Sub Navigation
Injecting more efficacy into patent management
UNOMEDICAL, DENMARK, is a leading supplier of medical single-use devices. The company is continually developing innovative products for the healthcare community worldwide. Therefore, it’s increasingly important to organise patent management as effectively as possible.
Five years ago, discussions related to intellectual property at medical device company Unomedical were limited to making sure a patent could be filed, whether a business opportunity genuinely existed and which patent attorney to pay for the paperwork. But since private equity firm Nordic Capital bought the company in December 2002, IP issues have grown more important to the company’s business strategy.
Over the past few years, Unomedical has added an IP department, put the discussion of IP on the agenda at board meetings, dramatically increased the number of patents it files annually and linked the IP department with the research and development procedure so that IP issues are considered at the earliest stages of product development.“ The development departments know they have to contact me,” says Tenna Marian Pedersen, Group IP Manager at Unomedical. “It’s good to be involved early when they are trying to solve a problem.” Possibly with a future stock offering, Nordic Capital is significantly restructuring the company by reorganising business units, changing staff and reorganising its IP strategy. Those changes in IP provide a good snapshot of a midsize company in transition, going from one that used IP in the most basic way to one that is using IP as a competitive tool.
Medical devices for the world market
Unomedical traces its roots back to a company called Pharma-Plast. Set up in 1964 by a Danish pioneer of plastic technologies, its mission was to produce low-cost, single-use
medical devices. Today, with headquarters in Birkeroed, Denmark, it still focuses on these single-use devices, which it develops, manufactures and distributes to the medical
industry.
Unomedical employs roughly 4,500 people worldwide, 50 of whom work in research and development. It has factories in Europe, Latin America, Asia and Australia. Sales in 2005 were €247 million. Some 98% of its products are sold outside Denmark. Unomedical’s primary products include devices such as catheters, surgical aids and other items for operating rooms and intensive care units at hospitals, as well as infusion devices. These so-called infusion sets are for patients suffering from diabetes. The set includes an infusion device, which in this case is a soft needle that delivers insulin. It comes with a portable insulin pump that is connected to the device by a long tube. Key players are large companies such as Medtronic of the US and Switzerland’s Disetronic Medical Systems.
IP plays an important role in everyday decision-making
In the past, management attention centred on operational issues. IP issues, of course, have been respected but not dealt with as strategic top priorities. However, things are
changing at Unomedical and today the emphasis is on producing lots of new technologies and better protecting them through patents and other IP.
Leading this new IP initiative is Ms Pedersen. Four years ago, Unomedical recruited this onetime patent attorney at Scandinavia’s largest patent attorney practice and former Danish Patent Office examiner to create a new department in which IP would be centralised to give the company a clearer picture of its IP holdings. Her department, which includes herself and an assistant, is supposed to increase the number of patents, better protect and exploit those filed and generally increase the role that IP plays in everyday decision-making.
In year one, she had to deal with a company marketing a product for which Unomedical already held a patent. Unomedical threatened to sue and the company pulled the product from the market and paid a settlement fee.
The department’s work has increased as the number of patents filed has skyrocketed. These days, the company files as many as 20 patent applications a year, up from just a couple five years ago. On one product in particular, a bright disposable infusion set that looks more like a child’s toy than a needle to deliver insulin, there are six patents, two design filings and one trademark – which has cost roughly €200,000, including all investments related to protecting this IP. In total, the company has roughly 70 patent families, including patents pending and granted.
Better coordination and avoiding conflicts
“Creating better coordination between departments is an important part of the IP overhaul,” says Ms Pedersen. Some headway has already been made. Nowadays, as part of a set procedure, the research and development departments contact the IP department before a prototype for a new product or technology is ready. This happens about a fifth of the way into the development process. The IP department checks for conflicting patents which could interfere with Unomedical’s ability to do business. If a conflict exists in one market, a patent might still be pursued. Even if commercialising a product is not part of the company’s plans, Unomedical might file a patent to block another company from owning those IP rights in that market. Cost is not a deterrent when deciding whether to pursue a patent.
Cost does affect how the IP department operates. The company’s restructuring has included significant cost-cutting measures and much of the IP work is outsourced, including the drafting of the applications and part of the evaluation of existing patents. The Danish Patent and Trademark Office is often employed to run a novelty search, or, for
example, to investigate the potential infringement risk. It also runs a search four times a year on competitor filings and movements and sends Unomedical a report. An external
patent attorney both files patents and prosecutes them.
Over time, Unomedical hopes to increase the size of the IP department. Ms Pedersen would prefer to internally evaluate potential infringements and scrutinise competitors
more closely through their filed patents.
With 27% of sales from North America, filing and protecting patents in the US, where doing business can be costly and risky, is among the company’s greatest challenges. Launching new products takes longer, in part because more time is required to research whether such products might infringe upon another company’s patent. If the company should be involved in a lawsuit, one must consider that US patent lawyers are very expensive, says
Ms Pedersen. Further, if the company loses a case in which it knew that the risk for violating another company’s patent was high, damages can run three times as high. “When you have so many new products, you really have to be careful, especially in the US,” she says.
Ms Pedersen says that costs spent translating patent filings are onerous and advocates that fewer parts of the filing require translation. She also suggests that patents filed by companies should be clearer in order to be granted so that competitors can spend less time and money figuring out what is and is not covered by these patents.
Product facts
Unomedical’s product range covers a wide selection of the healthcare sector’s needs and requirements for single-use products.
Moreover, from catheters and surgical aids to drainage bags, wound care and infusion devices, the entire Unomedical range is backed by a highly professional international organisation dedicated to providing the customers with the best products, training and service.
The products are marketed worldwide under own brand names plus a number of
private labels. Yet no matter what name they go by, all products feature the same
uncompromising quality that has become a Unomedical hallmark.
Company profile
Unomedical is a global company committed to engage in a profitable partnership with healthcare professionals and their patients. Unomedical is specialised in the development, manufacture and distribution of single-use devices to hospitals and healthcare sectors around the world. The company is owned by Nordic Capital.
Staff: 4,000
Sales 2004: €241 million
Key products: Single-use medical devices such as catheters, surgical aids, and insulin infusion devices.
Customers: Hospitals and healthcare facilities.
Unomedical A/S
Kongevejen 2
3460 Birkeroed
Denmark
www.unomedical.com
IP background
Patent protection: 300-400 patents in 70 patent families.
Patent filing order: Depends on the market. Could be a national filing first and then the US or Europe. In England, file in the UK first.
Department: IP manager Tenna Marian Pedersen and an assistant. External patent attorneys are also used.
Success factors: Unomedical is making IP more central to company strategy and has linked the IP department with product development and marketing.
Challenges: Managing a growing portfolio of IP with a small staff. Protecting IP in the US. Cost of translation.
Contact
European Patent Office
Erhardtstr. 27, 80469 Munich, Germany
Tel.: +49 89 2399 4636
e-mail: sme@epo.org
www.epo.org
Danish Patent and Trademark Office
Helgeshoej Allé 81, 2630 Taastrup, Denmark
Tel.: +45 43 508000
e-mail: pvs@dkpto.dk
www.dkpto.dk