Medical procedure patents

Can you patent a medical procedure? Before starting, note that under 35 USC 287(C), US physicians and other medical practitioners have limited immunity to certain types of medical procedure patents.

US patent law allows patents for inventive methods (such as procedures). The rules also enable devices (such as gadgets), and compositions of matter (such as drugs). But US law carves out a medical practitioner exception for medical procedure patents.

What is a medical procedure patent? Some historical examples include 1) a new and improved method of making surgical incisions on patient corneas. 2) the first medical use of ether (first anesthetic). 3) the first use of ultrasound for fetal gender evaluation.

Public policy here is a bit uncertain.  We don’t want our physicians to be afraid to try new procedures.  We want them to use the best methods possible. But if we don’t financially reward innovation (through patents), then this could stifle further medical progress.  So the critical question is:  should medical procedure patents be allowed, or not?

US law 35 USC 287(C) is a medical procedure “carve-out.”

Over about the last 100 years in the US, the pendulum has swung back and forth between “no” and “yes.” Our present 1997 era law, as described by 35 USC 287(C), is somewhere in the middle.  We have ended up with a strange compromise. The US generally allows these patents but doesn’t always let you enforce them!  So be aware of this unusual rule. You don’t want to accidentally end up getting a medical patent of little value because the law won’t let you enforce it.

The trick to avoiding this unfortunate situation – having a patent that lacks value due to restrictions on enforcement, is to consider 35 USC 287(C). You need to write claims that limit the impact of this strange exception.

The carve-out is narrow.

The good news, from the standpoint of inventors and startups, is that the enforceability carve-out aspects of this law are quite narrow. Patents for medical devices and compositions of matter are allowed and are enforceable. Further, under the legal rule of “contributory infringement,” you may also still be able to enforce against manufacturers who are teaching the use of their products for your patented medical procedure.

So, can you patent a medical procedure?

In summary, the answer is “maybe,” but don’t try to do it directly. Instead, you have to be creative. The trick is that if you are trying to patent a new medical procedure, think a lot about what devices or medical supplies might be needed to implement your invention.  Claim them, and when you get to writing the medical procedure claims, think about contributory infringement as well.