Interview with: Kenneth Collier, Principal Counsel and Senior Director of IP, Medtronic Inc.
Miami, FL, March 23, 2010 – FOR IMMEDIATE RELEASE
It could be the most creative and innovative idea in the world or a tiny detail to a product that could storm the markets, but if the technology is not properly protected, the business may not be able to commercialize the product. Obtaining and enforcing intellectual property (IP) (patents, trademarks and copyrights) is often critical to maximizing the value of assets for the organization and often critical to ensuring continuity of the product in a competitive marketplace.
But things are not always so simple for IP Officers in todays dynamic business environment. In an era of partnerships, collaborations, mergers, acquisitions, global trade and unlimited technological capabilities, IP Counsels have to vigilantly and wisely safeguard internal and external investments. A speaker at the marcus evans IP Law Summit 2010, taking place in Florida, March 25-27, Kenneth Collier, Principal Counsel and Senior Director of IP at Medtronic Inc. shares his thoughts on IP protection strategies and his projections for the year.
What are the most critical issues challenging IP Counsels in North America at the moment, and what solutions would you recommend?
Kenneth Collier: Portfolio management is probably the largest challenge right now in our IP department and throughout the company. It is very easy for an IP Counsel to balance portfolios when there is a lot of money to use, but in difficult times, one has to make a lot of difficult choices. However, having to make these choices is potentially beneficial for companies. These choices, when made properly, allow companies and IP departments to focus on what is really important. Identifying the important work that should get done (versus what can get done) and what is at risk in our program planning is the number one challenge and critical issue for our company. On top of budgetary constraints, there are a lot of additional factors influencing portfolios the upcoming decision on KSR and a potential Biosimilars Bill in Congress are two things to follow this coming year. The outcome of these decisions will impact portfolio management decisions.
Legal officers really have to keep an eye on where their business is going and be a clear participant. One clear imperative for companies is the need to have the proper business forums, where cross functional committees in the business participate in the management and selection of the portfolio, in order to make the best choices that align with the business direction.
What strategies to safeguard IP, copyrights and trademarks from the competition would you suggest?
Kenneth Collier: Making the right internal and external investments is critical to having a strong portfolio in a competitive marketplace. Research intensive companies generally have a lot of innovation occurring internally; however, I do not know whether many of these companies can solely balance their portfolios and protect the company adequately by just relying on the internal research effort. When you look to balance the internal portfolio by looking outside, there are also obvious tensions that are created. If there is a strong internal research effort in your company and you are trying to supplement your portfolio by licensing, you need to carefully plan how to engage these opportunities. There are two different sets of behaviors in play here: a strong research commitment in your organization needs to be protected, however, at the same time you want to explore different opportunities and be open to new opportunities. In order to do both, you will need to be more diligent internally on how those conversations are selected and initiated.
If the company is driven to make an acquisition and they are looking to move into new areas, I think there are great opportunities. But the company still needs to be careful when talking to competitors. At the end of the day, that comes down to having smart business and patent lawyers who consider all your exposures and how those relationships should be managed, when putting together the business plan. There is an enormous amount of timing and planning required in creating new relationships.
What long-term strategies would you recommend to IP Counsels?
Kenneth Collier: Strategy is about how you are going to execute to obtain your business goals. In order for IP Counsels to be effective in developing IP strategies, Patent Counsels need to communicate effectively, both formally and informally. The IP group has to communicate the IP risks and opportunities directly to management and stakeholders; the structure of the organization should help bring those groups together. If the head of the IP group is not directly tied in with executive management, it is going to be more difficult and more problematic executing on an IP strategy. A lot of companies are finding themselves in more IP litigation problems because what is identified in the IP group has not been properly communicated early enough to the executive level in terms of the potential financial impact on the business. Similarly, the IP group needs to be more effective in listening to what is important to the business. Patent portfolios that can not tie to the business strategy can be a warning sign that the IP group is not meeting the business need.
What are some of the trends you see coming into play?
Kenneth Collier: Management of the IP portfolio has often been up to the legal department. Location of the IP portfolio within legal may make sense operationally, but is not necessarily the best place for managing the portfolio strategically. Some of the more successful trends that I am seeing is that IP groups have made some organic changes to the structure within their organizations. They are moving IP functions into closer relationships with management and with the business development function, or to an alternative structure where the General Patent Counsel is part of the executive management group. That often is against the grain of having only the General Counsel as part of the executive management group. The more separated these business functions are in a company, the more difficult and complex it gets to solve the needs of the business. People are starting to approach this differently by trying to find the right balance. There are economies of scale and increased efficiencies in having separately grouped business specialties, but the downside is that you might lose directional sense of where the business is going.
Disclaimer: The above comments are those of Kenneth Collier and should not be considered or ascribed in any way to Medtronic, Inc.
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About the IP Law Summit 2010
This unique forum will take place at the Doral Golf Resort & Spa, Miami, Florida, March 25-27, 2010. Offering much more than any conference, exhibition or trade show, this exclusive meeting will bring together esteemed industry thought leaders and solution providers to a highly focused and interactive networking event. The summit includes presentations on intellectual property management and litigation, patent reform and maximizing relationships with outside counsel.
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