MedTech & IP Strategy: How to Protect Innovation and Avoid Costly Mistakes

In this episode of Figure 1: an IP conversation, Albright IP Managing Director Robert Games is joined by patent attorney Will Doherty to unpack one of the most complex areas of intellectual property: medical technology.

The med tech sector is fast-moving and highly innovative, but it comes with strict patenting rules and unique challenges. From exclusions around the human body to the growing role of AI and data, protecting innovation in this space requires careful strategy and timing.

Through practical insight, the conversation explores how innovators can navigate patent restrictions, avoid disclosure risks, and build a commercially valuable IP portfolio that supports investment and growth.

The episode covers:
 • Why certain medical methods and software are excluded from patent protection
 • How to structure claims to work around patentability challenges
 • What to patent (and when) in early-stage med tech development
 • How to manage disclosure risks during clinical trials and research
 • Protecting AI and data-driven medical innovations
 • The importance of confidentiality agreements and clear ownership terms
 • How to avoid disputes in collaborations with hospitals and universities
 • Why Freedom to Operate (FTO) searches are critical early on
 • How a strong patent portfolio supports funding, valuation and commercial strategy

This episode is ideal for med tech founders, startups, investors and innovators looking to protect their technology, attract funding, and avoid costly IP mistakes.

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Want support with your IP strategy? Visit Albright IP: www.albrightip.co.uk

Transcript

Intro

SPEAKER_00 0:00

You need to keep the professionals in sync with the medical staff so that we know exactly what it is that we are doing and we don't screw things up on your behalf.

Robert Games 0:09

The goal is flexible thinking and commercial alignment with the business. Absolutely.

SPEAKER_00 0:15

You've got to have one eye on your goals. Where do you want to get to? If you want to get investment into the business, you've got to have something saleable, licensable, protectable.

Robert Games 0:25

Hello and welcome. I'm Robert Games, Managing Director of Albright IP. Welcome to our podcast, Figure One, an IP Conversation. Today I'm joined by Will Doherty, a British and European patent attorney on our patent team. Will specialises in engineering and chemistry and has a particular interest in medical technologies. The medtech sector is one of the most exciting and fast-moving areas of innovation, but it also comes with some of the most complex intellectual property challenges. From AI-driven devices to clinical trials and database diagnostics, protecting a great idea can be just as difficult as developing it. In this episode, we're talking about what medtech innovators should be asking when it comes to patents, from timing and disclosure risks to ownership, AI and investor expectations. Whether you're in the early stages of development or gearing up for launch, there's something here to help you strengthen your IP strategy and avoid common pitfalls. Will, thank you for joining me. I'm excited to be here, Rob. So, what makes protecting innovation in the medtech sector uniquely challenging compared to other technology fields?

SPEAKER_00 1:42

Yeah, it's tough. That's

What makes protecting innovation in the MedTech sector?

SPEAKER_00 1:44

the problem. We've got in the Patents Act, in the European Patent Convention, various exclusions on what can be patented when it comes to the human body. So it's not permitted to patent a diagnostic technique, nor is it permitted to patent a method of performing surgery on the human or indeed animal body. So that immediately takes swathes of possible development out of patentable reach. On top of that, medtech feeds into areas that are excluded in other ways. So you might have computer-implemented inventions which are difficult to patent because software is not patentable itself, and neither are abstract methods of doing something. That said, MedTech's uh an exciting area when it comes to innovation. So there are things happening, and that does mean that if we're clever, we can hone in on differences using the skills that we've got as patent attorneys to maybe get claims focused in the right direction. So, what does that mean in practice? Um maybe we'd focus on a diagnostic device instead of the actual diagnostic technique itself. Maybe that device has a unique method of being calibrated relative to a patient benchmark. Who knows? Perhaps maybe AI gets involved in some way to uh perform calibration, to um perform uh benchmarking perhaps of where you know vital stats might be. All sorts of things can touch on those excluded subject matter areas, but if we've structured our claims correctly, we can avoid them, and then we're in quite an uh an exciting area for patentability.

Robert Games 3:36

So so for a new medtech invention, what are the key aspects to consider when deciding what and how much to patent? There sounds there's quite

What are the key aspects to think about when patenting a MedTech Invention?

Robert Games 3:44

a bit there.

SPEAKER_00 3:44

Yeah, yeah, yeah. I mean, I think really when it comes to med tech, you've got one of two routes. You can either start to build as much as you can early on to try and get a viable portfolio. Look, and an investor coming towards the business is going to say, I want to see something that's got longevity. So maybe let's get as much in as we can, build ourselves something from the ground up. The flip side is well, maybe we maybe we go more targeted, maybe we try and focus on the things that are ready to be disclosed. Because there are lots of obstacles in med tech when it comes to disclosure. I mean, things like ethics trials, uh, research, clinical um developments, they may need to be done in public. So we've got to have that in our mind when we come to filing strategies and the sequence of submitting patent applications.

Robert Games 4:47

Sure. So so how can how can inventors actually balance the need to attract invention in sorry, investment with partnerships with the risk of disclosing

How can inventors attract investors with out disclosing their ideas?

Robert Games 4:58

their ideas too early?

SPEAKER_00 4:59

Yeah.

Robert Games 5:00

I mean, you know, and then potentially losing protection. What you know, how how do you balance that?

SPEAKER_00 5:05

Yeah, I think you've got to be really, really careful. A staggered approach is probably what I'd say. Try and get something in early before you have to tell anyone about um the idea at all. You know, maybe a a baseline, nice broad patent application, great, that's serving as your seed. But as you go through trials, as you go through submissions that need to be made to ethics bodies, clinical research organizations, hospitals, whoever, you'll need to start putting more and more information into the public domain. So just making sure that going through the steps of incrementally building up, putting more disclosures into the patent office, maybe you have a cull at some point to strip out the weakest applications. But ensuring that you've got one eye on the strategy and one eye on where you're going in terms of the clinical sequence, that's what you need to do. You need to make sure that your submissions follow the commercial priorities.

Robert Games 6:06

I understand. So, so really it's about keeping your IP in step, you know, before the disclosures.

SPEAKER_00 6:12

Absolutely. You know, you need to keep the professionals in sync with the um the medical staff so that we know exactly what it is that we are doing and we don't screw things up on your behalf.

Robert Games 6:24

Okay. So so AI and data are increasingly shaping medical technologies. How can inventors protect software-driven or data-centric innovations effectively?

How can inventors protect software driven or data eccentric innovations efficiently?

SPEAKER_00 6:36

Yeah. So look, we've got lots of information about patients, about how um maybe drugs work on particular cohorts. The AI is great at looking at data. You know, what you want to be doing is perhaps in that area where there's software-related inventions, try and try and tell us early on what the tangible technical output is going to be. So, what is the improved performance for patients that you'd want to be focusing on? And how does AI achieve that for you? It's not so much a case of can we can we very easily streamline administrative procedures? That's not going to go anywhere at the patent office. But if you can demonstrate a real a real goal, maybe the AI has some sort of assisted um dosing regimen, perhaps, when it comes to pharmaceuticals, perhaps something along those lines will give you much more scope for getting a patent granted. And ultimately, a lot of these technologies are very, very um valuable. Grant of a patent is is what we're aiming for. It's not a case of just filing these things and hoping that something comes out the other end. Sure.

Robert Games 7:47

Clinical trials and regulatory submissions often involve sharing information. How can inventors safeguard their IP during these stages? I mean, you've touched on it already with the sequential,

How can inventors safeguard their IP?

Robert Games 7:59

you know, filing, but what else can you do?

SPEAKER_00 8:01

But equally, yeah, it's it's all about knowing when information is being disseminated. And if you're having to say, tell um your research partner, your hospital, exactly what your drug is or what your device is, it's making sure that you've got confidentiality agreements in place or um you've got really good contracts in place to make sure that we don't get into any sort of real problems with shared ownership or cross-contamination of ideas. Um that's something that can really, really tanker project. So let's say um you've got development with medical staff within a hospital, what you don't really want is those medics starting to put their own ideas in and getting the entitlement to the patent applications all twisted and tangled.

Robert Games 8:52

Okay, so so really then when you're collaborating with a university, say, or a hospital, or in fact any external uh partner, you need to just be careful about the terms of ownership and and where the rights are actually ending up.

SPEAKER_00 9:07

Yes, so obviously when you've got multiple parties coming to the table, they're bringing different things. So they might be bringing their skills and knowledge, they might be bringing that on the regulatory front, they might be bringing medical information to the table. But all of that information is going to be relevant to the construction of the invention at the end of the day. So what you can end up with is entitlement disputes. You know, we see this all the time when joint ventures come together, is that the the various parties fall out or somebody thinks they own XYZ. So it's it's really important to get that all crossed off at the beginning, make sure everyone knows who owns the the foreground IP and the background IP. Yeah, that's important as well. Know who who brings what to the the table. But equally, it's about making sure that there are no other thorny disputes that could arise. Sure. Uh and are there any ways

Are there any ways of avoiding disputes?

SPEAKER_00 10:04

of avoiding disputes? Yeah. So let's think about what happens in the scenario that your competitors have actually put a block in the road. You're you're stuck, aren't you? You can't you can't get around a pattern very easily without spending a lot of money on knockout. So that's why I'd say to even small startup businesses that FTO freedom to operate searching is really, really crucial early on because what you don't want to do is find yourself mired in a patent thicket that you could have easily avoided with a little bit of preliminary searching. Um, so so yes, spend the money doing the searching early on. It may seem costly, it's more costly potentially than filing the patent application, but it will pay dividends in the sense that you can identify where your business risks are going to be in the future.

Robert Games 11:00

Sure. And and and medtech in innovators can use the patent strategy not just as protection, but as a driver for growth, funding, and market positioning. And so that searching is really important. Really, really important.

SPEAKER_00 11:13

The investors that are going to be looking at putting in capital into the businesses, they're going to be wanting to see scalability. They're going to want to see that the businesses that are taking the funding are going to be knowledgeable about IP, that they've got some idea as to what the IP landscape is. They're going to want to know that you have done some work on what your competitors are up to, so that the money that they invest is not going to just disappear into an infringement lawsuit very, very quickly.

Robert Games 11:44

Sure. And a well-structured portfolio, at the end of the day, boosts valuation and also strengthens your position in licing licensing and exit negotiations.

SPEAKER_00 11:56

Yeah. Building that portfolio is critical. You need to look like a sensible party to work with. And how do you build a portfolio?

How do you build a portfolio?

SPEAKER_00 12:05

Well, you know, we can take advantage of divisional strategies again. How do we go from a core nugget of an idea that you've built your business around to lots of different patent applications? Well, we file, maybe we file one to the medical device, we split one out to the use of that device with dosing regimens, for example, maybe the control uh using machine learning, AI, whatever. Lots of different avenues we can take. And as we talked about at the beginning, we can be clever to avoid patentability exclusions. But those are the ways in which you can bulk the portfolio to cover off all the possible business opportunities that might arise. You know, you'll often see that maybe the the real core commercial value comes from consumables, maybe replaceable parts on the device, you know, bits that have to be sterile, for instance. And they can be quite difficult to get protected, but if they're all bundled together, we've got the opportunity to do so.

Robert Games 13:07

Sure. So really the the goal is you know flexible thinking and commercial alignment with the business.

SPEAKER_00 13:14

Absolutely. I think we say that time and time again. You've got to have one eye on your goals. Where do you want to get to? If you want to get investment into the business, you've got to have something saleable, licensable, protectable.

Robert Games 13:27

That brings us to the end of today's discussion. Uh, Will,

Outro

Robert Games 13:31

thank you for sharing such valuable insights into the patent landscape for medical innovators. For those listening, if you're developing medical technologies and want to make sure your IP strategy is fit for purpose, our team at Albright IP would be pleased to help. You can find more information on our website at albrightip.co.uk. Thank you for listening to Figure One, an IP conversation brought to you by Albright IP. I hope that you've enjoyed listening and I look forward to you joining us next time. Thank you.