Patents

Using patents to protect software and AI in healthcare

Software and specifically, artificial intelligence, is becoming more prominent in healthcare and surgical procedures.

Software, and in particular artificial intelligence (AI), is taking an ever-increasing role in healthcare, from personalised treatment plans through to more accurate and automated completion of surgical procedures.

While healthcare companies traditionally seek patent protection for the drugs or medical devices that they have developed, software and AI-based patents should also be targeted in patent portfolios to ensure investment in the development of software and AI is commercially protected.

Why patent software?

In general, patents provide a monopoly to their owner over a product or process and as such can provide vital protection to the technical aspects of the products or services a business provides.  So where a business has developed software or AI to perform a technical function, a patent directed to this can be very valuable.

For technology-focussed healthcare businesses where the implementation of software and AI is of greater importance, software-based patents are likely to provide even greater value and can help to protect new and unique ways in which healthcare is delivered.

A mixed approach combining a more traditional device or method-based patent with software elements can also be very effective.  This can be most appropriate where the physical characteristics of a device work in synergy with software/AI to improve performance.

Finally, as many health-tech businesses are new and/or growing, a strong patent portfolio covering the core software offering they provide can be very useful when seeking new investment.

Is software patentable?

In the UK and before the European Patent Office, patents for computer software per se are not allowed.   Nevertheless, as this exclusion is applied narrowly patent protection for software-based technical innovations are still regularly granted.

To avoid objections based on the invention relating solely to computer software, it is necessary to demonstrate improved technical performance in a product or process due to the software/AI claimed in the patent – for example improved efficiency in a certain product or process due to the use of software/AI.

If operating in the healthcare industry it is also important to ensure that the patent is not directed to a method of treatment or diagnosis – which are also excluded.  This exclusion can generally be avoided while still covering important commercial aspects of the invention by selecting the correct wording in the patent claims.

How to maximise patent protection for software

  1. Engage a qualified patent attorney early

This will help identify potentially patentable aspects of the software and guide commercial decisions on how to proceed.  In addition, they will help to ensure that the claims drafted accurately cover the invention and reduce the likelihood that the patent office raises objections that the invention relates to software per se or methods of treatment and diagnosis.

  1. Use external contractors with care

When using external contractors to help with the implementation or development of software information shared with them should be done so under non-disclosure or confidentiality agreements.  This is because any public disclosure of an invention before it is filed as a patent application could render the patent application invalid.

In addition, a contractual agreement should be in place to ensure the external contractors do not retain rights associated with an invention arising from the contracted work.  Simply paying for a contractor to do a piece of work will not automatically mean you are entitled to any invention they develop during this work.

A qualified patent attorney can review a proposed contract to check it has the correct wording to ensure confidentiality and that any inventions arising from the work will be transferred to you.

  1. Don’t sit on your hands – file a patent application

Once you have a new idea, it may be only a matter of time before someone else comes up with the something similar and shares it somewhere online or files a patent application for it.  This is especially true of the software/AI space which is a hot-bed of innovation.

Any disclosure in the public domain before you have a patent application on file could reduce the scope of protection you can obtain or make it impossible to obtain any protection.  As such, it is best to file a patent application earlier rather than later.

In addition, once the application is on file, you are then free to advertise and launch the product/service to generate revenue.

Can software be protected without a patent?

In general, a patent will provide the best protection available as it is a monopoly right that prevents third parties from implementing the claimed invention.  As software is generally written down in programming language, the actual code itself will benefit from copyright protection.  This can be used to prevent a third party from copying the code, however, it doesn’t stop third parties from independently writing different code to implement the features as your software.  This contrasts with a patent where protection applies to the technical features of the claimed invention even if independently conceived or developed.

A further drawback is that to enforce copyright it is necessary to prove the third party had copied the code, which can be difficult and costly.  As such, the commercial benefit of copyright in the software code is likely to be significantly lower than a patent.

Conclusion

As software and AI becomes more and more important in the delivery of healthcare, healthcare companies should actively seek protection for software to complement their existing intellectual property portfolios.  The value of this investment should also increase over time as more healthcare providers turn to tech and AI-based solutions for providing healthcare services.

If you would like to discuss whether you should seek patent protection, please get in touch to speak to one of our attorneys.