Medical device patents: What to know

Start with prior art

It seems that innovation in the medical device field generally enjoys a greater probability of making it to the marketplace. When a particular area of technology has a greater chance of making money, you can expect more patent filings. So expect the prior art of medical device patents to be crowded.

So what are we looking for in the prior art? It depends on whether we are searching for purposes of determining patentability or infringement, or both. A patentability search (novelty search) will cost less and provide guidance on whether or not your medical device might be patentable. A Freedom-To-Operate (FTO) search will cost substantially more and assess the risks of patent infringement.

Claiming medical devices: apparatus vs. method claims

Let’s assume a patentability search conducted for your medical device invention did not find any close prior art that would discourage from you applying. So you are now ready to file a utility nonprovisional patent application on your medical device concept. Perhaps you have filed one or more provisional applications which you are now ready to convert into a nonprovisional application.

Patent practitioners each have their own way of drafting a patent application. My preference is start with drafting the claims before writing the detailed description. Even before drafting claims, I might prepare a claim outline that details core features followed by subsets of each core feature, along with any secondary features. A good claim outline provides a helpful structural framework for writing the actual claims. The claim outline is the skeleton and drafting claims based on the outline is like putting meat on the bones.

Medical devices lend themselves to both apparatus (structure) and method claims. While it may make sense to pursue both types of claims, you should confer with your patent professional on whether you want to include both apparatus and method claims in the same application, which can invite a Restriction Requirement. You can file multiple patent applications concurrently, with each application containing the same omnibus specification but different claims.

Responding to Office Actions citing medical device prior art

So we know the prior art is replete with medical device patents, and chances are that many of those prior art references will be cited in an Office Action rejecting your application. When it comes to medical device patent applications, it would be wise to hope for the best, but expect the worst. In other words, hope for an early allowance, but expect multiple Office Actions rejections.

How to reduce Office Actions

Medical device patent applicants may be encouraged to know that some measures can be taken to reduce the number of Office Actions and the duration of the application process. As mentioned above, a patentability search conducted prior to filing may avoid overly broad claims in the initial filing. By narrowing the scope of the original claims to gain a more realistic chance of acceptance, you also force the patent examiner to find closer prior art.

While the first Office Action is almost inevitable, subsequent Office Actions may be avoided or minimized by conducting an Examiner Interview to discuss the cited prior art and proposed claim amendments. It helps when your patent team includes a former USPTO patent examiner who can speak their language and gain rapport.

Strategies for broader medical device patents

When it comes to getting medical device patent applications allowed, our firm adheres to a simple principle of taking what we can get. We generally advise our clients to take allowable subject matter that is meaningful, which means that the allowed claims are not so narrow as to be worthless in the marketplace. Assuming the allowable claims have some value, then we often recommend taking the allowable claims now and deferring any other claim amendments or arguments.

The applicant can file a continuation application to continue pursuing broader or different claims than those allowed in the parent application. That way, your medical device company gets a patent granted sooner while still reserving the right to pursue additional claims against competitors.

Filing continuations is a fairly common practice with medical device patents. Competitors are constantly checking each other’s IP and exploring any potential design-around products.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
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2023-02-20
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2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
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2022-09-09
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2022-06-30
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2022-03-05
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