close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Patent Strategies in the Digital Health Care Space

You are founding a startup with a great new idea to revolutionize a key health care segment, but you know the digital health space is packed with potential competitors. Your technology and first-mover advantage create barriers to entry for copycat startups and vertical integration by large entrenched players, but once your good ideas go public your proprietary edge could be quickly eroded. How can you best protect your business and the innovative approaches you are bringing to the market?

Digital health – the broad term encompassing fields at the intersection between healthcare and technology, including mHealth, wearables and more – is a hot area for startup investments. And digital health funding is growing rapidly. This area has great potential for startups, but competition can be fierce. Success requires a sophisticated strategy to sustain competitive advantages and preserve the value of intellectual property for attracting future stakeholders.

The Value of Patents

When developing technology that is novel in digital health today, but copyable by competitors tomorrow, patent protection is essential. The patent process helps clarify what is distinguishing about new ideas. Entrepreneurs are often surprised about what is (and is not) innovative enough to win patent protection, so defining key areas of intellectual property is paramount. While an overall system may not be new, oftentimes patenting small but crucial improvements enable innovators to openly pitch ideas when building companies.

Digital health companies use patents for many reasons. One reason is to protect inventions from copycats. Patent protection can also be essential during fundraising to show a proprietary edge. This is especially true for digital health inventions with a hardware component that may be slow to develop but easy to copy once available for close scrutiny. Further, patents provide defensive value. Companies may not wish to use patents to sue competitors, but competitors can still assert their own patents, especially in digital health where there are companies with overlapping ideas and large players entering the space. If a competitor sues a company for patent infringement, owning patents enables the company to countersue and potentially speed the path to settlement.

Timing Patents

It’s important to protect intellectual property as early as possible in the startup process – even before incorporation and fundraising if possible. Digital health is a crowded space with many overlapping ideas, and it is becoming increasingly dense as companies specialize and try to establish ownership of their segments of the digital health market. With first-to-file rules now in force in the U.S., companies must carve out their niches by filing patents documenting their innovations before competitors do. Ideas not patented early on can also become unpatentable. Disclosing ideas to people who are not legally bound to confidentiality (e.g., by a nondisclosure agreement) can be deemed a “public disclosure” that can make it impossible to patent inventions outside the U.S, and that can start a one-year clock ticking for filing in the U.S. Filing in the U.S. before public disclosure, however, keeps open the option to later file in other countries. Moreover, before disclosing inventions to competitors, even those that have signed NDAs, companies should consider filing a patent application to avoid the risk that the competitor might independently file a patent on an idea. It can be difficult and expensive to prove that an idea has been stolen, so avoid even the possibility.

A Patent Strategy

To identify what to patent, companies should think through advantages over close competitors. If designing a new wearable, what is it that makes a design better than what is on the market today? Is it tracking new data or logging data with more precision? Is it better integrated with mobile phones or other technologies? An especially nice form factor? If designing a new piece of software to improve health care for patients/health care providers/hospitals/insurance companies, what is it that improves their experience over currently available options? Entrepreneurs should then narrow their thinking down to innovations that would bring value to the company if they could prevent competitors from copying them. Innovative hardware, software and their combinations are all potentially patentable. If an idea is something that seemingly has been done before, try to identify what else the company might be doing to improve it or customize it. Is the company providing a better health care experience or better access to health care in a new way? What improvements are added? Is there a better user interface or new features? The inventions protected can be incremental improvements, but protection of enough small improvements can still build a fairly effective fence that is tough for competitors to overcome.

Consider detectability. If an invention sits entirely at the backend and it would be difficult to tell if someone copied it, this may not be the best invention to patent since it will be tough to detect who is infringing the patent. Also consider trade secrets versus patents. If an invention could not be readily determined by someone with access to a product and is unlikely to be independently invented by competitors, it may be worth keeping as a trade secret. Once a list of inventions to patent is made, prioritize that list. Which ideas would be most valuable if protected? What is the timeline for using each of these ideas in products? If companies have not yet thought through how to implement certain ideas, those may not be ready for patenting and so may be prioritized lower on the list. To implement a patent strategy, startups may start by filing provisional applications on highest priority ideas. This is the right strategy if saving costs is important and if an invention is still developing or changing quickly. Later, as its becomes more developed, the company have the resources and product stability to create value by building a larger, strategic international portfolio of patents, one that is designed to build on the considerations raised above and to meet its strategic aims.

Takeaway

Because digital health is a crowded patent space, carving out your niche and building a fence around it is especially important. It is worth thinking carefully through competitive advantages early on and setting up a well thought out plan for building up a strong patent portfolio.



This article originally appeared in the Daily Journal on July 10, 2015.

​​​​​