The digital health space is transforming health care with inventions that address complex medical challenges, such as wearable health-tracking devices, sophisticated software programs to improve patient care, and systems that facilitate on-demand doctors’ visits. Given the current legal environment for software-based patents and a fierce competitive landscape, the success of new products in this area may hinge upon pursuing the right IP protections and establishing a proactive IP Protection Plan.
Innovators shouldn’t wait to develop a plan that assesses their protection options, including patents, designs, trademarks, copyright or trade secrets.
Start-ups and established companies alike are entering the digital health market, an industry segment valued at $55 billion in 2014, and projected to grow at a compounded annual growth rate of more than 20% over the next five years. As in other burgeoning industries, investors in this arena are scouting for opportunities anchored on innovations that are protected from competition.
Aware of the need to protect their assets to attract investors, companies launching new products in digital health should consider a picket-fence approach to patent protection. Such an approach focuses on protecting innovations in a myriad of ways. For example, health-focused devices or systems may include innovations on their server or infrastructure side (the back end), but also on the side that faces clients or users. This could be in the form of a display or an application for users to access. Patent protection may be valuable for both types of devices or systems. Innovations focused on the back end may be ground-breaking and easier to protect broadly by patent, but the elements of a product most vulnerable to replication by competitors often are the consumer-facing components – those touchpoints that make the product distinctive to doctors and patients who use them. Thus, patents directed to consumer-facing components may be policed more easily for copying by others. They also may be more difficult to obtain in view of recent patent law developments, such as the 2014 Supreme Court’s Alice ruling, which has made it more difficult to patent certain software-focused inventions or otherwise computer-implemented processes.
Moreover, obtaining broad patent protection may be tougher in a crowded field with lots of players, but narrower, more focused protection may still prove useful if a unique feature of a device or system becomes a market identifier – perhaps that seemingly small feature is a unique way of powering on or a new doodling capability. And, of course, patent protection should focus not only on a current physical embodiment of a device, process or system, but also on where that innovation and its market may be in a few years. Innovators need to plan that patent picket fence around their products and services with these, and other, considerations in mind.
Also, one shouldn’t give short shrift to considering design patents to protect the look of digital health products and services, whether that protectable “look” is the shape of a device, an app icon that users click on to access a telemedicine system, or a user interface of a program that doctors use to track their patients’ health. Many successful wearable or other portable devices have aspects of their look protected by design patents, and these too should be protected for digital health innovations.
Trademark and Copyright
Trademark protections should be considered as well. They can include not only to the name of a product or service, but also an associated logo or icon, a slogan or other messaging and even a color combination, product design, packaging, when it serves to identify the source of a digital health product or service. Copyrights also can protect key aspects of packaging, labeling, or other creative ornamentation surrounding consumer-facing digital health products and services. Consumers often recognize products and services by unique aspects related to their look, packaging or advertising, and those aspects should be protected by IP registrations or policies.
An IP Protection Plan should also account for times when innovations may be best protected by keeping them secret, namely by taking concerted efforts toward establishing trade secret protections.
The IP Protection Plan
An effective IP Protection Plan is a proactive one that consists of:
- establishing best practices or guidelines for how a business is going to mine its innovations;
- evaluating those innovations for possible protection – both within the company and amongst competitors or other innovators; and
- focusing on putting those IP protections in place that safeguard the features that best differentiate the business from others on the market.
Those with varying perspectives, including technology, marketing, commercialization, and legal, should mine information, evaluate product and market data, and execute the Plan on a frequent and periodic basis. A good IP Protection Plan is only as good as those who see it through. Thus, if business’ resources allow, in-house counsel or a dedicated businessperson within the company can serve as an IP Protection Plan bridge between R&D and the marketing-focused competitive playing field.
Identifying those points that set a digital health technology product or service apart and protecting those differentiators from imitators will be an integral part of success for digital health businesses. Developing that proactive and creative IP Protection Plan early will help make sure that happens.
In the next post on digital health, we will address licensing, commercialization and partnership considerations.