Overview
A registered patent attorney, Doug Portnow also has engineering experience in the medical device industry. This practical experience gives him an in-depth understanding of clients’ perspectives.
Doug’s practice focuses on patent preparation and prosecution, IP due diligence, and strategic counseling in the medical device and mechanical technologies. Prior to joining Schwegman, Doug was a partner at Wilson Sonsini Goodrich & Rosati and an associate at Townsend and Townsend and Crew LLP (now Kilpatrick Townsend & Stockton).
Before entering the legal profession, Doug worked for over a decade in the medical device industry. Doug worked at start-ups and publicly traded companies commercializing critical care products, vascular grafts, surgical instruments, stents, stent delivery systems, RF ablation catheters, embolic protection devices, and heart failure implants. This experience helps him understand the important role that IP can play, both for companies and the public. “As patent lawyers, we work on cutting-edge medical device technology that can help companies get funded to develop new products, and ultimately, that can provide patients with better treatments and therapies.”
Doug enjoys taking complex technical ideas and translating them into written form. He is detail-oriented, and is dedicated to keeping clients well-informed about project status.
Doug has been recognized as a Rising Star by Northern California Super Lawyers (by Thomson Reuters, 2013 – 2015). Outside of work, he loves to travel around the globe. He has visited 46 states and 6 continents.
Speaking Engagements
Co-presenter, “Inventorship and Assignment: Two Vital Concepts in Patent Law,”
SLW Institute Webinar, September 28, 2021
Presenter, “Understanding IP Due Diligence from an Investor’s Perspective”
BioUtah Entrepreneur and Investment Summit, Salt Lake City, UT, February 25-26, 2021
Presenter, “IP and Fund Raising”
University of Minnesota Carlson School of Management Medical Industry Leadership Institute, San Jose, CA January 11, 2021
Co-presenter, “Intellectual Property Strategies for Executives and Entrepreneurs,”
STL Startup Week, St. Louis, MO, November 11, 2020
Co-presenter, “Top 10 Things You Need to Know About Medical Device Patents,”
SLW Institute Emerging Tech Webinar Series, Minneapolis, MN,
June 30, 2020
Co-presenter, “Medical Device IP Strategies for Executives and Inventors”
Medical Design & Manufacturing West, Anaheim, CA, February 13, 2020
Presenter, “IP and Fund Raising”
University of Minnesota Carlson School of Management Medical Industry Leadership Institute, San Jose, CA January 13, 2020
Co-presenter, “Successful Design Translated into Successful Intellectual Property: How to Survive IP Due Diligence During Fund Raising or an Exit Strategy”
Design of Medical Devices Conference Shanghai, China December 7-8, 2019
Co-Moderator, “IP for Medical Device Companies: What to Consider During Fund Raising … Or Exit”
SLW Institute Emerging Tech Webinar Series, Minneapolis, MN November 7, 2019
Co-presenter, “Medical Device IP Strategies for Executives and Inventors”
Medical Design & Manufacturing, Minneapolis, Minneapolis, MN October 23, 2019
Co-presenter, “Understanding IP Due Diligence from the Investor’s Point of View”
University of California at San Francisco, Rosenman Institute, San Francisco, CA May 30, 2019
Co-presenter, “Workshop: How to Survive IP Due Diligence”
SLW Global IP Conference, San Jose, CA April 3-4, 2019
Moderator, “Fireside Chat with Alex Vayser”
SLW Global IP Conference, San Jose, CA April 3-4, 2019
Co-presenter, “IP Strategies for Medical Device Technologies: Be Your Own Incubator”
ABA-IPL Books Webinar Series, April 2, 2019
Co-presenter, “IP Law in Medical Devices”
Design of Medical Devices Conference Beijing, China December 11-12, 2018
Co-Panelist, “MedTech Innovator LIVE: IP Strategy for Medtech Startups”
MedTech Innovator Webinar, July 10, 2018
Panel moderator, “Intellectual Property”
San Jose State University Biomedical Device Conference, San Jose, California, March 28, 2018
Co-panelist, “Best Practices for Managing the Entire Due Diligence Process from Both Sides’ Perspectives”
American Conference Institute’s Summit on IP Due Diligence, Philadelphia, Pennsylvania, November 2-3, 2017
Co-panelist, “IP for MedTech Start-Ups and Digital Strategy”
MedTech Innovator Webinar, June 29, 2017
Co-presenter, “Practical Guidelines for the Physician Innovator: Protecting your IP While Seeking Funding”
Digestive Disease Week, Chicago, Illinois, May 6, 2017
Co-presenter, “Drafting Patent Applications: Claims and Patent Specifications”
Wilson Sonsini Goodrich & Rosati Patent Boot Camp, San Francisco, California, July 15, 2016
Co-presenter, “Practical Guidelines for the Physician Innovator: Protecting Your IP, Key Initial Steps”
Digestive Disease Week, San Diego, California, May 24, 2016
Co-presenter, “A Conversation about Intellectual Property” and “Intellectual Property Fundamentals”
Entrepreneur Bootcamp, Ohio State University, Columbus, Ohio, May 4, 2016
Co-panelist, “MedTech Intellectual Property Strategy”
MedTech Innovator Webinar, August 7, 2015
Co-panelist, “The USPTO Comes to the Silicon Valley”
WSGR Medical Device Conference, San Francisco, California, June 2015
Co-presenter, “Intellectual Property Management”
25th Annual Interdisciplinary Research Conference on Injectable Osteoarticular Biomaterials and Bone Augmentation Procedures (GRIBOI), Toronto, Canada, May 18-20, 2015
Co-panelist, “Managing Your Medical Device Patent Portfolio”
WSGR Medical Device Conference, San Francisco, California, June 2014
Co-panelist, “Mastering the Intricacies of USPTO Practice Post-Patent Reform: Supervisory Patent Examiners Weigh In on Medical Device Patents”
American Conference Institute’s Fourth Advanced Summit on Medical Device Patents, Chicago, Illinois, March 24-26, 2014
Co-panelist, “Integrating Changes at the PTO into Medical Device Patent Practice: Supervisory Patent Examiners Weigh In”
American Conference Institute Advanced Summit on Medical Device Patents, Chicago, Illinois, March 4-6, 2013
Panel Moderator, “Patent Law Update”
WSGR Medical Device Conference, San Francisco, California, June 2012
Co-panelist, “Overcoming Obviousness Challenges: Evolving Standards for Evaluating Validity for Devices Post-KSR”
American Conference Institute Advanced Summit on Medical Device Patents, Boston, Massachusetts, February 28-29, 2012
Co-presenter, “Drafting Patent Applications Part 2: Patent Specifications and Traps to Avoid”
Wilson Sonsini Goodrich & Rosati Patent Boot Camp, San Diego, California, June 3-4, 2011
Co-presenter, “Maximizing and Retaining Medical Device Patent Protection”
AdvaMed webinar, November 17, 2010
Co-presenter, “Choosing the Right Patent Attorney”
Intellectual Property for the Medical Device Industry, Q1 Productions, July 9-10, 2009
Publications
Author, “Navigating Trade Shows: Avoiding Patent Infringement in View of Edwards v. Meril,” Medical Product Outsourcing (MPO), September 6, 2024.
Co-author, “Innovation in Anesthesiology – Technology, Development, and Commercialization Handbook,” Elsevier, 1st Edition 2024.
Author, “Patent Marking: The Proper Method to Display Protection,” Medical Product Outsourcing (MPO), July 21, 2020.
Co-author, “Top 10 Considerations for Medtech Inventors,” Medical Product Outsourcing (MPO), April 1, 2020.
Co-author, “Patent Strategies for Chinese Approval of Medical Devices,” Law360, January 30, 2020.
Co-author, “Protecting Medical Method Patents Via Indirect Infringement,” Law360, August 15, 2019
Co-author, “Patent Law: How OEMs and CMs Can Work Together,” Medical Product Outsourcing (MPO), March 2019
Co-author, “IP Strategies for Medical Device Technologies, Be Your Own Incubator,” American Bar Association Section of Intellectual Property Law, 2018
Co-author, “Utility Models and Design Patents: What You Should Know,” The Life Sciences Report, Wilson Sonsini Goodrich & Rosati, Winter 2017
Co-author, “How to Expedite Examination of a Patent Application,” The Life Sciences Report, Wilson Sonsini Goodrich & Rosati, Fall 2013
Co-author, “U.S. Commerce Department to Open Regional U.S. Patent Office in Silicon Valley,” The Life Sciences Report, Wilson Sonsini Goodrich & Rosati, Fall 2012
Co-author, “New Procedures for Challenging Patent Validity,” The Life Sciences Report, Wilson Sonsini Goodrich & Rosati, Spring 2012
“Patent Reform Legislation: An Update on the America Invents Act,” The Life Sciences Report, Wilson Sonsini Goodrich & Rosati, Fall 2011
Co-author, “Analysis: PTO Should Deny Abbott’s Patent Extension for Rapid-Exchange Technology,” MX: Medtech Executive, October 2008
“Spare Parts and Patent Infringement,” Germeshausen Center Newsletter, Summer/Fall 2004
“Faculty Portrait: Dr. Hans Goldrian Architect of Europe’s Largest Patent Prosecution Group,” Germeshausen Center Newsletter, Winter/Spring 2004
“Stent Wars: The Intellectual Property Battle Continues,” Germeshausen Center Newsletter, Summer/Fall 2003
