Attorneys
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Overview
John W. Boger is a partner and head of the Medical Products/Technology Practice Group at Heslin Rothenberg Farley & Mesiti PC. Before joining the firm, John was senior in-house counsel at Capital District Physicians' Health Plan, Inc. He also was an associate with the litigation firm of Brown & Tarantino, LLC in Rochester.
Before attending law school, he worked for eight years at DePuy, Inc. as a product development engineer and product manager specializing in orthopaedic implant design. He also worked for DePuy-DuPont Orthopaedics, Inc. as the venture project manager, focusing on the development of advanced implantable biomaterials and medical implants.
John is an adjunct assistant professor at the University of Rochester's Hajim School of Engineering and Applied Sciences in the Department of Biomedical Engineering. He teaches engineering graduate students in the areas of IP protection and commercialization of IP.
He also works with student entrepreneurs at the Couri Hatchery, located in the Whitman School of Management at Syracuse University.
John's outside interests include attending both of his children's lacrosse and hockey games, golfing, skiing and biking.
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Speaking Engagements
- Presenter – Biomedical Acceleration and Commercialization Center, "AMC-Due Diligence: Preparing Your Start-Up's IP Portfolio" (April 2018)
- Presenter – Biomedical Acceleration and Commercialization Center, "AMC-Licensing: What Can I Expect" (January 2018)
- Panelist – NEXT Conference, Syracuse, NY (October 2016)
- Moderator – MedTech 2010, Bioscience Industry Summit, "International Market Opportunities-Is This The Road You Want to Travel?" (October 2010)
- Presenter – OMTEC 2010, Chicago, "Intellectual Property Audits and the Critical Role of R & D Engineers" (June 2010)
- Presenter – 6th Annual Meeting on Innovation Technologies in Spine Surgery, "Introduction to Intellectual Property: What the Surgeon Needs to Know" (October 2009)
- Panelist – MedTech Bioscience Leadership Summit, "Innovative Versus Iterative Change: How To Best Fill The Pipeline In Challenging Times" (October 2009)
- Presenter – OMTEC 2009, Chicago, "Hints and Tips for the Product Development Professional in Maintaining Adequate Documentation When Inventing" (June 2009)
- Presenter – Department of Bioengineering, RPI, "An Introduction to Intellectual Property" (March 2009)
- Presenter – BioConnex/LES Meeting, "Introduction to IP Due Diligence Investigations" (December 2008)
- Presenter – MedTech Meeting on "Navigating the Mysterious Waters of IP, Inventorship: How to Determine (November 2008)
- Presenter – Grand Rounds for the Department of Orthopaedics, SUNY Upstate, "A Primer on Intellectual Property: How to Protect Your Interests and the Interests of the University" (November 2008)
- Presenter – 5th Annual Meeting on Innovation Technologies in Spine Surgery, "Introduction to Intellectual Property: What the Surgeon Needs to Know" (June 2007)
- Moderator – UVANY, Albany Capital Forum, "The Nuts and Bolts of IP Due Diligence" (May 2008)
- Presenter – Department of Bioengineering, RPI "An IP Overview" (March 2008)
- Presenter – North American Spine Society, Pre-Course titled, "Your Innovative Idea-Intellectual Property-What You Need to Know" (October 2007)
- Presenter – BioConnex/TechConnex, "Commercializing an Invention" (October 2007)
- Panelist – Albany Law School, "Patenting for Entrepreneurs" (September 2007)
- Boger, J.W., Kelman, D.C.: "An In-Vitro Test For Comparison of Commercially Available Tibial Trays, 10th ASME Winter Meeting," San Francisco, CA (December 1989)
- Boger, J.W.: "A New Design for Treatment of Thoracic Kyphosis: A.K.I.S., Orthopedic Research Society Annual Meeting," Las Vegas, NV (February 1985)
- Schultz, R.S., Boger, J.W., Vernon Thompson Award 1984, Western Orthopedic Association, "The Use of Wire In Orthopedics: A Biomechanical Assessment"
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Publications
- "New Trademark Laws Stress Quality and Integrity of Registration," BONEZONE (November 2019, Vol. 2)
- "Want to Talk About Your Invention? Follow These Five Rules," BONEZONE, Vol. 16, Issue 3 (Summer 2017)
- "Trade Secrets Go Federal," The Daily Record IP Frontiers (October 2016)
- "Harvesting Engineers' Ideas Through Invention Disclosure," BONEZONE, Vol. 14, Issue 5 (December 2015)
- "Product Development and IP Considerations: A Marriage Made in Heaven?" BONEZONE, Vol. 14, Issue 4 (Fall 2015)
- "The Dos and Don'ts of Trademark Registration," BONEZONE, Vol. 14, Issue 3 (Summer 2015)
- "Training Your IP Police Force to Catch an Infringement Thief," BONEZONE, Vol. 14 (Online Edition, Spring 2015)
- "You Secured a Utility Patent; Now What About Your Design Patent?" BONEZONE, Vol. 14, Issue 1 (March 2015)
- "How to Get the Most Out of Your IP Firm," BONEZONE, Vol. 13, Issue 5 (Winter 2014)
- "Can I Make, Use and Sell My Patented Invention? The Answer May Surprise You," BONEZONE, Vol. 13, Issue 4 (Fall 2014)
- "Effective Tools for Patent Searches (participating panelist)," BONEZONE (Online Edition), Vol. 13 (Summer 2014)
- "Protecting Inventions and Brands: IP Due Diligence in the Product Development Process," ORTHOKNOW STRATEGIC INSIGHTS INTO THE ORTHOPAEDIC INDUSTRY (April 2014)
- "3-D Printing and IP: Can They Coexist?" BONEZONE, Vol. 13, Issue 1 (Spring 2014)
- Boger, J.W. and Graff, J.A.: "The Hague Agreement: It May Save You Money," BONEZONE, Vol. 12, Issue 5 (Winter 2013)
- "Mitigate Patent Infringement Risk with an FTO," BONEZONE, Vol. 12, Issue 4 (Fall 2013)
- Boger, J.W. and Ziegler, K.E.: "The Race to the Patent Office Is On," BONEZONE, Vol. 12, Issue 2 (Summer 2013)
- "Trademarks vs. Domain Names, Part II: There is a BIG Difference," BONEZONE, Vol. 12, Issue 1 (Spring 2013)
- "Trademarks vs. Domain Names, Part I: There is a BIG Difference," BONEZONE (December 2012)
- Boger, J.W.; Ziegler, K.E.: "The IPXI: An Alternative to the License Agreement? Maybe!" BONEZONE (October 2012)
- "The IP License Agreement: A View from 5,000 Feet," BONEZONE (August 2012)
- "Trademark Searches and Availability Opinions," BONEZONE (June 2012)
- "An Introduction to Patent Opinions," BONEZONE (March 2012)
- "IP Portfolio Management Strategies for Medical Device Manufacturers," BONEZONE (December 2011)
- "Develop a Strategic IP Portfolio Management Plan," The Daily Record IP Frontiers (October 20, 2011)
- "Final Office Action Rejections for Patent Applications: It Ain't Over Until the Fat Lady Sings ... Usually," BONEZONE (October 2011)
- "Beware of the Falsely Patent Marking Boogey Man," BONEZONE (March 2011)
- "An Introduction to Copyrights," The Daily Record (January 18, 2011)
- "Strike Back at the Recession With an IP Audit," The Daily Record (October 16, 2010)
- "You May Own a Copyright and Not Know It," BONEZONE (Winter Fall 2010)
- "Truth or Myth: Does an International Patent Exist?" BONEZONE, Vol. 9, Issue 3 (Fall 2010)
- "Psst . . . It’s a Secret . . . Don’t Tell Anyone," BONEZONE, Vol. 9, Issue 2 (Summer 2010)
- "Filing a Provisional Patent Application- Applicant Beware," BONEZONE, Vol. 9, Issue 1 (Spring 2010)
- "Strike Back at the Recession by Auditing Your Intellectual Property," BONEZONE, Vol. 8, Issue 4 (Winter 2009)
- "Laboratory Notebooks: Why They Are So Important," BONEZONE, Vol. 8, Issue 3 (Fall 2009)
- "What to Do When You Are the Target of an Intellectual Property Due Diligence Investigation," BONEZONE, Vol. 8, Issue 2 (Summer 2009)
- "The Why, When and What of IP Due Diligence Investigations," BONEZONE, Vol. 8, Issue 1 (Spring 2009)
- "What You Need to Know About Patent Marking and Your Invention," BONEZONE, Vol. 7, Issue 4 (Winter 2008)
- "Recognizing Trademarks as a Source of Commercial Value, Part 2," Orthopaedic Product News (Jan./Feb. 2007)
- "Recognizing Trademarks as a Source of Commercial Value, Part 1," Orthopaedic Product News (Nov./Dec. 2006)
- "A Brief Review of Two Pedicle Screw Patents," Orthopaedic Product News (Sept./Oct. 2006)
- Boger, J.W., Evans, B.G., Dunn, H.K., Daniels, A.U.: "A New Design for Treatment of Thoracic Kyphosis: A.K.I.S.," Trans. Ortho. Res. Soc., Vol. 10 (1985)
- Schultz, R.S., Boger, J.W., Dunn, H.K.: "The Use of Wire in Orthopedics: A Biomechanical Assessment," Clinical Orthopedics and Related Research, 198: 304, (Sept. 1985)
- Dunn, H.K., Glass, J., Gemperline, P.L., Evans, B.G., Boger, J.W.: "Intraoperative Harrington Rod Force Measurements Using a New Force Transducer," Trans. Ortho. Res. Soc. (1985)
- Schultz, R.S., Boger, J.W., Daniels, A.U., Dunn, H.K.: "Strength of Tension Band Wiring Systems," Trans. Ortho. Res. Soc. (1984)
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Education
- Syracuse University College of Law, cum laude
- University of Utah, M.S., biomedical engineering
- Syracuse University, B.S., biomedical engineering, cum laude
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Memberships
- Northern District of New York Federal Court Bar Association
- Orthoworld
- MedTech
- Licensing Executives Society (LES)
- Medical Device Innovation Challenge (MDIC) Review Committee
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Admissions
- New York State Bar
- United States Patent and Trademark Office