An innovative solution to help improve the care of asthma in children

digiDoc Technologies AS (digiDoc) is a small Norwegian medtech start-up with whom Dehns has been working since 2014 when we drafted and filed their first patent application, with corresponding applications now pending in the US and Europe.  During this time, Dehns has advised digiDoc on freedom to operate and a potential licensing arrangement with a US entity.

digiDoc specialises in mobile technologies for eHealth and is helping to evolve healthcare by taking advantage of the built-in sensors in consumer mobile devices. This case study relates to an innovative solution to help improve the care of asthma in children.

 

Issue

digiDoc have been collaborating with researchers at the Southern Methodist University in Texas (USA) to improve the design of an "asthma whistle" in the form of a peak flow meter (measuring how well air moves out of the lungs) which links to an app and helps predict upcoming breathing issues which can then be treated before any major incidents occur.

digiDoc provides the medical expertise for the product, while the University researchers have contributed some expertise in the computer software element, so it is very much a joint effort and collaboration.

With regards to the IP resulting from this collaboration, it was decided that this should be jointly owned by digiDoc and the University, with digiDoc taking the lead on commercialisation. Dehns Partner Laura Ramsay was asked to advise on the terms of a suitable IP ownership agreement, and the patent filing strategy, to ensure digiDoc’s best interests were managed and maintained.  This was following news that the University researchers had already published a paper on the results of their work with digiDoc.

 

Solution

As digiDoc had never undertaken such a collaboration before, and therefore knew very little about the process and intricacies involved in reaching a joint IP ownership agreement, Laura took complete control and responsibility for discussions with the University technology transfer office. Since the researchers had already published a paper that limited the scope of additional patent protection available to digiDoc, Laura advised digiDoc on what to patent, when to patent, and had to be proactive in engaging with the main academic at the University, and the technology transfer office, to ensure that a US patent application was drafted and filed within the 12 month grace period. This was part of a strategic approach to bolster digiDoc's IP position, as Dehns is also engaged in actively monitoring third party rights in this area of technology and advising digiDoc on where they sit in the IP landscape.

In collaborations or joint ventures of this nature, it can occasionally be very difficult to maintain a good working relationship between both parties when each party may have different objectives, strategies and budgets. It was therefore very important to not only ensure digiDoc’s best interests were maintained, but also to ensure that the agreement was completed in such a way as to preserve the good working relationship between the two parties.

 

Result

Without Dehns' guidance, the IP resulting from the University collaboration would not have been the subject of a patent application and digiDoc may have lost out on this commercial advantage.

Laura was able to find the perfect balance between preserving the best interests of digiDoc while maintaining the relationship with the University. In addition, as a result of Laura’s expertise and experience in this area, she was also able to remove all the burden, worry and activities away from digiDoc who were able to focus on developing their product and getting it to market.

The US patent application has now been filed with joint ownership, and the collaboration continues to go from strength to strength.