Medical Technology

Helping navigate the ever-changing world of medtech and how it relates to IP.

Bereskin & Parr’s Medtech group helps companies developing medtech products to protect, license and enforce their IP. This includes lawyers and patent agents with science and engineering backgrounds.

With the increasing aging population across the world, the demand for medtech is increasing. The United Nations (UN) projects a rise in the elderly population from 8.3% in 2015 to 17.8% in 2060¹.  This will likely lead to growth of the medtech industry, which in 2020, was already estimated to be a US$7.5 billion market².

Protecting Your Investment in Medtech

Our professionals have industry experience particularly suited to handling a wide variety of medical technologies including:

• Biotechnology
• Analytics and AI
• Microelectronics
• Medical equipment, instruments, and supplies
• Diagnostic imaging
• Assistive devices
• Orthopedics and prosthetics
• Dental products

Legal issues associated with the medtech sector are complex and will continually evolve. As such, companies who are building and selling products and services in this sector must create a comprehensive and proactive strategy for IP protection and risk evaluation. Such a strategy should include measures to secure patent, trade secret, copyright, and design protection where available as well as measures to monitor third-party IP rights and assess associated risks. They must also consider data privacy and regulatory issues.

Patents

Patents protect the functionality of inventions that are new, non-obvious, useful and that consist of patent eligible subject matter. Patents can be used strategically to achieve or maintain a company’s competitive position in the marketplace, increase share value and/or secure investment depending on business needs. For medical technologies with a computing component, patentable subject matter in the United States, Canada and elsewhere includes innovations that are “sufficiently technological”, that is, necessarily rooted in computer technology and seen to provide a “technical solution” to a “technical problem” in the realm of computing.

Trade Secrets

Trade secrets can provide another avenue of protection for various aspects of medical technologies. Trade secrets include any valuable business information that may be used to hold a competitive advantage as long as secrecy is maintained. Unlike patents, no application or registration is required to obtain trade secret protection, however an innovator must take reasonable steps to establish and maintain the secrecy of the information. In turn, the covered information may be protected for an unlimited period of time as long as it is kept secret and has commercial value.

Trade secret law may be particularly applicable to various aspects of medtech including formulae, compilations of information, programs, commercial methods, techniques, processes, designs, patterns, know how, data and codes which are not generally known or reasonably ascertainable by others.

Copyright

Copyright may attach to those aspects of medtech that are recognized as “literary works” within the meaning of the Canadian Copyright Act and corresponding legislation elsewhere. Copyright arises automatically when an original work is created. For medtech that include a software component, copyright protects original expressions embodied in software including computer source code, visual user interface elements, API structure, user documentation, product guides and marketing material. Copyright, however, does not extend to the functional aspects of software.

Industrial Designs

Industrial designs protect novel and non-functional, aesthetic aspects of products. Industrial design protection is evolving in Canada, the United States and elsewhere to protect the appearance of medtech products more comprehensively, from the novel shape of physical devices to the unique and dynamic visual effects of computer-generated animated graphical user interfaces and designs.

Trademarks

Branding is another important factor for the market success of new medtech products and services. Our trademark specialists can provide opinions on the availability and registrability of marks in Canada, the United States and elsewhere. They can also help in the event of contention providing trademark infringement and counterfeiting litigation and settlement services, and can also advise on other trademark, confidentiality and unfair competition issues.  These issues may particularly arise in cyberspace and e-commerce, such as during linking, framing, metatagging and cyberstuffing.

Advertising, Marketing & Regulatory

Regulation of medtech depends on its medical device classification and will evolve as new technologies such as Artificial Intelligence are incorporated especially since this sector is becoming a larger part of the marketplace and consumers’ lives. Our team is committed to keeping clients abreast of regulatory changes that affect the way innovators build, market, and advertise their products and services in Canada.

Licensing & Transactions

Securing and commercialization of IP rights involves dealings with collaborators, business partners, employees, independent contractors, suppliers, investors, buyers, and sellers. Well-drafted agreements protect IP assets, ensure a successful business relationship, and can avoid costly litigation. Our team has deep experience and specialized technical backgrounds to handle licensing and transaction matters for players in the various medtech areas.

Privacy, Cybersecurity & Data Protection

Data and privacy are important considerations in the medtech field. Our team can help you navigate the increasingly complicated issues arising from the collection, use and disclosure of personal information. We can advise on compliance with legislation, help with the development of policies and guidelines and assist with any investigations or complaints. We can also help prepare for and manage data breaches or cyber incidents.

¹ Canadian Government report on Medical Device industry
(Industry profile (canada.ca)
² Canadian Government report on Medical Device industry