OR WAIT null SECS
Ericka L. Adler, JD, LLM has practiced in the area of regulatory and transactional healthcare law for more than 20 years. She represents physicians and other healthcare providers across the country in their day-to-day legal needs, including contract negotiations, sale transactions, and complex joint ventures. She also works with providers on a wide variety of compliance issues such as Stark Law, Anti-Kickback Statute, and HIPAA. Ericka has been writing for Physicians Practice since 2011.
Physicians need to be aware of the steps to take with original ideas that involve medical products, computer applications, and other intellectual property.
Last year, a client came to me with an idea for an invention inspired by her patients. She was so excited that she discussed the concept with an employee who volunteered a connection to a manufacturer and, on her own, the employee took the idea to the manufacturer. Can you guess what happened next? The physician’s original concept is now likely to be a financial success -but no credit for the invention is being given to the physician, and it will be difficult for her to prove a claim to the original idea at all.
The above scenario is an extreme example of what can happen, but physicians need to be aware of the steps to take with original ideas that involve medical products, computer applications, and other intellectual property (IP). Here’s what every physician with a “great” idea should do:
1. Write down your idea(s) and provide as complete a description of it, including diagrams, as possible. Sign and date the idea and have someone you trust countersign and date the written idea as well. Avoid having a relative countersign, if possible, and make sure you keep the signed papers somewhere safe.
2. Ideas come in lots of shapes and sizes. “Intellectual property” is a broad term that includes patents, trademarks, copyrights, trade secrets, and other forms of exclusive rights in intangible property. No matter what your idea, consult a qualified IP lawyer as soon as you can. Protection of many types of IP depends on timing. Inadvertent disclosure can destroy exclusive rights in an idea. Common types of IP that I encounter most often include:
A. Copyright. A copyright generally protects expression of ideas in a tangible form (including electronic formats). In the physician context, this could include a business plan, a book, or even a particular procedure for treatment of a medical condition. The underlying ideas and functionality are not protected; just the original "expression" is eligible for copyright protection once fixed in a tangible form. Adding © 2012 is helpful for purposes of notice, but is no longer required to claim copyright in creative works.
B. Patent. A patent is an invention such as a product or device or a method for achieving a particular result. For example, orthopedic surgeons with new knee devices or cardiologists with a new stent would look to “patent” these inventions. Patents are highly nuanced and have strict time limitations on their disclosure, use, and duration of protectability.
C. Trademarks. Trademarks generally include any word, name, or symbol used, or intended to be used, in commerce to identify and distinguish one’s goods or services from those of others. A logo or unique name used by a practice may be a trademark that needs protection. Many people equate trademarks with brand names because they create a connection in the mind of the patient/consumer. Trademarks last indefinitely as long as they are used.
3. When it comes to protecting IP rights, it saves time and money to use an experienced IP lawyer from the start to review your idea and give you a sense of whether it’s protectable. Handling it on your own may seem like a good idea until you miss something important due to lack of knowledge. IP registration forms are deceptively simple and often cause irreversible problems for the uninitiated.
4. Before talking with anyone about your ideas, make sure you have a signed non-disclosure agreement in place. A non-disclosure agreement is especially important if you talk to a manufacturer or any other third party about your ideas. You should formally document every piece of information you provide to a third party to track the release, and return, of confidential data.
5. Make sure you are familiar with any contracts you have, especially if employed by a hospital, which may consider itself the owner of all IP developed while a physician is employed. Hopefully, the employer’s policies exclude ideas unrelated to medicine and those developed on a physician’s own time without use of employer’s staff, facilities, or funding.
If you have an idea that needs protecting, no matter what form it may take, make sure you take the right steps to protect it before it’s too late.