LES Seminar on Patenting Medical Devices

On Wednesday, the Israel Branch of the Licensing Executive Society, LES, held a seminar on patenting medical devices.

The event was held in RAD’s headquarters in Ramat HaChayal, which is a central location with easy parking. Nevertheless, having parked in the wrong place, through misinterpreting the instructions, I had trouble finding the hall and arrived late. An audience of nearly 50 professionals was present. It included a fair mix of in-house IP managers, sole practitioners and representatives up to senior partner level of the largest Israeli IP firms. 

The first speaker, Sandford T. Colb, spoke on the title “Medical Devices Patenting – Overview – Special US and Israeli Aspects”. I missed the beginning of the talk (due to problems finding the venue) but from what I did hear, his presentation, though well constructed and interested, could have been on patenting in the US, with an emphasis on patentable subject matter, and a discussion of section 101 of the US Code. Sandy Colb is a good lecturer and it is not often that one gets the opportunity to hear him. A patent attorney sitting next to me complained that he’d expected something on a higher level, and I think the criticism was fair. We were treated to an overview of the major cases over the past few years, but not enough emphasis on medical devices, which was the topic of discussion.

Colb’s talk was followed by a pair of European patent attorneys, Erik Krahbichler and Pär Hjalmarsson (one licensed and one on his way), from a Swedish firm going under the acronym KIPA. (In Hebrew, a Kipa is a skullcap, yarmulke or cuppel, and the acronym seemed rather more of an anacronym for a Swedish firm that was probably low on Jewish partners, certainly observant ones with traditional head coverings).

Erik Krahbichler and Pär Hjalmarsson’s presentation was much more focused on medical devices and with reference to published decisions of the Appeals Board and to their own prosecution of applications, they tried to show how minor changes to claim wording could overcome patentable subject matter rejections.

Taking the two talks together, it seems that whereas in the US, the starting position was that anything could be patented, and in Europe, the rules were rather narrower, in practice the gap has closed somewhat. It seems that medical diagnostics or treatments that are applications of a simple law of science, where a correlation between a measured amount and a result may be rejected in the US as being a law of nature. A general purpose machine or computer won’t necessarily be enough to convert this from a rule of nature to a machine. In Europe, surgical methods as well as therapeutic treatment methods are not patentable subject matter, but apparently an invention in this field may be rendered patentable by amending the claims to relate to a unit for implementing the method, converting the invention into a device, and even where there is no literal support for so-doing. It seems therefore, that not only has the practice converged, but in some regards, Europe is more lenient than the US. (Indeed, I have had statutory patent matter rejections raised in the US for some types of computer related inventions that have sailed through examination in Europe without problem). The European speakers made a strong case for filing patents in Europe in general, and in Germany in particular, emphasizing the size of the population and the size of the market, and the pro-patentee stance of Germany’s courts. I found myself hypothesizing whether a method or device related to ritual circumcision would be considered patentable subject matter in Germany. Wisely perhaps, the speakers decided to avoid this issue.

The final speaker, David Zigdon, the CEO of the Rad Biomed Accelerator, and presumably the host of the event, endeared himself to the patent attorneys present by emphasizing his policy to file patent applications for developments and to keep the outside counsel patent attorneys in the loop, regarding changes and developments. The fact that he kept his talk extremely brief was also appreciated by an audience that was getting restless. Particularly since the otherwise splendid facilities were poorly air-conditioned.

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