26 January 2021
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As the technical capabilities of smartphones continue to rise at an exponential rate, so too do the number of applications (“apps”) available. Both the processing and sensing technologies are becoming ever more sophisticated, and with that the potential applications of these apps. An emerging field which is particularly interesting is the field of digital health apps, which come in a range of forms, from nutrition trackers, to meditation assistants.

Many of the digital health apps on the market now have millions of users. So, more than ever, it is important that companies developing those apps are able to protect their innovations. In this article, I will discuss the ways in which inventors of digital health apps might be able to obtain patent protection for their apps at the European Patent Office. James Leach’s blogs “Five things you (really) need to know about patenting software in Europe” and "Software inventions at the European Patent Office: an in-depth study" looks into the considerations to be borne in mind when considering applying for patent protection for a software-based invention. I will expand on this here, paying attention to digital health apps in particular.

The five points below highlight some of the key considerations when considering whether to apply for patent protection for your digital health app:

  1. Which feature of the app is new?

    In general, all digital health apps take some kind of input data, perform some kind of processing on that data, in order to generate some kind of output. The first thing to consider is which of those features is “new”? Does the app take an input in a new way? Is a new type of processing performed on the input data? Is a new output produced?

  2. Is there a “technical” effect achieved by the new feature?

    As James mentions in his blog, the EPO are reluctant to provide any concrete guidance as to what “technical” actually means. However, the following (non-exhaustive) examples of processes which may form central parts of digital health apps are likely to be considered technical by the EPO:

    • The use of a new type of sensor in conjunction with the app, or alternatively, the use of a known sensor to sense a physiological parameter in a new way (e.g. using a mobile phone’s fingerprint sensor to detect blood flow, or the microphone to sense characteristics of a user’s breathing).

    • The performance of a new type of processing on the input data. For example, the application of a new image processing algorithm to a photograph of a skin condition, which leads to a more accurate diagnosis of that condition. In a hospital setting, an improved image processing algorithm might be used on e.g. x-ray or MRI scan images.

    • This is not restricted to image processing, of course. If the application of an algorithm to any kind of medical data leads to a demonstrable improvement in e.g. diagnosis, or selection of treatment, and it can be shown that the improvement results from the new algorithm, then this would also likely be considered “technical” by the EPO.

    • The calculation or determination of a new output or type of output, and using it to inform some kind of technical decision. For example, the generation of a score, which is then used to select a particular type of treatment, or to make a diagnosis. It is unlikely that the simple calculation of a score will be sufficient – that score must somehow be used in a new way.

  3. Make sure the claim covers the technical feature, and has a demonstrable technical effect

    If the new feature is a specific type of sensor used in conjunction with an app, then make sure the claim includes the sensor. Similarly, if the new feature is the algorithm, then make sure that all of the features of that algorithm that are required to achieve the advantage are included in the claim. If the algorithm leads to the generation of a score which leads to an improved diagnosis, then make sure that the diagnosis step is included in the claim too (though beware that the claim does not represent a method of diagnosis as described here).

  4. Provide evidence

    More and more nowadays, patent applications are filed for computer-based processes whose technical effects may not be immediately derivable from e.g. the steps of an algorithm, or the manner in which data is obtained from a user or patient. So, to ensure that we have sufficient ammunition for arguing about the benefits of an invention, it is crucial that supporting evidence is included in a patent application, showing that the claimed invention is able to achieve the alleged technical effect. In general, the more evidence the better. It is also important that if e.g. an algorithm depends on the selection of various parameters, or the acquisition of medical data depends on the selection of various parameters (e.g. the sampling frequency), the evidence should show that the technical effect is achievable over the full range of those parameters.

  5. If you’re unsure – seek advice!

    Our team of experts have a great deal of experience in advising on the patentability of, and pursuing patent protection for apps in all fields of technology, including digital health from the life sciences end of the spectrum, all the way to the electronics and computing end of the spectrum. So, if you have any questions – get in touch, and we will be happy to help!
Alex is a Senior Associate and Patent Attorney at Mewburn Ellis. He works on all aspects of the patent application process in the electronics, physics, computer software and engineering sectors including drafting and prosecution of applications, and the handling of oppositions (both offensive and defensive) and appeals. He also has experience providing detailed opinions on infringement and validity of granted patents. His work frequently includes arguing in favour of the patentability of software and business method applications at the European Patent Office, during both the prosecution and appeal stages.
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