FLYNN IP LAW has a focus on medical devices and the related area of surgical methods & tools. My background in biomedical engineering augmented by a second major in mechanical engineering provide a strong foundation for this work.

Medical devices include not only medical implants, dental implants, and ligating clips that are placed into the body but also therapeutic devices and drug delivery equipment used externally. Medical devices also includes the equipment used in the operating room, to obtain advanced imaging or measurements, and simulation devices used to train medical providers.

To work well in this space, a patent attorney needs to have one foot in the medical world and one foot in the engineering world. The patent examiners will attempt to use all sorts of non-medical examples of prior art to attempt to deny the grant of the patent claims. Creative claiming strategy should be crafted before drafting the application—including claiming strategies that seem more oriented to engineering than the medical field.

Surgical tools used in a particular surgical procedure are sometimes the primary product sold by a client. Frequently the patent protection for these tools can be augmented by medical method patents. Medical methods are not patentable in many patent systems around the world but are patentable in the United States. Doctors and hospitals are immune from patent litigation damages but competitors that provide the doctors and hospital with tools and training to infringe a medical method patent can be held accountable for inducing or contributing to the infringement of the patented methods. Medical method patents can thus help discourage competitors from providing a set of tools, implants, and training to provide a total solution to doctors.

Many surgical tools are reusable and some are provided without charge to hospitals in order to encourage sales of the implantable or disposable items. While surgical tools may not directly drive revenue, having patents on surgical tools may provide another impediment to a competitor to providing a total package that competes with your packaged solution.

The Internet of Things (IoT) broadly includes physical devices that communicate through a network to another physical device. Thus, sensor readings from one device may be shared with other devices without the intervention of a human. This broad definition encompasses many sets of connected devices that shared information and worked collaboratively before the term Internet of Things was coined. While the precise boundaries of IoT may still be subject to debate, it is clear that this is an interdisciplinary area. The Internet of Things is a combination of sensor technology, communication technology, and control systems. Frequently, there will be new combinations of technology where each piece is off-the-shelf in order to quickly get to market. The battle with the patent examiner may hinge on effectively articulating that the sum of the parts produces synergy so that the sum of 1 and 1 is something more than 2 as the combination allows special advantages as the real time sharing of information across devices allows coordination or features that was previously unimaginable.

There is a saying that one cannot make an omelet without cracking some eggs. It is also impossible to produce the amount of electric power consumed around the world without incurring some negative externalities. Between college and law school, I worked for many years for Duke Power (now Duke Energy) to create electricity safely while minimizing the consumption of coal. It was at Duke Power that I obtained my Professional Engineer icense in mechanical engineering. I am conversant in the language of power generation and love working to protect companies generating electricity in ways that reduce the negative externalities relative to traditional forms of generation.

Consumer Goods is a broad category and covers products using a wide range of technologies. Some consumer goods use previously unknown technology and the patent focus is on the new technology. Other consumer goods address a longstanding pain point but do so with a combination of previously known components. While the task to understand and explain the technology for some consumer goods is sometimes easier than other types of inventions, the patent attorney may need to work extra hard to present the simpler technology in a way that makes it possible to make it through the patent process.

The fallback position may be method claims on the way that the consumer good is assembled, tuned, or used. In order to have method claims as a fallback position, one needs to be disciplined on the front-end and include descriptions of the steps used to assemble, tune, or use the device.

Another fallback position may be to seek design patent protection. While utility patent protection is usually broader and thus more desirable, there are consumer products where it is the way that the product looks that is the key point of distinction with the competitors.

Much of the advance of technology over the years has come from the ability to measure things of interest and then act upon that information. Innovative uses of instruments to glean information are providing new tools for use in hospitals, homes, industrial plants, and even in unmanned aerial vehicles (UAVs) (sometimes called drones).

My initial training in engineering was in biomedical engineering where one strove to measure the previously unmeasurable and in mechanical engineering which included an emphasis in controlling the various elements in an engineering system. Subsequent education within Industrial & Systems engineering added focus on computer modeling and on process control. Drawing upon these three areas of study helps develop patent applications that capture the big picture concept rather than staying down in the weeds with the nitty gritty details. I want the patent examiner to feel somewhat uncomfortable allowing claims as broad as I am seeking.

Industrial Processes covers a range of technologies. Sometimes the new process allows a previously unknown feature to be provided in a particular product. Frequently the process delivers a product that is similar to prior products but the improved process reduces costs of production such as reduction of processing time, labor, energy use, or waste. Sometimes the change of process increases quality or decreases the variability of the output.

Intentions for industrial processes may not grab the headlines as the improvements are not always understood or even known to the consumer. However, these changes to industrial processes often have a huge impact on the bottom line for a company. While the fictional Willie Wonka may have had a closed factory with a loyal workforce that never left to work for a competitor, modern companies use a collection of sub-contractors and have employees that move from company to company. Corporate customers seek to understand their supply chains and sometimes try to find second source vendors by providing them with requirements to duplicate innovative processes used by existing vendors. Protecting process improvements may be essential to lock in a competitive edge and thus lock in market share or margin. Strategic use of non-publication requests can allow United States patent applications to be a backstop in case a competitor adopts your trade secret (whether by independent convergent evolution or through “help” from one of your ex-employees, vendors, or clients).

Software is a broad topic and there is much confusion about what can and cannot be patented.

FLYNN IP LAW seeks patent protection for clients including protection of computer software. However, given recent decisions from the United States Supreme Court on their interpretation of the scope of the term “inventor” in the Constitution, there are many types of software inventions that are no longer welcome at the United States Patent & Trademark Office.

Still welcome are patents on the software that bring any machine to life. Thus patents on software to make an ultrasound machine, dishwasher, or network server provide new features or work more efficiently are fair game for seeking patent protection. Thus, the interactions between devices through the Internet of Things (IoT) may be described by the software resident on the devices. Likewise patent applications that address the functioning of a general purpose computer to improve performance of that computer are still patentable. Ideally, the patent application and the claims that are obtained are focused on the enduring concepts and not the specific implementation in a particular software stack as the implementation will evolve as the software tools evolve.

What is now difficult to patent is a broad range of things that the Supreme Court considers “abstract” concepts. Generally, if the patent application uses conventional tools on a general purpose computer but addresses a novel sequence of steps to allow for a commercial transaction or provide a set of data for a human to make a final decision, there will be resistance. Automation of a sequence of steps that could be done by a human with pencil and paper is apt to meet resistance. Collecting in one place a set of information or tools without adding a new tool or synergistic benefit from the collaboration of tools is unlikely to be sufficient. The aversion to certain classes of software inventions by the Supreme Court is a relatively new phenomena and is poorly defined.

The guidance provided to United States Patent Examiners to help them decide if a patent application falls within the prohibited “abstract” categories suggested in the Supreme Court cases including Bilski and Alice can be found at http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.