Managing Patents with Investors in Mind
10th December 2009
Isis Enterprises's Dr Samantha Gallagher explains how life science companies can follow the model of large companies when tackling their patent strategy.
Intellectual property is a core tool for life science commercialisation, but strategic thought and planning is required in designing a patent portfolio around the invention, to protect not only the core idea, but safeguard a broader potential market opportunity.
Managing Patents
Many academic patents have historically been designed to protect an idea, without understanding the commercial product arising from the invention and the development process or pipeline required to bring the invention to market.
In a worst-case scenario, this lack of understanding can limit the market potential, or more importantly, not protect derivative marketable products.
Isis Enterprise applies a number of strategies for its clients concerning IP strategy and management. For life science in particular, a model adapted from large life science organisations, designed around platform technologies is applied. Right from the start of the patent protection and management process we work closely with patent attorneys and scientists to strengthen their knowledge of the target markets, identify the ways in which the invention may be used, and maximise the output from the patent or patent group. This powerful combination of expertise helps to translate a great invention into a great marketing opportunity.
Short term wins
Life science patents rarely end up as a gizmo to take to market; they tend to have very long and expensive product development paths. Therefore to make the technology more attractive, it is important to look at what has been developed around the core idea and maximise this potential with respect to protection and development to market. If there are short term wins from the patent portfolio, then the patents become more attractive for the long-term development.
For example, a drug candidate can be looked at for assay potential in the areas of diagnostics and screening. Biomarker development and structural information can also lead to molecular design protection.
Cleaning up IP
This strategic approach to patenting is extremely important where the freedom to operate space for an invention is ‘busy’.
With the complexity of international collaborations, researchers moving between institutes and students participating in research there will often be a history of disclosures, different inventors at various times, or a number of corporate or institutional entities involved. It is important to dedicate time to working out how an invention is protected, and how to protect new inventions with this background in mind. This again works best with the involvement of the patent attorney, the academics and the commercialisation team from the beginning of the process.
Best foot forward
Isis Enterprise works with companies to make sure that the patent portfolio information they present to investors is clear and commercially appealing. The key is to approach patent strategy with the investor in mind from day one, and make sure that the patent portfolio is designed to support a stable company structure.
