The costs of protecting your IP can ramp up rapidly. How can you plan your IP strategy efficiently and cost-effectively?
Facilitated by James Fry, Partner and Head of Life Sciences at Mills & Reeve, this session brought together the following expert panellists:
- Ahmed Bouzidi, Vice-President Biotech at ProductLife Group
- Emmanuelle Astoul, Head of Licensing, Transine Therapeutics
- Raminderpal Singh, Chief Executive Officer and co-Founder, Incubate.bio Ltd
- Marc Wilkinson, Partner, Patent and Trade Mark Attorney, J A Kemp
- Carl Edwards, Head of IP & Commercial and LD3 Manager, University of Leicester.
A leading theme of the session was planning an effective IP strategy.
Raminderpal explored how, for any organisation, a mix of different kinds of IP rights is usually essential for protection. Patent rights may be a core element, but other rights around the patent portfolio may extend the protection and demonstrate to investors the steps that are being taken to protect value. Additional rights like Supplementary Protection Certificates and regulatory data exclusivity offer other forms of cover that are tailored to the life sciences sector.
Marc emphasised the need to understand what the commercial product will be when developing a patent application. The claims need to be tailored to offer a suitable degree of protection. Once a patent application has been filed you cannot change what is included, so ensuring that it includes what you will ultimately need to protect is vital.
An increasingly important area for protection is data and data processing activity, for example, for tracking biomarkers. Where algorithms are a key element of the innovative work product, patents fall short in providing appropriate cover. If the patenting approach is used, the work becomes public and may enable others to adopt a similar approach while avoiding the scope of protection.
Ideally, an organisation might wish to invest heavily across several different categories in order to achieve comprehensive protection of its technology. However, resources are limited especially at the early stages of the journey, and so a balance must be struck between seeking the best advice and protection with the budget available. Raminderpal explained the rigorous approach he takes to identifying where to focus spend so that it is aligned to the business’s priorities.
When it comes to spin outs from research institutions, the budget for IP protection will need to be spread across a range of different potential projects, with many being brought forward around June or July as the academic year comes to an end. Carl explored these pressures, and also how researchers may feel under pressure to publish their work as soon as possible, meaning that development of the necessary supporting material for a patent filing can be a challenge. IP capture, in the end, is all about people and working with them to achieve the best results.
From the investor’s perspective, a strong IP portfolio is certainly important. However, Ahmed discussed the role that investors can have, particularly angel investors with deep sector experience, in helping to consolidate and make the most of the IP assets of a young business. This might involve focusing resource on protection in the most important markets, or those countries where significant competitors operate.
For all panel participants the importance of focus came through. In response to an audience question around filing defensive IP, Ahmed emphasised the need to focus resources in developing a business-supporting portfolio. Raminderpal stressed the need to be rigorous in prioritising IP assets. Marc noted that selling non-core IP can be a way to focus spend alongside realising revenue. Carl raised the option of disclosure of non-core IP so that it is in the public domain and cannot be appropriated by others.
All round, this was a valuable session for smaller and rapid-growth innovative companies. The key messages coming through were focus, keeping it simple, aligning with the business, and strategic thinking. And, of course, remembering that you are working with people and need to understand and make the most of their creativity and innovative skills while retaining a grip on the application of limited resources.