As the dust starts to settle after the pandemic, do you think that covid has permanently altered the direction of the life sciences industry, or is it a return to business as usual?
I do not think there has been a permanent change in direction. In fact, our clients have proven remarkably resilient. Research and product development have continued throughout the pandemic, and IP filings have reflected that. Perhaps perceptions of the life sciences industry might have changed. A major positive to emerge from some dark times has been the way in which research from this industry has helped us address some challenges. The development of vaccines and new treatments have been essential in providing a way out of the pandemic.
For Mathys & Squire specifically, it is all green lights and full steam ahead in the new, post-covid world. We have been able to recruit a senior biotech partner and a supporting trainee attorney, adding significant expertise to our Manchester office, while also recruiting several new biotech attorneys across our London and Munich offices.
What are your top three tips for developing a truly world-class patent portfolio?
Firstly, plan ahead. It is easier to develop a world-class patent portfolio when you have sight of the technology as it is developing. This allows you to consider how new technologies dovetail with existing ones, so that you can ensure applications fit together, and ensure you do not trip yourself up. Secondly, fit your patents to your business. Patents are commercial tools, and filings should reflect that. An incremental technical advance that covers a key feature of a business-critical product is more important in IP terms than a more ground-breaking scientific discovery with marginal commercial value. The final tip would be to emphasise the importance of good communication. It is a common thread which runs through earlier points, but good communication between the client and patent attorney is essential in building your portfolio and ensuring that you respond well to challenges, whether during prosecution, under opposition, or dealing with changes in the marketplace.
As the opening date for the long-awaited UPC draws ever closer, what steps are you taking to prepare yourself and your clients?
We have been making a concerted effort to highlight to our clients just how big a deal the changes associated with the UPC’s new court system are going to be. Inactivity really is not an option for clients when the default position is that their patents will be entered into this system. There are just too many variables to advocate having assets exposed to the uncertainties of unknown judges, untested jurisprudence and the unpredictability of forum shopping.
In terms of preparing ourselves, Mathys & Squire has been lining up the litigation expertise that we will be making available to our clients. We are bringing together our internal experts along with high-quality trusted resources from outside the firm.
Can you tell us about some of the biggest pressures acting on your clients right now – and how you are helping them deal with these?
At the risk of repeating myself, clients really should not underestimate the importance of preparing for the UPC and opting their rights out of the new system. It is a daunting logistical task, but it is one of the most critical issues they should be dealing with now. We are trying to make the process as smooth as possible for our clients. Other than that, life sciences is one area where we most acutely feel the competing pressures of the ‘first to file’ patent system, and the need for patent applications to contain as much exemplification as possible to show that an invention works as claimed. We are hoping that the EPO’s Enlarged Board of Appeal may give clients some good news on this before the end of 2022, when they consider how much weight can be given to post-filing data that supports plausibility of an invention.
What is your proudest achievement of the past 12 months?
As the leader of Mathys & Squires’ life sciences team, I am pleased with the high-quality work that we have been doing and the way our clients appreciate it. All of our recommendations in directories such as this one flow from these relationships. Rather than any specific case, I think that is probably my biggest source of pride this year.
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 Patent1000.