What inspired you to pursue a career in intellectual property, and what advice would you give to others considering a similar path?
I started law school during the discussions that led to the TRIPs Agreement. The zeitgeist supported the interplay between globalisation, intangibles rights and trade, which all made sense to me and echoed sentiments of how I wanted to better dedicate my studies to regulating and protecting intellectual property. The system was to be borderless, considering preoccupations from creators and innovators alike regardless of nationality. This notion of a limitless practice still incentivises my interest in intellectual property. I dove deep into it and it has amazed me for more than 25 years.
What are some common mistakes that rights holders make when enforcing their patent portfolios in Brazil, and how can they avoid these?
On the one hand, they undervalue Brazil’s relevance and that of other emerging economies. On the other hand, they overvalue the importance of the law they know. Emerging markets are only sometimes relevant components of IP strategies. Timing is crucial; things change and by then, it could be too late. Novelty, market head starts and positioning may be gone, making the path to success harder, more expensive and less predictable.
Creators and innovators must realise that IP systems may share a standard floor but have different ceilings and structures. What works in the United States, Europe or Japan may not work in Brazil or another developing jurisdiction. You can feel foreign innovators’ frustration when they face a local obstacle that is non-existent in their countries of origin – under what I call the ‘law they know’. Often, foreign clients dedicate too much time and effort mirroring enforcement strategies used elsewhere. While identifying similarities is a good thing, it is vital to appreciate nuances. Critical differences should be considered, such as substantial contrasts between civil and common law systems and the role played by public interest.
What are the biggest challenges facing your clients in the life sciences at present?
From a pragmatic perspective, the state of patentability dynamics and the underestimated relevance of intellectual property to the judicial system.
The Brazilian Patent and Trademark Office (INPI)’s actions and focus on tackling backlog must be applauded, commended and promoted. The outlook is brighter, but we are not there yet. Innovators still face a time and finance-consuming route to patentability. Courts must continue to evolve their understanding of the relevance of intellectual property. More specialised IP courts will deliver more balanced awards – the subject is at risk of receiving sub-prime assessment if judges must divide their time among IP cases and other consumer or commercial angles. In 2023, more IP questions were included in the examinations of new judges. This is epic and evidence that things are evolving!
From a more political perspective, foreign clients face twists of protectionism and stalled regulation discussions that could evolve the IP system. Intellectual property is still largely assumed to be a government issue rather than a national policy. Regardless of the political spectrum, intellectual property should be assessed and implemented as a major tool for developing Brazil’s potential as an R&D player, mainly with regard to all bio-related matters, such as biodiversity, genetic resources and bio-inputs.
How do you measure the success of an IP strategy?
Generally, I focus on evolving a client’s quality portfolio growth and better monetisation. In 2023, an extensive portfolio only means high costs. Volume and figures may impress companies and investors while they remunerate consultants, yet efficiency is critical. I believe that dropping applications (or administrative challenges), liaising with INPI and streamlining portfolios are the battles that clients should choose.
Once, as I tried explaining such a strategy to a client, I referred to a dessert that you plan on making and eating yourself. Instead of focusing on what you know you want (ie, one piece of dessert), you need to consider ingredients, kitchen mess, freezing, receptacles, energy and a comprehensive set of items for something you might not need (or even enjoy). In brief, planning is reasonable, with focus throughout.
From another angle, customer and market appreciation are key. I have seen very well-placed clients doing business primarily based on trade secrets and high-calibre patentees needing help to make it. An IP portfolio will be as successful as its needs for the relevant market. The ability to appreciate the market's volatility is critical, as are the skills to pivot the plan as soon as practicable. Stubbornness and rigidity can be the downfall of an otherwise well-thought out IP plan.
What are your predictions for the future of the patent space in Brazil, and what are you doing to help clients prepare?
I am optimistic. The outlook is good, especially for IP prosecution and licensing. INPI is continuously evolving its focus toward efficiency. It has secured vocal support and sponsorship from relevant stakeholders in President Lula’s government, including the vice president. INPI is also making legislative efforts to make its finances autonomous and robust. It has lifted decades-old constructions that limited the right to license unpatented technology, such as know-how or confidential information. By raising this ban, INPI may have unblocked business opportunities.
With regard to challenges, I will bet on all bio-related hurdles on the litigation side. We must acknowledge that sciences are reconnecting to biotech, so I am anticipating a flurry of activity in biologics, biosimilars, bio-defensives, bio-inputs, GMOs and genetic resources. At the same time, enforcement challenges will increase. Hopefully the judicial system will be better prepared to address them.
In your view, what are the key characteristics of a world-class monetisation strategy?
While the definitive formula may not exist, we may learn from a history of successes and failures. Like the stair-building carpenter who knows where they will end up, a company may take one step at a time, but can never plan each step individually or on the go.
Let us take emerging markets as an example. Often, clients will discuss IP protection in these markets when their priority markets are matured or saturated. Usually it is too late by this point, as patentability criteria are gone, signs have been acquired by third parties or enforcement challenges will drain their energy and resources. A company successful in its monetisation strategy may have different markets than its commercial priority, but it makes a list with regard to protection. It prosecutes rights in markets it expects to engage in the years to come.
I like to think about what I call the ‘PPM’ strategy. Plan, protect and market. IP protection must be carefully considered as priority zero during the planning phase. However, companies may invert this logic and instead implement an ‘MPP’ approach (ie, market, plan and protect). They will defend intellectual property only in countries with – or when they identify – compelling market opportunities, such as effective licensees or distributors. While we must acknowledge the costs of a comprehensive IP strategy, companies sometimes fail to recognise that well-placed intellectual property is not cost but investment, increasing solutions' appeal, value, and ultimately, price.
Benny Spiewak manages the firm’s IP and life sciences practices. He frequently advises government agencies, trade associations and private clients on interplays between life sciences, international trade, regulatory law and IP matters. Mr Spiewak teaches health law and IP and innovation at the certificate programmes of FIA and Oswaldo Cruz Foundation in São Paulo. He has an LLM in IP law from George Washington University.