Which of your cases or matters has been the most memorable?
We were approached by an early-stage company operating in the healthy convenience foods sector to provide IP protection for a next generation ‘instant’ mix product. A key challenge from a patent drafting perspective was to capture highly subjective properties such as improved texture and taste in an objective and reproducible way. Another key challenge, mindful of the vulnerability faced by an early-stage company with a successful product, was to achieve an expedited patent grant. Accomplishing these goals (during a pandemic) helped the company raise £2 million, engage with major retailers and secure a market position with global reach.
What are some of the biggest challenges facing your clients right now?
R&D progress has been a major challenge for life science clients since the start of the covid-19 pandemic, with lockdown restrictions limiting access to laboratories and distribution networks struggling to deliver essential consumables. This has particularly affected the ability of SMEs to generate data in support of new inventions during the all-important priority year, whereas corporates have had to manage the knock-on effects of postponed clinical trials. A further problem vexing SMEs is the ability to secure new investment in a post-covid environment.
If you could change one thing about the UK life sciences space, what would it be and do you think that it is likely to happen?
Diversification of the talent pool. Owing to European qualifying examination criteria, IP firms such as Mathys & Squire can only recruit trainee patent attorneys with a science degree. However, there is an imbalance in terms of under-representation within STEM subjects at university, which therefore limits the diversity of candidates our profession can choose from. As a firm, we are working to promote career opportunities for individuals studying STEM subjects, though considerably more still needs to be done to encourage students from a variety of backgrounds at a much younger age to consider studying science.
What common mistakes do foreign rights holders make when enforcing their patents in the United Kingdom and Europe – and how can they avoid them?
A common mistake is a failure to check that the underlying patent rights flow from a granted patent (rather than a pending application), and that the patent is in-force (ie, that all annuities have been paid). In the case of a European patent, this question extends to the payment of national annuities across all relevant European territories. Another common mistake arises when a licensee or similarly interested party wishes to sue for infringement, but lacks title to the patent concerned. Remedial action is then required either to correct ownership of the patent, or to seek appropriate agreement with the patent owner.
How do you measure the success of an IP strategy?
A successful IP strategy is one that aligns with a company’s business strategy.
In the case of larger companies, this can be readily measured by any one of several commercial success metrics (eg, sales and royalties). Another measure might be the number of inter partes actions initiated within a defined time frame, such as national infringement proceedings, EPO oppositions, and national revocation proceedings (or a flavour thereof) and within a narrowly-defined tech space.
For SMEs, the key measure will always be the ability to attract investment, and while intellectual property can sometimes be overlooked by early-stage and small businesses, demonstration of a robust IP strategy will more often than not be the deal clincher for any serious investor. A secondary measure might be the ability to keep competitors out of a technical/commercial space, which may of course give rise to downstream licence opportunities.
Martin MacLean works in Mathys & Squire’s life sciences team, and has over 20 years’ IP experience with particular expertise in patent portfolio management for corporations 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 the IAM Strategy 300 and IAM Patent 1000.