Erik is a partner in the Intellectual Property group and is based out of the firm’s Los Angeles and San Francisco offices. Erik assists clients in identifying, protecting and enforcing their intellectual property, particularly in the health care, medical device, software and digital health fields. Erik also assists clients with technology transactions, including intellectual property due diligence and funding transactions, and acts as outside general counsel to emerging growth companies. Erik is particularly active in the digital health field. He serves as co-president of Health 2.0’s San Francisco chapter, frequently speaks and writes on the topic and has been published in TechCrunch.
I use my master’s degree in biomedical engineering in combination with my intellectual property experience, which includes both transactions and extensive litigation, to help clients develop intellectual property strategies and portfolios, particularly for health care, medical device, digital health and software-based technologies. For instance, I have helped clients obtain patents in technology fields that include image recognition, pulse oximeters, cancer diagnostics, diabetic monitors, connected inhalers, implants, colorimetric sensors, artificial intelligence, distributed storage, a range of monitoring and diagnostic technologies, a range of medical devices that include software and electrical engineering components, and many others. I build portfolios for all types of companies with international portfolios, including academic institutions, Fortune 500 companies and emerging growth companies.
I also counsel clients on forming optimal strategies for enforcement of intellectual property, and have extensive experience in patent and trademark litigation, including obtaining favorable settlements for clients.
I also have deep experience in technology transactions, particularly those that are IP centric transactions. My recent experience includes due diligence and licensing for a $20M investment in a health care startup, licensing IP from academic institutions on behalf of startups, non-disclosure and employment agreements and joint development agreements.
I also focus extensively in the digital health area. I co-organized the Bay Area Digital Health Mini-Conference and serve as co-president of Health 2.0 SF. I also frequently blog and speak on 3D printing and assist in organizing the 3D Heals conference in San Francisco.
I serve as outside general counsel for emerging growth companies—particularly in the digital health field, including by serving as the touch-point to address corporate formation and fundraising and the rapidly evolving regulatory issues in this space that include HIPAA and FDA.
Prior to joining Nixon Peabody, I was an associate with a leading intellectual property law firm in Southern California for six years.
I believe innovation and IP protection will continue to grow in the converging fields of technology and health care. Particularly, I believe artificial intelligence and 3D printing will continue to improve health care, and patent strategies should be crafted to capture these innovations in light of recent changes in software patentability.
Forbes | February 13, 2020
In his latest contributed column, Los Angeles Intellectual Property partner Erik Birkeneder writes about how health care AI technologies that demonstrate empathy can help improve patient satisfaction and engagement.
Forbes | November 19, 2019
Los Angeles Intellectual Property partner Erik Birkeneder also has a new Forbes column, focused on a new frontier in health care AI that has potential to advance diagnostic care but also presents thorny issues related to IP protection.
Law360 | May 06, 2018
In this roundup of promotions to partner and firm management positions, 14 attorneys from Nixon Peabody are highlighted. The 11 attorneys promoted to partner are Ellie Altshuler, Mark Beaudoin, Erik Birkeneder, Hannah Bornstein, Chris Browning, Barry Carrigan, Keri McWilliams, Matt Mullen, Steven Richard, Charles Tamuleviz and Alison Torbitt. In addition, Kenneth C. Lind was promoted to leader of the firms’ public finance practice group, Justin Thompson was promoted to office managing partner in LA, and Aaron Yowell was promoted to chief innovation officer.
TechCrunch | September 21, 2017
Los Angles IP counseling and transactions associate Erik Birkeneder authored this column about the future and benefits of health care mobile applications.
MedCity News | June 14, 2017
Los Angeles IP counseling and transactions associate Erik Birkeneder and health care associate Daniel Eliav co-authored this article about legal issues digital health companies should consider.
09.26.18 | Los Angeles, CA
04.19.18 | San Francisco, CA
University of Minnesota Law School, J.D.
University of Wisconsin, M.A., Biomedical Engineering
University of Wisconsin, B.A., Biomedical Engineering
U.S. District Court, Central District of California
U.S. Patent and Trademark Office