Patents in Telehealth & Health IT: Viable or Bust?

The good times of applying for and obtaining business patents, including computer software and business method patents are behind us.  Over the past decade, the cohort of court rulings collectively known as “patent subject matter eligibility” rules have significantly shrunk filings and approvals of patent applications and caused the premature demise of many previously enforceable bursiness patents.

Advances in telehealth and health IT come at the heels of this dramatic shift in patent rules.  The shift in patent regulations proves important because inventive concepts in the telehealth/health IT industry mainly encompass business or computer software methods.  For this reason, in protecting their intellectual property rights, telehealth and health IT companies should cautiously dip into the patent pool.

Below, we list a few considerations every telehealth or health IT company should evaluate before filing a patent application for business or computer software methods.

First, ask whether broad and meaningful patent scope can be obtained.  Today, many broadly drafted software method claims which employ algorithms to achieve results in a software program may be considered patent ineligible for merely claiming unpatentable natural laws.  This means that by the time a patent application graduates from USPTO examination, the resulting patent claims may not provide a meaningful scope of patent rights protection.  Claims lacking a meaningful or broad scope are difficult to enforce or outright unenforceable.  To go through the expensive patent prosecution process to obtain a weak patent scope can be a waste of valuable resources.

USPTO has recently loosened its policies with respect to how claims to natural laws are examined.  However, a change in the USPTO examining policies should not be mistaken for a change in the governing laws.  The underlying court generated laws related to patent subject matter eligibility have not really changed.  Therefore, even if the patent claims graduate from the USTPO examination process with a sufficiently broad scope, it does not mean that the claims can survive a future validity challenge  in the courts.  Although issued patents enjoy a presumption of validity, courts may render the patent claims invalid by reevaluating the same claims in view of patent subject matter eligibility rules.  Therefore, prior to filing a patent application companies should consider how the patent subject matter eligibility rules would apply to their desired broad claim scope.

Second, determine whether the claimed invention will be enforceable.  Even if the USPTO issued a strong patent right and courts agreed with it, companies should consider whether they can readily identify infringers in the marketplace.  For example, if the company is unable to identify the competitors employing its patented methods, it cannot bring enforcement actions against infringing competitors.

Finally, consider pros and cons of publicly disclosing the company’s proprietary methods. The US patent system is a barter system in that the US government allows a patent holder to prevent others from practicing its patented invention for a period of time in return for disclosing the patented invention to the public.  Accordingly, patent applications and issued patents are public documents.  Non-provisional patent applications are published in their entirety several months after filing of the application.  If not careful, companies may both disclose their intellectual property to the public and not be able to enforce their patent rights in the future.

In sum, before filing a patent application, determine whether patent protection is the proper method of protecting the company’s intellectual property rights by at least considering the following questions:

  • Is the invention patent eligible (i.e., what are the chances for obtaining broad claims that would survive the USPTO examination and future litigation)?;
  • How easy will it be to identify and enforce the obtained patent rights against future infringers?; and,
  • Are there more secure, relevant and cost-effective methods of securing the intellectual property rights?

Other protection methods include protecting the company’s intellectual property rights under the trade secret laws.  Of course, trade secret protection has its own weaknesses and vulnerabilities, which should be considered and discussed with a competent IP attorney during IP protection strategy and planning sessions.