Over the years we have worked with many medical device companies; be that to raise capital or exit. A question that is always asked by potential investors and buyers is what IP protection do you have?
This is of course a thorny issue as the European Patent Convention (EPC) was drafted with the intention of prohibiting patent protection of surgical, therapeutic and diagnostic methods. Why? The reasoning behind this exclusion is that a medical or veterinary professional, faced with the task of administering potentially life-saving treatment to a patient or animal, should not be concerned with whether the treatment would infringe patent rights and therefore open him or her up to litigation
Here is a really useful article by IP specialists Venner Shipley which helps in our understanding of what is and is not possible, and importantly where the pitfalls lay. It is relevant to a deal we are looking at the moment, so I thought I would share it with our healthcare contacts. What is clear is that very careful drafting is needed to ensure that whatever protections are available are taken.
Getting this wrong could cost you £’millions. Get it right and the possibilities are far greater.
The application of Article 53(c) EPC to medical device claims can at times appear counter-intuitive, and care should be taken to ensure that a claim does not unintentionally fall within the scope of the exclusion.
