The medical devices industry has seen its fair share of large patent lawsuits in recent years, with settlements and fines ranging from tens of millions to billions of dollars.  Some recent examples: Medtronic, Inc, paid $400 million to Abbott Laboratories to settle a lawsuit over stent and stent delivery systems, and Boston Scientific Corp agreed to pay Johnson & Johnson $1.73 billion to settle two stent-related lawsuits.

Such suits often result from these simple, yet potent, mistakes committed in the early stages of product development:
• Lack of proper competitive intelligence owing to improper patentability and an inadequate prior art and infringement search. An example: the recent row over the ‘drug eluding coronary stent’ patent US 4739762 (Cordis Corp vs Boston Scientific and others).
• Lack of coordination between various departments leading to the R&D working in isolation of the legal department that forms the claims of a patent document

The above mistakes are absolutely unwarranted. Yet, the medical devices industry is fraught with active patent filings and high patent pendencyrates (time between patent filing and when it’s granted, which averages over four years).

Consider companies introducing medical devices to the market. They must ensure that they are not infringing on any of their competitors’ intellectual (IP) property. In other words, they must be certain that they have the “freedom to practice” their invention). They must also protect their own inventions with patent filings to give them a competitive advantage in the marketplace. If they are licensing technologies from their partners, they have to “vet” those technologies as well.

All of these actions need to occur well in advance of the product development cycle. If a company discovers late in the product development cycle that its concept may infringe on a competitor’s patents, its multimillion dollar product development investment would go to waste.

Major medical devices companies are beginning to embrace a more proactive intellectual property strategy. This strategy has multiple elements. Click here to learn what they are and how to put them into practice.