Greetings from Stratagem IPM Ltd 2015

As you are all now aware Stratagem moved to exciting new premises at the end of October 2014.  Some of you have already visited us and hope that more of you will take the opportunity when the weather improves.

Stratagem has had yet another positive start to the year, and have been joined by Laura Fletcher a fully qualified Attorney for Life Sciences and Chemistry. Laura is experienced in drafting and prosecuting UK and European patent applications as well as managing the prosecution of global patent portfolios. Laura has worked for a variety of clients including pharmaceutical companies, SMEs and universities, with a particular focus on small molecule therapeutics.  Welcome Laura!

We have also been given an award for 2015 in the Corporate LiveWire – Global Awards!

Inventors: Your rights to your invention?

What rights does an inventor have to an invention described in a patent family once it has been assigned to a third party?  Some inventors are disappointed to find the answer is none.  

Once an inventor has assigned their rights to a patent family, these rights have been permanently transferred.  This means that the inventor is in exactly the same position as other third parties, and using the invention can even infringe patent rights, for example by using a patented method or selling a patented device.

Therefore, employees that develop an invention whilst working for an employer in the UK cannot move employment and simply continue to use any patented method they developed in their previous employment.

Similarly, once an invention has been assigned to a company from an outside inventor, such as a Consultant or University Collaborator, the inventor is not free to exploit the patented invention independently.

Should any patent proprietors have concerns that the inventors for their technology are potentially infringing their patent rights; a gentle reminder of the rights is all that is usually required.  However, should the situation be more complex, your usual Stratagem attorney would be happy to assist.

Protection for Digital Healthcare

The UK Patents Act 1977 was introduced before computers became widely available to the general public and indeed most business and academic users. Despite several amendments to the Act, certain provisions remain outdated and out of step with the digital age we now live in. Take the scenario where a research organisation uses algorithms to combine data from different sources in order to produce an output that might allow targeting of a tightly defined group of individuals for diagnosis, treatment or management in some way.  Each of these outputs is almost certainly going to fall within exclusions under the UK Patents Act 1977 as it is effectively just the presentation of information, and the algorithm is effectively just a program for a computer.

The situation under the European Patent Convention is no different to that in the UK as the UK Patents Act 1977 was largely drafted with the European Patent Convention 1973 in mind. The key test is  that “in order to be patentable, the subject-matter claimed must therefore have a technical character or, to be more precise, involve a technical teaching”. Unfortunately, using the examples above, manipulation of data or use of data for a particular purpose is not considered to involve either a technical problem or a technical solution .

The position in the US is unclear following the case of Mayo Collaborative Services v Prometheus Laboratories, Inc, in which the US Supreme Court held that a process patent for correlations between blood test results and patient health in determining an appropriate dosage of a specific medication for the patient is not patentable as the correlation is a law of nature. The decision was criticised as it is thought to have invalidated many biotech, pharmaceutical and medical device patents. This would seem to suggest that it will be very difficult to obtain patent protection for certain digital healthcare innovations in the US. However, computer software patents which do not rely on a law of nature are in many cases patentable in the US and this case was drafted some time ago.

The current recommendation is that if a technical feature/output can be envisaged as a result of the process, we should include this and as many specific features, numbers, ranges etc as all of this will help make a process claim patentable, however, patents are perhaps not the best medium for protection of digital healthcare innovations.

So how can an organization protect its valuable intellectual property in digital healthcare? The answer is less than satisfactory at the moment but a mixture of process patent claims, algorithms and software kept as trade secrets, database rights and trade marks should be the goal for now and Stratagem is actively working with industry leaders, the government and interested bodies to try to find a better solution - perhaps a new form of intellectual property will be born!