Sam Collins, partner at Marks & Clerk, discusses the evolving landscape of medical technology diagnostics and the importance of effective trademark strategies for businesses operating in this field.
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The current diagnostics landscape
Diagnostics is an important part of medtech and there is clearly a lot of potential growth in this area. Currently we are seeing waiting times for NHS diagnostic tests continuing to increase, with data from the BMA suggesting that around 1.6 million people in England were waiting for a diagnostic test in April 2023, twice as many as in January 2006.
This means that advancements in technology around point-of-care (POC) diagnostics, with the aim of increasing the speed and accessibility of testing, whilst lowering costs and the reliance on diagnostic staff, are really valuable. As well as trying to decrease the pressure on hospital resources, we are also seeing a push in the NHS to look at ways to support healthy ageing and to give patients more of a say in their treatment and management of chronic conditions. Diagnostics can support patient triaging, remote monitoring of conditions and can impact on patient management decisions both in hospitals and at home.
At the same time, the use of AI and VR/AR in diagnostics, as well as more simple digital advancements like linking wearable devices to mobile phone apps to allow both health professionals and patients to monitor chronic conditions and rehabilitation, are on the rise and present new opportunities within diagnostics.
We are also seeing an increase in understanding of diagnostics by the general public post-COVID-19, with consumers now being familiar with terms like “PCR” and “lateral flow” and being more open to at-home testing. As a result, there is a growing market for commercial direct-to-consumer (DTC) tests and with it a clear need for businesses in this area to protect their reputation in what can be a tricky area, with the reliability of some DTC tests under scrutiny.
Trademark considerations for diagnostics businesses
With all of these changes comes a need for diagnostics-focused medtech businesses to ensure that they have strong brands and robust brand protection. Patients and general consumers in particular are used to relying on brand names and reputation when choosing between products, and so ensuring that trade mark protection is in place and that it suitably covers the potential uses of the brand is definitely recommended. With an increasing number of players in the POC diagnostics area, utilising brand and trademark protection to give a competitive advantage and protect reputation is vital.
Here are our top tips for diagnostics businesses to consider when looking at new trademark protection, or when revisiting their existing portfolio:
- Trademark – Make sure that you have the brand names used for your diagnostics products registered as trade marks. Consider whether protection for the word mark, logo, slogan, product packaging, shape of the product is a priority. The ideal is to protect the aspects of your brand identity that differentiate you from your competitors.
- Territories – When deciding where to protect your trade marks, you should prioritise countries where you are currently selling and manufacturing your products and any territories that are on the horizon in the next few years. If there is a concern about counterfeit goods, consider filings in any “high risk” countries too. Look to put together a strategy for the timing of your applications. If there are lots of regulatory hoops to jump through before you will be able to launch in a particular country, factor this into the timing of your trade mark applications.
- Goods/services – When you file a trade mark application you file for the particular goods and services that are of interest to you under that trade mark. The aim is to cover both what you are doing currently under the mark but also try to future-proof where possible to minimise the need for future trade mark applications. With digital in mind, do you need coverage for software apps? Will AI or VR/AR feature in your product? Is there going to be an online platform involved?
- Search – Before entering a new market or expanding use to new goods/services, have legal searches conducted to check whether there are any third parties already out there with trade mark registrations that could pose an issue for your use and registration. Doing so early in the process can save considerable time and money, especially if any clear “knock-outs” are revealed by the searches!
- Strategy and review – Set out in a trade mark strategy document the decisions you have made in relation to 1-4 above and the reasons behind these, so that the business can look back and see why certain decisions were made. Review both the document and your trade mark portfolio regularly with your trade mark attorneys to ensure that it remains robust and fit for purpose.
