What part of your work do you find the most rewarding and why?
I love working with early-stage technologies, particularly with innovative SMEs. It is so rewarding when, having taken the time to understand an innovation and its place within their business, I can help my clients devise an IP strategy that furthers their commercial goals. Often, I can assist them in identifying new prospects to guide their R&D and strengthen their pipelines – there is no better feeling. By being proactive and embedding myself in their business, I can apply my technical expertise and global focus to help even my smallest clients achieve a worldwide footprint. Talk about job satisfaction!
The race for covid-19 vaccines has shone a spotlight on the life sciences and biotech space – what lasting impact do you expect this to have?
The covid-19 pandemic has resulted in an unprecedented global mobilisation of R&D efforts to design, develop and manufacture vaccines on scale within a massively reduced timeframe. Many of the processes and efficiencies resulting from covid-19 vaccine development can be applied to other biotech innovations. For example, while the potential of mRNA vaccines was explored for decades prior to the pandemic, Moderna and Pfizer-BioNTech are the first ever mRNA vaccines to achieve Food and Drug Administration approval. The platform technologies underpinning these vaccines have the potential for application far beyond covid-19.
In addition, with this acceleration in R&D, we may well see an increasing emphasis on collaborative projects. For Big Pharma, this facilitates access to cutting-edge research from universities/SMEs while managing risk. For universities/SMEs, this allows Big Pharma to help finance costly clinical trials and provide expertise in upscaling. Such collaborations will require careful planning of the IP strategy to protect the rights of both parties and to help deliver successful outcomes.
Lastly, with this acceleration in R&D and increased complexity in IP ownership resulting from more jointly owned intellectual property, it will be more important than ever to ensure proper freedom to operate and due diligence is carried out early on, so that potentially clinically and commercially valuable technologies are not blocked from market entry by third-party rights.
What are some of the most frequent errors that rights holders make when prosecuting patents before the EPO – and how can a good attorney help them to avoid these?
For me, the biggest potential for error is early on in the patenting process: at the drafting stage or even before. Unfortunately,
it is not uncommon to see specifications that have been drafted without consideration of the jurisdictional nuances of EPO law (or other key jurisdictions), particularly in relation to issues of patentable subject matter and plausibility (whether under the guise of inventive step or sufficiency). The EPO’s strict approach to added subject matter can also cause problems. A poorly drafted specification makes prosecution an uphill struggle.
A good attorney will be aware of the specific practice issues in the key jurisdictions and will draft a specification accordingly, for example, by providing reasoning to underpin an inventive step/plausibility argument during prosecution. Good drafting also ensures that there are suitable fallbacks at different levels of generality, covering the client’s own products/methods, to make amendments easier during prosecution.
Given that business leaders are not always familiar with the intellectual property, what tips can you share for engaging – and ensuring buy-in from – key stakeholders?
It is vital to ensure that the key stakeholders understand the value in their intellectual property and the business benefit that it provides. Engagement relies on empowerment. You must confirm that the stakeholders not only understand the importance of intellectual property, but also have the essential information needed to make informed decisions. Providing options and clearly explaining the risks, costs and benefits of each, and how that fits into the broader commercial picture, helps ensure buy-in.
What are the key components to a winning patent strategy?
To develop a winning patent strategy, it is important to first recognise that there is no one right strategy! Instead, to devise a successful strategy, commercial awareness and the ability to tailor advice to the specific objectives of a particular client is key. There are no shortcuts – you need to put the work in to understand a client’s goals and drivers. Creativity and a willingness to consider all the options to identify the best solutions for a client are also important. Lastly, a global perspective can maximise the value of your client’s intellectual property, to adapt strategies to help them strengthen their position in all key markets.
The “commercially savvy” Anna Gregson is a partner in Mathys & Squire’s life sciences team, with formidable expertise in the biotech field. She is recommended as a leading IP strategist in the latest IAM Patent 1000 and the IAM Strategy 300 and praised in the most recent The Legal 500 for her “really outstanding, can-do attitude”. Dr Gregson specialises in devising comprehensive, multilayered protection around her clients’ innovations, as well as freedom-tooperate advice.