Intellectual Property Topics For Mobile-Device Healthcare And Medical Information Technology

Developers seeking to innovate using wireless terminals, information networks and devices, as well as users seeking to exploit new innovations, generate proprietary rights that may need to be perfected, and which might be asserted against others. The same developers may have occasion to defend against rights asserted by others in connection with intellectual property (IP).

Mobile-device healthcare (mHealth) and information technology (medical IT) operations might have grounds to make or be subject to, among other examples, claims of misappropriation of confidential information and know-how; infringement of patents by production, use or sale of products or services; copyright infringement; trademark infringement; or cybersquatting on domain names. It can be useful, offensively and defensively, to keep up to date on the shifting sands.

In the Changing World of IP

Developments over the last few years have changed some longstanding aspects of the law and, in particular, the U.S. patent laws.

The Supreme Court decision in KSR v. Teleflex widened the ability of patent examiners to reject claimed inventions as obvious over prior art. A claimed invention now can be considered within the scope of obviousness due to an assumed level of common sense in a person of ordinary skill in the art. Obviousness is larger now than the subject matter for which documented prior art provides teaching, suggestion or motivation.

In Bilski v. Kappos, the Supreme Court limited the extent to which software-based inventions are deemed potentially patentable subject matter. The patent statute authorizes patents on methods of manufacture, articles of manufacture and certain asexually reproduced plants. Software inventions can be deemed unpatentable if they are claimed as methods that can be practiced "in one's head." A patentable claim must define an apparatus or a method that alters a concrete object in the real world.

A number of statutory changes to the patent laws were staged in from 2012 to March 2013 by the Leahy-Smith "America Invents Act" (AIA). The AIA revised the U.S. patent laws so the first inventor to file a patent application now prevails over the first inventor to conceive an invention and then reduce it to practice, i.e., the first person to invent, as under previous practice. The AIA also eliminates the one-year novelty grace period over prior art except in the case of a patent applicant's own publication of an invention in the year preceding filing a patent application. The United States is now effectively an absolute novelty country (consistent with most of the world), wherein one's patent application must be filed before the invention becomes non-confidentially known to others. The AIA institutes new procedures by which patents can be attacked by other parties on grounds of prior art. The AIA makes it impossible for non-practicing entities (also known as patent trolls) to assert a patent against a long string of allegedly infringing parties by making joinder rules more stringent.

There are good and adverse aspects to such changes. If it is more challenging to obtain patents on dubious or marginally unobvious inventions, then there is less risk that it will be necessary to defend a dubious but very expensive lawsuit. However, reasonable people can differ on the merit of inventions.

Meanwhile, the field of mHealth and medical information technology is blooming with new technology and opportunities. Wireless devices such as cellphones and touchpads are combining with government-supported efforts to improve the availability of information over medical information networks, while presenting challenges to privacy under HIPAA and as a general matter.

Patent Application Procedures

Under the AIA, the first inventor to file a patent application on a given invention is...