Generating and Protecting IP in New Product & Medical Device Development

Truly revolutionary products and medical devices which change how we go about our daily lives do not come around every day…

In fact, the rise of revolutionary products such as smart phones, laptops & flat screen TVs is quite a rare occurrence. Design Development Engineer, Luke, discusses the importance of generating and protecting IP in your new product and medical device development project(s).

It’s important to recognise that although certain products may seem that they rise to popularity in a short space of time, they are often the result of years of incremental innovation and design. Its these increments, or “inventive steps”, which can benefit from the protection of a patent.

I recall a meeting with a patent attorney who was explaining exactly what an “inventive step” was. He said, “Imagine a car with brakes, then imagine a car with brakes and now air conditioning – this is in its simplest form an inventive step.”

The types of patent:

The types of patents differ from country to country, but here in the UK, only a full patent or a design registration is available. So, which type should be considered?

A design registration can be utilised to protect the overall visual appearance of a product or component. It gives the proprietor the exclusive right to make, use, sell, import, and export any product embodying the design. A design registration is the cheapest, fastest and easiest option of the two, but is limited to protect the design from a visual perspective.

A patent differs, in that it grants protection over the function of the invention as opposed to its appearance. They offer a more robust level of protection but as a result are much more expensive and take a considerable amount of time to acquire. The invention must be new and not known anywhere in the world and must also not be “obvious to a skilled person” – these are first requirements. A well-constructed patent, with the assistance of a specialist attorney, will grant the inventor protection of up to 20 years, on the condition that the yearly renewal fees are paid.

How to obtain a patent:

Obtaining a full patent is a time consuming and expensive process. The first action is to seek out a suitable patent attorney, preferably one with experience in the industry and scope of your invention. Patent applications should not be attempted without the assistance of an expert. According to the IPO, only 5% of applications drafted without professional help are granted!

When the application is submitted to the IPO, a skilled patent examiner will carry out searches on the invention to identify any documents which may be considered as prior art or would determine that the invention would be obvious to a skilled person. These are the first two requirements, that an invention is new and has an ‘inventive step’, and that it would not be immediately obvious to a skilled person in that related field. It’s important to note that at this stage, the patent application already provides a degree of protection to the inventor.

The next stage is “publication” and occurs around 18 months after the application is filed. It is here that the application is made available to the public. This is an opportunity for third parties to disclose any prior art to demonstrate that the invention is already known, if that may be the case.

“Examination” is the final stage, and it is here where a skilled examiner will assess the entire application to ensure it meets all legal requirements. The importance of a high-quality draft becomes apparent at this point, as correspondence between the examiner and applicant often results in amendments being made to the claims. However, nothing can be added to the patent at this stage, it can only be removed.

Extending the Protection:

Once a patent is filed in the UK, a 12-month window is available to extend the scope of protection into other countries. There are three potential routes.

1. Patent applications can be filed separately for protection in each national country. They must be filed at the relevant office and translated into the language of that country.
2. It is also possible to file a single application with the European Patent Office. The claims should be translated into German and French and enforced within each country separately.
3. Lastly is the International Route, where a single application can be filed with the World Intellectual Property Office (WIPO) under the Patent Cooperation Treaty (PCT). The main bulk of the work is carried out through WIPO, but can then be nationalised by each country separately.

At HD, we provide services to assist with both the generation of novel concepts and, advise on the necessary steps to protect the innovation. Importantly, all intellectual property rights are handed over to our client upon project completion. Find out how we recently developed valuable new IP for one the top 10 pharmaceutical companies to exploit.

Please get in touch to discuss how we can help you with your product or medical device development.