Mathys & Squire
What led you to a career in intellectual property and what advice would you give to anyone considering a similar route?
I first considered a career in intellectual property after having interesting conversations with my housemate at college, who had started to train as a patent attorney at the same time I started my PhD. After hearing more about it, the profession seemed to be the ideal way to stay on the cutting edge of science without having to be immersed in a post-graduate environment and perform laboratory work that I felt I was not especially good at getting right. (I did not have the required ‘green fingers’!)
How do you build strong, long-lasting relationships with overseas contacts, and why is an international network important?
I strongly believe that being caring and making time in my day for clients and contacts, especially when problems arise that need careful attention, is fundamental to building and sustaining relationships. People remember how you address and resolve these issues. The biggest challenge in maintaining relationships with overseas contacts is obviously distance; before the travel restrictions brought about by covid-19 were introduced, I would prioritise travel throughout the year to ensure regular face-to-face interaction with my contacts in the United States and Canada. Throughout 2020, I have adapted this approach and moved all my communications online, ensuring that I check in regularly with my contacts in the United Kingdom and overseas.
What are the main challenges that clients face when it comes to portfolio management?
The successful management of an IP portfolio requires quality and frequent communication with the patent attorney with regard to prosecution options, strategy, likely issues and timeframes. This helps to provide a clear and common understanding, from which all portfolio management challenges become simple, second-order issues to resolve. Without this regular communication, small issues can develop unnecessarily. One recurring theme is that of escalating overseas costs. Good communication with local counsel is required in order for this to be addressed promptly and fairly for all parties.
What recent developments should rights holders in the life sciences space be aware of when looking to protect IP rights in Europe and the United Kingdom?
The EPO and UK courts have continued to raise the bar when it comes to the quality and quantity of supporting experimental evidence necessary for inclusion in a life sciences patent application. This is particularly the case for therapy and antibody inventions, where the evidence should make plausible the treatment of a claimed disease or unexpected advantage of a claimed antibody, respectively. It is essential that the associated plausibility threshold is met on filing, as it cannot be remedied by post-filed data.
Finally, what are some of the biggest challenges facing UK patent owners at present, and what can attorneys do to help their clients overcome these?
In the life sciences space, one of the key challenges relates to the level of experimental evidence required in a patent application to meet plausibility requirements. Notably, the UK courts have recently found a number of life sciences patents invalid for failing to meet this threshold. Accordingly, we now provide early stage advice on the planning of experimental design, and indeed continue this process throughout the patent drafting process such that key technical effects are optimally highlighted and credibly supported in a patent specification, thereby facilitating downstream prosecution and post-grant challenges.
Martin MacLean is a partner in Mathys & Squire’s life sciences team, with more than 20 years of IP experience and particular expertise in patent portfolio management for corporate entities and government. His practice covers protein therapeutics, antibodies, vaccines, expression systems, diagnostic assays and environmentally friendly agrochemicals. Mr MacLean’s expertise is recognised in various directory rankings, including Band 1 in Chambers UK, a recommendation in The Legal 500 and rankings in IAM Strategy 300 and in IAM Patent 1000.