In Black and White
Modern ophthalmology relies on novel ideas being explored and developed. In the race towards commercialization, let’s not forget to protect the intellectual property of the innovator.
At a Glance
- Innovations that create new commercial opportunities constitute intellectual property and need to be protected appropriately
- Patents can be used to protect novel, useful and non-obvious ideas, and are important to have in place before publication
- Legally-binding agreements are an essential part of creating new partnerships or joint ventures
A radiologist at Hennepin County Medical Center in Minneapolis, Minnesota, and the Head of the hospital’s innovation arm recently launched a software venture that coordinates rides for patients who struggle to find transportation to appointments. Thanks to a partnership with rideshare giant, Lyft, a pilot program produced a 20 percent reduction in no-shows. An orthopedic surgeon in Rockford, Illinois, invented a surgical undergarment to allow patients more privacy than traditional hospital gowns. Modicine PatientWear is now used in a number of hospitals across the United States. A Canadian cardiologist developed a software platform that allows ultrasound images to be shared in real time via smartphones and tablets. Philips has already integrated it into its portable ultrasound system. A British ophthalmologist made the mental leap from laser-inflicted injury to laser-assisted surgery – 50 million procedures have since been performed (read more).
These are just a few examples of the innovations that are happening in hospitals, clinics and other medical institutions around the world. These technological advancements all created new business – in some cases, huge amounts of business. They also created intellectual property (IP). The laws surrounding IP are complex, but a general understanding can go a long way to avoiding costly disputes, assigning property rights appropriately, and ensuring that relationships between medical professionals and their employers are not damaged. The following scenarios represent situations that often arise when innovation becomes rooted in the culture of an institution. They are also situations where consulting with an IP attorney can be extremely helpful.
When you have an idea that you are developing into something novel, useful and non-obvious.
Everyone has ideas, and no one owns an idea as such. Ideas are passed around, discussed and written about all the time. IP law provides a way to establish a property right in an idea or at least in the useful application of an idea. Patents are government-granted property rights that can be obtained by filing an application with United States Patent and Trademark Office (USPTO). The basic requirements for a patentable invention are that it be novel, useful and non-obvious. Novelty means that the invention is new, that is, not previously known. Usefulness or utility is nearly intuitive to most people and is a requirement generally easily met. Non-obviousness is a less clear and much more complex concept, but generally can be thought of as when a person having ordinary skill in the art to which the invention pertains would have been somewhat surprised at the invention.
Patent rights can be obtained only by filing a patent application with the USPTO or in patent offices in other countries. The jurisdiction of patent rights is limited to the country in which the patent application is granted. While any inventor can file their own patent application, patent law is complex and filled with pitfalls for the unwary. Accordingly, if you think you have a patentable invention you should consult with a registered patent attorney as soon as possible. Patent rights can be lost by public disclosure of an invention prior to the filing of a patent application, under certain circumstances.
When you are about to publish or present your latest findings or ideas, but suspect or wonder whether the content may contain something of business value.
Researchers and doctors can be so eager to share their discoveries that assessment of potential business value is often overlooked. As mentioned above, patent rights can be lost by public disclosure or publication of information. In addition, under current law, others may take your idea and run with it and, while they cannot patent your idea as it was not invented by them, they may be able to seek patent protection on further developments that build upon your idea, which can potentially limit your opportunities to use your own idea commercially. Consultation with a registered patent attorney prior to your publication or presentation can help preserve your IP rights.
When you may have said too much at a conference or meeting or to a colleague researching in the same field.
If you are already at the point of having published or presented your work publicly there may be ways to preserve at least some of your IP rights with prompt action. Patent law provides a “grace period” during which you can still seek patent protection if you have made a public disclosure. The grace period is for one year and the contours of the grace period are somewhat unclear because of amendments made to US patent law in 2013. Nonetheless, if you have spilled the beans, there may be ways to recover by filing a patent application as soon as possible.
When you plan to use an image, illustration, or writing in your publications or marketing materials that you don’t own.
It’s extremely easy to search for and download images online for use in presentations, to better illustrate innovations or to enhance marketing materials. However, using an image or other published material without proper authorization from the copyright holder can, potentially, cost you thousands or tens of thousands of dollars. Consultation with an IP lawyer can help you navigate the complexities of copyright law, saving you from the hassle and potential legal costs involved if you infringe the copyright of others. By the way, contrary to popular belief, whether you made any money from the use of a copyrighted image or a derivative work based on a copyrighted image is not especially relevant to your liability. You can still be held liable for copyright infringement even if you’ve not made any money from your use of copyrighted material.
When you are considering adding flair to your presentation by incorporating a music or video clip.
Just like text and online images, audio and video recordings are protected by copyright law. Making use of them in a presentation may create liability. In general, if you are not certain that an audio or video clip is licensed for use it is safer not to use it. There are often ways that you can make use of audio or video clips either by paying a licensing fee, subscribing to a paid service, or by making use of materials that are in the public domain. An IP lawyer can assist you here and help set up internal policies to avoid copyright infringement by other employees.
When you are about to get involved in a joint venture or with a corporate partner.
Joint ventures and cooperative agreements with corporate partners can rapidly become very complicated and involve one or more legally binding agreements. Consultation with an IP lawyer can help you protect your rights and understand what you are trading for the benefits you receive. It is critical to outline and document who will own the various IP assets that come out of the joint venture or cooperative agreement to avoid future disputes. Due diligence in advance can assist in establishing a clear understanding as to who will own what. Further, it can be helpful to research what relevant prior art is owned by others to determine whether you will be free to practice the inventions that arise out of a joint venture.
When you are considering the use of public domain software as a basis for a product or service.
J Copyleft and GNU are alternatives to copyright that are sometimes used by software developers to produce and promote software they wish to make available in the public domain. However, that does not mean that you can use the software in any way you want. These approaches place limitations on what you can do with the software, how you can modify it and what attribution is required in anything that you produce by using it.
When you want to name your breakthrough product or service.
Trademarks identify the source of a product or service. Trademarks grant certain rights to the trademark holder. One of those rights allows the trademark holder to prevent others from using a confusingly similar trademark for a similar product or service. Before you commit significant resources to establishing a name for a product or service, a trademark search should be conducted to provide assurance that the name you wish to use is available, or to help you find out early on that it is not, before you make a significant investment in branding, packaging, advertising, and other marketing collateral.
When you want to know who owns the copyright to materials such as text, photographs, video, and audio recordings that you have produced.
Generally, the ownership of copyrighted materials automatically vests in the author. However, this can be changed by written agreements such as the agreement you may have made with a research institution, a university or your employer. Employment agreements, research agreements, fellowships, internships, and residencies may all involve agreements that proactively change the ownership of IP or transfer your rights to someone else. You may not be able to change these agreements, but understanding what they are and how they affect you lets you know where you stand as to the ownership of the IP you develop.
Intellectual property is complex and can be high-stakes. From helping a hospital resident/researcher understand and resolve IP ownership issues with an employer to taking breach of contract issues to Federal Court, my colleagues and I have seen how contentious these issues can become. The lesson we continually pass on to clients is that proactive planning is always easier and less expensive than resolving issues after a dispute arises.
Paul Onderick is a patent attorney and licensed optometrist whose practice focuses on assisting clients in seeking patent protection and developing and managing patent portfolios.