to hear that, but it is, but it is the truth, and it does, it does protect them against that insurance policy. You, you add it up front. Like Stephanie said, you wanna, put that information, on file before you go out and do your advertising and marketing. That's also true in the US. Just filing a provisional application, does not in and of itself somehow protect you if, if you don't, if you don't say what it is that you're trying to protect.

[00:20:48] Lindsey Dinneen: Yeah. Okay. That makes a lot of sense, and thank you so much for that insight. So you mentioned a couple of times that sort of disclosure component, and so just to d- just be very specific about that whole thing you mentioned that could be-- that could look like even just a, a pitch deck where you think it's potentially within a, a private setting thing. Of course, I would imagine that also extends to talking about it on social media or a website or something like that. So I'm just curious what are some of the things that you see besides maybe perhaps the broader, more obvious, like a website, what are some of those things that you see that people don't think to, be aware of, I guess?

[00:21:34] Ryan Phelan: Yeah. I've seen websites. It's super easy to create a website nowadays. You can ask ChatGPT or Claude to generate a website, and if you're putting your invention out in a website form before you file a patent, that could be a novelty-destroying disclosure. if you have a detailed pitch deck that you give to, potential investors without some type of control, like an NDA, that could also be a novelty form of disclosure. Like in the US, for litigation, I, I can tell you one of the questions that always gets asked in discovery is, "Did you disclose this prior to the, the filing date?" And, if that person, that person will be required to answer under oath, and if they're, "Yes, I had a website," or, "I, I gave this pitch deck to 50 people for investing," usually that's a problem because that--the opposing side that's defending against that patent will do a, a deep analysis and, and look-- and try to find when that was disclosed, and does it map up to the claims, and that could, create a problem with, validity in the US.

[00:22:31] Lindsey Dinneen: Oof. That's no fun. That's why they should talk- Yeah ... to you early and often.

[00:22:37] Ryan Phelan: Yeah. Yes. Again, another example of filing early, you know, eliminates some of those issues. i-in fact, I tell a lot of the startup companies or any, any client, like, before you go out there and, you know, have your conference or your, your pitch, then file. Most sophisticated clients know this, but a lot of times startups do not.

[00:22:54] Lindsey Dinneen: Sure. Yeah, and if you're a first-time founder or something like that, you wouldn't-- you don't know what you don't know for many different categories, so I can see why that is so critical. Yeah. Okay. So, I was wondering if both of you could talk a little bit about maybe, maybe a moment that has stood out to you as, as you've worked, especially with-within medtech and, and working with some of these founders. Are there any moments that really stand out as just affirming that, "Wow, I, I am doing the right thing in the right industry at the right time"?

[00:23:28] Stephanie Rupp: Shall I start? Yeah. yes, I, I've-- So for me it was, like, never the plan to become a patent attorney and, and, like, never had that in mind. And, so it was more of a coincidence that I stumbled upon that and did the training and became a patent attorney and... But I still remember my first day in the office and having the feeling of, "Yes, I think that's what I want to do for the rest of my life."

Like, continue learning, like, having, like, this incredible opportunity to speak with so many great inventors. Having, like, I don't know, it's always amazing, to see how their mind works and that they're, like, finding solutions for s- like, very complex problems. And, so that, like, from the day, first day on, I had, like, the feeling, okay, I think I can really help here and, protect their asset the best way possible.

And then especially within the medtech field, I think what Ryan also said in the beginning, there's like, it's also for me, sometimes it's a kind of s- scary part thinking about, okay, what if you get sick at one point, or like from closer family that got really sick, and, having like this helpless feeling like that you maybe can't change anything here. And then when you work with the medtech industry and you see that they are working on that problem and have these great idea- to help people to like, that there's also k- some kind of involvem- like involvement in this technology.

And, so for example, I, there's like one of my clients, they are, working on histological images and analyzing them also with respect to cancer types, and how AI can be such a great help there. And of course, there are like a lot of these discussions about, how we should be careful with the new technology and how we could re- regulate that and stuff like that, but there's also like so much good in there that can really help people's lives. And I think that's like for me, always very nice that yes, Ryan said we're no doctors. So like, we're just like patent attorneys, but still we could contribute a little bit to that too. Yeah.

[00:25:34] Lindsey Dinneen: Love it.

[00:25:35] Ryan Phelan: Yeah. I would just, I would just echo everything that Stephanie said. That certainly is why I enjoy working in this space too, is, you, you feel like you have a, a little bit of contribution that you make.

[00:25:44] Lindsey Dinneen: Yeah. Absolutely. I, I couldn't agree more. I think, to your point, Stephanie, it's, it's so inspiring to see the innovation that's coming out, and it makes you feel like, especially when there's difficult world news, it makes you think, "Okay, but at least there are still these change makers who are really trying to make the world a better place and, and improve patient lives." And I think that's just a, a wonderful thing to get to witness and be a, a part of. It helps the soul. So, I'm always curious about the personal side of things as well. So just what are, what are some of the things that you all en- enjoy doing, say, outside of work? maybe some hobbies or volunteering or interests and things like that. What are... Let's, let's talk about the people as well behind these amazing patent attorneys.

[00:26:36] Ryan Phelan: Yeah. everybody has a hobby, so I, I was, I like to run. I was running since high school, so I like to do that. And then, in the winter I like to ski. and then I'm, recently getting my scuba cert, with my daughter. So we're having a good time doing that this summer. So just trying to stay busy and active. I like to learn always, and so I, I, I love learning, I guess. and one of the reason why medtech is interesting to me 'cause I like to apply that, computer science skill to, the medtech field and continuously learn, in that space and also give back, like we talked about before. So, yeah, I guess I would lump in learning as one of my hobbies as well. I like... I, I'll say, and I, I'm not sure if we'll get into this later I think you had a question about, poss- if we, if we could teach one class or- No, we'll get into that ...

[00:27:20] Lindsey Dinneen: Something like that. Yeah.

[00:27:22] Ryan Phelan: Yeah, okay. I'll, I'll save that for a later time. So.

[00:27:23] Lindsey Dinneen: Okay. Yes. Excellent. Stephanie?

[00:27:28] Stephanie Rupp: Yeah, I think that's, one common thing that we have, Ryan and I. It's, skiing. That's also what I enjoy a lot. so as I said, I'm from Munich, and it's very close to the Alps, so it takes us only, like, about, like, two hours to go to Austria. and so, but I really enjoy going there for the weekend, clearing my mind. Yeah, especially when the week was very busy with work. so it's like, thinking about something else. And, besides that, yeah, spending time outside, going hiking at the weekend, like when it's... there's no snow.

Also, I picked up some hobbies that I had when I was younger. So for example, I had, piano classes for, like, when I was five years old, and then once I had, like, the training and everything else going on, paused that because, like, so much else going on. But then last few years I, taught myself, "Oh yeah, it would be such a waste not to do that anymore." And, so I'm, like, started playing piano again. I'm not good in it. It's more really as a hobby. And, but yeah doing something else in the evening and clearing my mind. So that's what I usually like to do as well.

[00:28:35] Lindsey Dinneen: I love that. That's wonderful. I, yes, I, I understand that sometimes picking up a hobby that you sort of set aside for a while is really fun as an adult, 'cause you have a different way of interpreting that learning, back to your point, Ryan, of how it, it it changes. And I, I actually really enjoy that, of, of revisiting something where I might have thought g- especially growing up. Like for instance, I remember thinking I just could not paint for the life of me, like it was never gonna happen. And then as an adult, with a, an instructor who was... maybe s- spoke a slightly different, in a different way, and then getting to like go, "Oh, maybe I can" is always a nice thing to learn too. But anyway.

[00:29:17] Stephanie Rupp: And also taking, taking the pressure out of it. Yes. So it's like, as I said, like piano class is just a hobby. I don't have to be good in it. It's just should give me some joy in it. And so yeah.

[00:29:27] Lindsey Dinneen: Love that. Yeah. Yeah, okay. So now you've both been in positions of leadership, and I'm curious, and, and I know it's hard to boil it down to maybe one thing, but what is one or two, three things that you would say is your top leadership advice, especially for those who maybe are more in, middle management trying to continue to build their leadership skills? And what, what makes a good leader, in your mind, and then maybe what's one or two pieces of advice?

[00:30:02] Ryan Phelan: Yeah. What makes a good leader in my mind is something that somebody that can lead by example, I guess. On like a first project or a new client or a new matter, I like to do it, do it myself once so I can go through it and, get the feeling for the new technology, that may be at play or the new matter, maybe the client's preferences whether it's a startup or a large company.

And then once I have that kind of lead from the front, then I like to do, I guess, a military word, dis- decentralized command, which is get people that I trust and who I have a great assistant. I have attorneys that I work with European attorneys such as Stephanie, and then give them work with them and give them free reign and control, whether it's a colleague like Stephanie or a associate here at Marshall Gerstein to, work with the client or have agency over, what they do, 'cause I think it can also teach in that capacity, like things that I learned from the lead from the front can flow, down or through or out and then, that person can also learn on the job doing it themselves. I believe that, people doing, instead of just listening is the, a best way to learn for them and then also get better. And so I, I tend to approach, leadership, from that perspective.

[00:31:12] Lindsey Dinneen: Love that. Yeah. Stephanie?

[00:31:15] Stephanie Rupp: Yes. I see myself like still more at the beginning of my career, so I can, talk a little bit more of how I, see or like, yeah, see leadership or like, how I experience it. Yeah. it's more also I... like everything what Ryan said, I completely agree. And also like seeing the person behind that. It's like everyone is like very busy, especially when you're in leadership positions and, very busy schedules and, But also seeing the person as a whole- Mm ... and how could you like support them to be better, to grow and, how to also, yeah- lead them or like, yeah, lead them in the way they w- where they want to be at some point. And, I think that's, yeah, what you should not forget e- especially when you have a really busy schedule. That's it.

[00:32:11] Lindsey Dinneen: Yeah. The, the person behind... Yeah. That, that's an interesting theme that continues to come up, time and time again, is, you know, if one of the tricks to being a good leader is to care. It seems so straightforward, but it's if you care about the person and you, you want the best for them, you are going to naturally be a better leader because you're investing in them and, and in their success and goals, and, it's, it's just cool to see. Okay, and then, all right, I'm just going to pivot the conversation a little bit for fun, and this is where exactly what you were referring to earlier, Ryan. So if you were to be offered a million dollars to teach a master class on anything you want, could be in your industry, but doesn't have to be, what would you choose to teach?

[00:32:58] Ryan Phelan: I would teach a class called Patenting Software Inventions and, I'm actually currently teaching that class. Oh. they're not-- I'm not getting paid a million dollars to do it, unfortunately.

[00:33:07] Lindsey Dinneen: Dang.

[00:33:07] Ryan Phelan: But, but it is a, a, a passion and a love. I teach it at, Northwestern Law, where I went to law school. I-- it's, it's my pleasure and joy every year to go back. I teach a power course there every year, I think for the past eight years on, teaching students how to patent software inventions in the US, and I think, elsewhere there's a, you know, there has become, by at least some people, the belief that you can't patent software, you know, which of course is, not true.

And so, you know, I teach methodologies in my class about how to, patent software inventions in the US using you know, guidance from the courts, from the Supreme Court, from the Federal Circuit, from the district courts here, in the US. A lot of it covers, things such as Section 101 you know, that changed, in 2014, from the Supreme Court's decision in Alice v. CLS, and how to address, issues, about what the, the court said there.

And then also what later courts, the Federal Circuit, said that they wanted to see in order to overcome, Section 101 issues, in the US. A lot of times, too, it's interesting, we have, like, a small slide like that, that deals with EPO-- which Stephanie's much more adept than, than I am-- but what we tell our students is, and maybe Stephanie can address this, is that, you know, there seems to be a convergence, between Section 101 law and, something called a technical effect, an EPO, where it seems like both jurisdictions are wanting to see more of a technical disclosure incorporated into the application rather than just kind of claiming functionally or a high level language.

So you need to be very careful in crafting these applications so there's-- they're successful when you're in front of the the patent office in the US. And if you, you do it right, you can, create, you know, not only a US-centric application, but one that might, withstand, the strictures of the EPO. In my opinion, I think that the EPO can sometimes-- and maybe this is just me being a US practitioner-- but the EPO can be somewhat more difficult, to get a patent, application. Maybe Stephanie would disagree and say it's the other way around, but but it's always good, and clients usually, even if they're not thinking about it, to have an application that could survive both places 'cause they tend to be, I think, the, the two more, more difficult, if not most difficult jurisdictions in the world to get a patent application. And if you go into it knowing and how to craft a patent application and you're ready, and you put into that application the right, material, then you can be successful.

[00:35:40] Lindsey Dinneen: Awesome. Stephanie, what would you teach?

[00:35:44] Stephanie Rupp: Yeah, maybe we, Ryan and I, could do a master class together then because he said, like, then we could explain the similarities or the differences between, US patent law and European patent law, and can also maybe, also add something about the UPC that we have now, the U- Unified Patent Court, and have a, maybe a lively discussion about all of that and, how to get the strongest and broadest, patent in the different jurisdictions.

And as Ryan said, there are, like, some similarities, and I also have the feeling when I discuss with Ryan that, when we have a patent application where we struggle to get a patent on, then we usually also struggle with that in the US- Mm-hmm ... or the other way around. And, but of course, there are, like, differences in how the EPO and how the USPTO, like examine these AI inventions and, in the US you have these 101 objections that you usually get.

In, Europe it's, they apply the so-called two hurdle approach where they, especially the second hurdle is usually harder to overcome. Mm. And that's also what, Ryan mentioned, is that you have to show the EPO that your AI invention or your AI steps contribute to the technical character of the invention. And that's, often, and I totally understand that, hard to grasp for an inventor because they think we have all these technical means here. We have a server, we have a processor, we have a memory, we have sensors getting data. Do you tell me now that that's not technical?

[00:37:18] Lindsey Dinneen: Mm.

[00:37:19] Stephanie Rupp: And, but that's not how the EPO thinks. It's, for them, they say, "What is your motivation for that invention?" Or, or in other, more their words, "What kind of technical problem you try to solve?"

[00:37:32] Lindsey Dinneen: Mm.

[00:37:34] Stephanie Rupp: And that is, what we also usually ask the inventors in our f- like, first meetings with them, "What is the technical problem you're trying to solve with that, and how does the, your AI steps, your method steps contribute to that?" Because that's, if you cannot show that to the EPO, then it's very hard to get a patent on. so maybe my combined master class- yeah ... where we show that and- It,

[00:37:59] Ryan Phelan: It would- ...

[00:38:00] Stephanie Rupp: Explain that, yeah. So ...

[00:38:01] Ryan Phelan: Definitely it would, it would help out my meager EPO slide, any additional information on this, especially the, the UPC, which I'm glad you mentioned. But, maybe, we could take a minute to talk about the UPC and in, in the European area since that's like a new, newer, from what I understand, a newer avenue, the era approach in Europe.

[00:38:20] Stephanie Rupp: Yeah. Yeah. It's, so as I said, we have, like, for now three years now, the, Unified Patent Court. And, before that we also had European patents, but once it was granted, was divided into national patents. So if you wanted to, file an infringement action or a nullity action, you had to do that in each specific country. And that made it very complicated because I, I'm a German patent attorney. I don't know anything about Italian law, so you would then need an Italian patent attorney or French and so on. So it was, like, very complicated.

And, so what we now have, and that is, like, very exciting to live at that time now, is, the Unified Patent Court, where it's, like, now centralized and you can attack patents at the, like, Unified Patent Court, like, for the whole patent, and you don't have to go to these before the national courts anymore. And, so that's, like, very exciting for us as well because case law is evolving now and, there's, yeah, you can see how, like, how it changes and how the judges are handling these cases and it's, like, also very, like, for us, a lot of new things to learn.

[00:39:32] Lindsey Dinneen: Yeah.

[00:39:32] Stephanie Rupp: Yeah.

[00:39:33] Ryan Phelan: Yeah, I was gonna say, I, I also heard, and, Stephanie can certainly chime on this, that certain cities in Europe, like Paris, or Munich, may have different judges that specialize in different arts or disciplines. I think, was it, w- what Munich was, I can't remember, is that the mechanical or- Yeah.

[00:39:49] Stephanie Rupp: Yeah. So that's, like, for the central division, but we also have then local divisions- Mm-hmm ... as well. So we have, four local divisions in Germany, but also in other countries. And that also, changes, of course, a little bit of how they handle the cases because the judges, they often came from the, like, the national courts. So they, like, when you're in Germany, of course, they still have little bit, little bit more of the German thinking in them. When you're going to a Dutch, local division, then they have a little bit of, like, another, like, view on that. And I think over time it will, like, unify a little bit. but these are, like, also differences that, makes it very interesting, to see.

[00:40:27] Lindsey Dinneen: All right. Okay, so next question is, how do you wish to be remembered after you leave this world?

[00:40:35] Ryan Phelan: I hope that people remember me as, somebody that was fun, like to, you know, either work or hang out with that regardless of whether we're working hard or, you know, playing hard, that, that it was just fun. So that, that's my only wish. So or, or main wish.

[00:40:50] Lindsey Dinneen: Love it. Steph?

[00:40:52] Stephanie Rupp: Yeah, I think for me that I was maybe, like, a fair and trustworthy person. I think it sounds a little bit boring, but, more when people work with me and they, like, say, "Oh, when she gave me advice, I knew that she had, like, my best interest in mind as well, and not only, like, filling her own pockets or, like, trying to, like, improve it for herself, but having like..." Yeah, when they remember me of a person that you could trust with the advice, I think that would be, like nice to know for me. Yeah.

[00:41:26] Lindsey Dinneen: Yeah, for sure. All right. Excellent. And then final question. What is one thing that makes you smile every time you see or think about it?

[00:41:37] Ryan Phelan: I guess just sticking with our current theme, if in a work capacity, when a client gets a victory of some type certainly makes me smile. A lot of clients are happy when they get their patents allowed, or if you win that litigation case or you, you do things, a lot of times in the US we'll, we'll have these decisions or these patents, and it it, it, it makes me smile to think that, you know, I helped their business in that way to protect their, their IP and just going forward. I, I imagine it's a pretty standard answer, but, you know, certainly in the context of this podcast, that's absolutely one thing that makes me happy.

[00:42:10] Stephanie Rupp: Mm. Yeah. I'm a person, I get excited very quickly or, like, really small things make me smile already. So I arrived on Saturday in Chicago, and I, for example, didn't expect to have a gym in the hotel, and then suddenly I discovered that and was really happy about that. So these are these small things that other people say, "Oh, yeah, whatever." but I think what makes me smile the most is, like, knowing that I have a weekend ahead of me with, like, my family and my partner, and we go ski. And I say that now we have, like, summer outs and, like, very warm temperature here in Chicago. I think it's about 80 degrees, and I'm already thinking about skiing and snow, but it's, more of...

[00:42:52] Ryan Phelan: It's never too early.

[00:42:53] Stephanie Rupp: Yeah. But more of, like, not the skiing per se, but just having time with family and- yeah ... clearing my mind and stuff like that. So, yeah.

[00:43:02] Lindsey Dinneen: Excellent. Excellent. Well, thank you both so much for being here. I've so enjoyed the conversation, and you gave so much amazing advice and guidance, so thank you so very, very much for all of that. If folks who should be looking out for services such as yourselves, how do they get in touch with you?

[00:43:25] Stephanie Rupp: I think like through the website, that, I think will be- mm-hmm published, with the, podcast. And, also my email address as well. You can find me on the website, or we can also add it to the, to the podcast info. yeah.

[00:43:38] Ryan Phelan: What is your...

[00:43:38] Stephanie Rupp: It's the easiest ...

[00:43:38] Ryan Phelan: What is your email address, Stephanie?

[00:43:41] Stephanie Rupp: It... Hopefully I say it correct now. It's, S for Stephanie, S Rupp, my, last name, @hoffmanneitle.com, so very easy. Yeah.

[00:43:53] Ryan Phelan: Perfect. Excellent. Yeah, same thing for me. I believe the contact information will be at the with the podcast, but I can be reached at RPhelan R-P-H-E-L-A-N @marshallip.com, and welcome any questions or comments.

[00:44:08] Lindsey Dinneen: Awesome. Well, thank you both so much again for your time today. We really appreciate it. We are so honored to be making a donation on your behalf as a thank you for your time today to Save the Children, which works to end the cycle of poverty by ensuring communities have the resources to provide children with a healthy, educational, and safe environment. So thank you so much for choosing that charity to support, and also thank you for continuing to work to change lives for a better world. Love learning about you, about your areas of expertise, and just really appreciate you, being willing to share with us. So thanks again, and, I suppose until next time.

[00:44:51] Ryan Phelan: Thank you. Love to come back.

[00:44:53] Stephanie Rupp: Thank you. Awesome. Yeah. Thank you so much.

[00:44:55] Dan Purvis: The Leading Difference is brought to you by Velentium Medical. Velentium Medical is a full service CDMO, serving medtech clients worldwide to securely design, manufacture, and test class two and class three medical devices. Velentium Medical's four units include research and development-- pairing electronic and mechanical design, embedded firmware, mobile app development, and cloud systems with the human factor studies and systems engineering necessary to streamline medical device regulatory approval; contract manufacturing-- building medical products at the prototype, clinical, and commercial levels in the US, as well as in low cost regions in 1345 certified and FDA registered Class VII clean rooms; cybersecurity-- generating the 12 cybersecurity design artifacts required for FDA submission; and automated test systems, assuring that every device produced is exactly the same as the device that was approved. Visit VelentiumMedical.com to explore how we can work together to change lives for a better world.