An overview of ways to protect your IP
By Avery Witting, BSE, Patrick Hangge, MD, Hassan Albadawi, MD, and Rahmi Oklu, MD, PhD Summer 2018
Minimally invasive interventions are rapidly becoming the mainstay of patient care and IR is uniquely poised at the forefront of developing new technologies to improve current interventions. As novel devices or alternative interventions are discovered in clinical practice or the laboratory, these ideas must be legally preserved to ensure the rights of the inventor and to guarantee proper transition to clinical practice.
An understanding of intellectual property (IP) can help to ensure protection and licensing of new ideas. With the protections guaranteed from the United States Patent and Trademark Office (USPTO), IP can be a powerful tool for health care professionals, including IRs.
The four types of IP that the USPTO regulates are patents, trademarks, copyrights and trade secrets. Each type of IP, when used in conjunction with the others, forms a broad legal umbrella in which ideas are protected and used to shape and control the medical industry.
Clinicians interested furthering patient care through innovation should make sure they understand how to use IP to their best advantage. This article provides an overview on the types of IP and considerations while filing for IP.
Someone filing a patent application can gain the ability to prevent others from making, using, selling and importing the claimed invention. The filing protects against independent discovery of another party and prevents others from infringing on the claims established.1
If infringement occurs, reasonable royalties can be extracted either through private settlements or litigation. For the clinician inventor, this ensures all aspects of the idea covered under the patent claims are protected. Once filed, patent claims become available to the public.
Two types of patents exist: design and utility patents. The utility patent defines how an idea works and is used, while the design patent describes how the idea looks. Both require a new and nonobvious use that has not been established before. Utility patents maintain protection for 20 years from the date of filing, while design patents are protected for 14 years.1
Devices, techniques, and materials are the most common ideas for the pursuit of patents. If the clinician’s idea is not appropriate for a patent filing, then a trademark, copyright or trade secret may be an alternative for seeking governmental protection.
A trademark can help the clinician protect any word, logo, slogan, name, symbol, shape, color and sound that identifies a source of goods or services from one or any other source in the public domain.1
Having a more distinct and recognizable idea to be trademarked makes it easier to disrupt the marketplace and establish a product. Trademarks indicate that the good is of a certain quality, signal that the good is controlled by a single source, identify the good and promote the sale of the good.
For example, branding a certain type of catheter with a unique name can distinguish it from other products in the field. By establishing a trademark for a product, market share can be gained and clinicians can recognize distinct products.
Copyright protects the expression and distribution of the idea seeking protection. It includes literary works, pictorial, graphic, sculptural, musical, dramatic, audiovisual, software and architectural works related to the source.1 Protection is granted on the basis of the concrete representations of the idea and not abstract interpretations.
One example is a journal publication. An article published in a journal cannot be used without permission because it is protected by copyright; the text is protected from rampant distribution.
Trade secrets may be the least applicable form of IP to the IR clinician, as it carries ethical issues between patient care and business interests. Various techniques, methods, processes, or formulations are covered under this form of IP. Trade secrets act to keep information within the body of ownership.1
In today’s medical field, trade secrets are used to give an advantage to the owner, while hindering competition. There is no expiration for the length of protection granted under a trade secret.
Filing for intellectual property
When filing for IP, timing is critical. A disclosure (all documentation related to the idea) must be filed with the department in charge of IP at the inventor’s place of work. We highly recommend that all ideas have an illustrated expression in conjunction with a written explanation of the idea, which bolsters the disclosure and increases the likelihood that filings will be made.
The major entity that deals with invention disclosures and novel discoveries should be contacted to establish a line of communication with the USPTO. Disclosures will be examined against prior art (any previous documented public disclosures in any form of media) to fully explore the plausibility of obtaining IP. If determined that prior art exists, the idea will require further innovation for another filing opportunity.
Patents are unique in that a provisional patent can be filed in place of a utility or design patent. Provisional patent filings act as a yearlong placeholder for further innovation. During the year following the date of filing, no one entity can make a similar claim to the idea. One year after the initial filing date for the provisional patent application, the idea will require a utility or design patent application filing, or the IP loses its new and nonobvious status, leading to the loss of ability to obtain a patent application.
As leaders in the field of rapidly evolving minimally invasive technology, IR clinician inventors are particularly suited to contribute to ideas and novel therapeutic discoveries. Understanding the fundamentals of IP can help IR lead the way in future innovation.
Further information regarding intellectual property can be found at the USPTO’s website, uspto.gov.
This article was based on a poster presented at the SIR 2018 Annual Scientific Meeting.
1. USPTO Office of Public Affairs. “United States Patent and Trademark Office.” United States Patent and Trademark Office: An Agency of the Department of Commerce. uspto.gov.