Telehealth patents: protecting geographically distributed systems

“Telehealth” refers to the use of digital communication technologies to access and provide remote healthcare services.

It encompasses, for example, virtual doctor consultations and treatments, including mental health therapies, remote patient monitoring, remote rehabilitation services, and digital health platforms, e.g., for symptom tracking and medication assistance. Telehealth allows patients to receive medical care and consultations from healthcare professionals without the need for in-person visits, making healthcare more accessible, convenient, and efficient.

Telehealth inventions often involve geographically distributed systems in which health data may be collected from user devices in one country and then transferred to a server in another country for processing and analysis.

However, asserting a patent right to a telehealth invention for such a geographically distributed system against a potential infringer can cause difficulties. Infringement requires all features of the patent’s independent claims to be present. However, a patent generally only offers protection within a single country or territory. So, in principle, all the claimed features have to be present in that country. Even a European patent is only enforced on a country-by-country basis (or for all Unitary Patent countries at once via the Unified Patent Court, as discussed in more detail below). For example, if your UK patent has claims to a system involving actions at both a user device and a server, will it cover a competitor doing the same thing if their server isn’t in the UK, i.e., when the infringement is divided over multiple countries?

The UK approach

Such a divided infringement situation faced the judge in the case of Menashe v William Hill ([2002] EWCA Civ 1702). Menashe’s patent related to a gaming system involving a terminal computer that acted as a player station and was connected to a remote host computer. Menashe alleged that their patent was infringed by William Hill. However, William Hill argued that their system did not infringe the patent in the UK because their host computer was not located in the UK.

The judge decided that the crucial factor was determining who used the gaming system and where they used it. Since the user was the player of the game, and since both the player and the terminal computer were in the UK, the judge ruled that the gaming system was being used in the UK. The location of the host computer was not relevant. Essentially, the user was using the host computer in the UK, regardless of where the host computer was physically located.

This approach was confirmed in Premaitha v Illumina ([2017] EWHC 2930 (Pat)), where the location of a computer performing an intermediate step of data analysis was considered to be irrelevant. The judge noted that it would otherwise be far too easy to avoid infringement of this type of invention by simply offshoring data processing.

Careful Patent Drafting

In the UK at least, patents can sometimes cover geographically distributed systems even if parts of the system are located elsewhere. Nevertheless, it is important to ensure the claims of the patent application are drafted carefully.

Ideally, a patent for a geographically distributed system would have separate claims for the client device and the server and would be obtained in as many countries as possible to ensure patent protection where the invention may be carried out. In practice, this is rarely practical due to financial and administrative overheads.

Further, if the novel and inventive part occurs only on one side of the distributed system, then obtaining a granted claim for the other side may be difficult. For example, if there is nothing new about the way the user device collects the data and outputs the results, and the inventive part is the processing that occurs at the server, then claims for the user device are unlikely to be found patentable.

A competitor could then avoid infringement by locating the server in any country where the patentee does not have a granted patent protecting the server part of the system.

In case one side of the system would likely not be found to be patentable, it would be wise to include a system claim covering both the client device and the server. This opens up the possibility of arguing that the claimed system is used (and therefore infringed) wherever the client device is located.

A new option in Europe: the UPC

Protecting geographically distributed systems in the EU has recently been made easier by the launch of the Unitary Patent and Unified Patent Court (UPC). European patents can now be converted to unitary patents after the grant, and infringement proceedings for both unitary patents and European patents (unless opted-out) can be brought before the UPC.

An advantage of bringing an infringement action at the UPC is that it essentially treats the territories of the ratified member states as a single combined territory for infringement.

So, if you have a patent for a geographically distributed system, it doesn’t matter if the client device is in one UPC country and the server is in another. For the purposes of infringement at the UPC, the entire system would be treated as being located in a single territory.

This single territory currently includes 17 EU member states (including France and Germany) but does not include a number of countries that have not yet ratified the UPC Agreement (such as Ireland and Greece) and does not include countries that have decided not to participate in the UPC (such as Spain, Poland, and the UK).

Conclusion

Patent-protecting geographically distributed systems, including innovations in telehealth, can be complex because of the territorial nature of patents. How can you efficiently and effectively obtain protection for a telehealth system spread out over multiple countries?

However, the situation is not as bad as it might at first appear, and there are strategies available to provide valuable protection for distributed telehealth systems. A patent attorney will be able to advise you on strategically filing your patent applications to maximise the protection of your distributed computing system.

This article was prepared by Senior Patent Attorney Mark Sellick for HealthTech World. Read the original article here.