What has been the key to your success as a patent litigator?
Top of the list would be:
- understanding and managing expectations;
- planning and sticking to a budget; and
- finding creative solutions.
It is easy to get swept up in the initial enthusiasm of any campaign, then get lost in the follow-up and for energy levels to wane after protracted litigation. For this reason, it is important to understand the end game from the very beginning (having a Plan A, B and C) and to set realistic expectations for any litigation project.
What would you say are the cornerstones of any watertight IP strategy?
Watertight seems unlikely; perhaps detecting leaks from the beginning is more attainable. Absolutely essential for this is to truly understand the client’s needs and expectations in order to develop a viable strategy for the mid to long term. Also key is to identify third-party freedom to operate (FTO) threats; it is often easy to focus on the protection of in-house development only and not give equal priority to external threats. Once you identify them, you then have to deal with each FTO obstacle and decide whether it pays to be more proactive through outreach, perhaps to be more aggressive via opposition/post-grant review practice, or simply to lie low and wait.
What are the biggest patentability challenges facing your clients at present?
Patentable subject matter issues continue to be a big challenge. For pharma, biotech and biodiversity-innovation clients, lack of patents for second uses and diagnostic methods are a constant irritant. For the IT sector, clear rules on the patentability of computer-implemented inventions would be welcome. Other recent challenges affect many local clients working on biotech inventions, where the requirements to provide genetic access contracts have broadened and now include obligations over products not previously considered endemic to the region. On a more logistical note, a top challenge for local clients is figuring out how much to spend on protecting in-house development. Identifying what to prioritise, what to shelve or to protect as a trade secret, and where the sweet spot lies, is a perennial question.
What more can be done to encourage filing activity in Colombia?
I believe that it is important to educate potential filers regarding the relevance and value that Colombia can provide for their portfolio. Depending on what ranking you look at, Colombia is the third or fourth largest economy in Latin America (alternating with Argentina). For many sectors, such as pharma, medical devices, energy and information technology, it is a leading jurisdiction in Latin America in market size, manufacturing capacity and R&D. Finally, it is important to underscore the favourability of the patent environment – both for prosecution as well as for assertion – which boasts:
- swift prosecution and above-average grant rates;
- an extremely high presumption of validity;
- strong pre-litigation discovery mechanisms;
- a relatively straightforward procedure to obtain injunctive relief (eg, no requirement to practice the invention); and
- a specialised IP court.
How do you expect the patent prosecution landscape to evolve in your region in the next five years?
I trust that the Colombian Patent Office will maintain its current prosecution speed, which averages 22 months across all arts. I also expect prosecution quality to remain high, and hopefully improve, thanks to work-product sharing through Patent Prosecution Highway mechanisms and increased cross-office training programmes. As for other offices in the region, I expect some will likewise adopt greater acceptance and trust in work-product sharing in order to increase prosecution speed. I also anticipate greater opposition practice across all regional offices, which may pre-date counterpart practice in other jurisdictions (eg, the EPO and the USPTO). Finally, I expect greater engagement by governments in exploring legislation and practice favouring broader patentable subject-matter to support home-grown innovation and local R&D stakeholders.
Carlos R Olarte
Carlos Olarte is a founding partner of OlarteMoure, a 170-person firm specialising in IP and competition law, with offices in Bogota, Medellin, Barranquilla, Bucaramanga, Cali and Tokyo. His practice focuses on patent law, including litigation and monetisation strategies, particularly in the life sciences industry. Mr Olarte has biomedical and mechanical engineering degrees from Duke University and a JD from the Chicago-Kent College of Law. He is licensed to practise in Illinois and Colombia.