Lisa: Good day and welcome to our discussion on Strategies for Building an IP Portfolio in the Life Sciences Sector. My name is Lisa Thorne and I am a partner in Gowling WLG's Vancouver office and my practice focuses on patent prosecution and patent portfolio management. Presenting with me today is Jayde Wood.
Jayde: Thank you, Lisa, and thank you everyone for tuning in. My name's Jayde Wood. I am an IP lawyer, a patent agent and a trademark agent based in our Vancouver office. My practice focuses on the strategic creation, development and commercialization of IP assets. One thing perhaps is interesting about me is that prior to becoming a lawyer I was trained as a microbiologist and because of my science training I enjoy collaborating with life sciences companies to create business value by leveraging their innovative creation.
Lisa: So today Jayde and I are going to discuss five practical tips for building an IP portfolio for growth. Let's discuss our first tip. What this tip is, is to implement an information management system to protect the valuable confidential information, know-how and trade secrets and to address ownership issues, particularly early on. So, Jayde, what do you have to recommend to companies in the life sciences sector, relating to this tip?
Jayde: Oh 100%. I think we are 2 and half years into the COVID-19 pandemic. The value and importance of life sciences and bio-tech sector has been highlighted tremendously. Really this sector has been the center of research and development efforts in responding to the pandemic. The value of IP is more apparent today compared to ever before. So when we think about IP protection, and how we go ahead and obtain IP protection, it really goes to the bottom of it. IP, intellectual property, is essentially the creation of the mind and the core of IP protection starts with the creation, management and protection of valuable information. Before a company is able to turn valuable information into IP assets, it is really important to protect the confidentiality of such information. So here it is important to have proper non-disclosure obligations in place. Lisa's going to talk about this later on, patent is quite important when it comes to life sciences innovation, and in many countries the patent system has a first to file system. Many countries may have, what we say, absolute novelty requirements. So if someone, the inventor, goes ahead and disclose his or her creation, in some jurisdictions patent protection may no longer be valid. So NDA, I'm sure all of you have heard of it and used it in the past, NDAs a valuable tool to protect the valuable information that your company owns. The second issue is, if possible, it would be really great to address IP ownership issues early on. The basic premise is that the inventors are the first owners of the inventions. Similarly in the context of copyright. Authors are the first owners of copyrighted works. Obviously there are exceptions. So in the context of copyright protection, an employee's copyrighted works are usually owned by the employers. Now when it comes to IP ownerships, if we don't address those issues early on we may run into a situation where many collaborators come together and create something, jointly, and joint IP ownership can be very tricky. Usually it really gives rise to complex legal and strategic issues. Also, between different countries when it comes to jointly created IP, the laws can be very different. For example, in Canada, subject to contrary written agreements between the joint owners, one owner cannot dilute the other owner's IP interest. This may mean you can assign your IP rights to a third party without consent from your co-owners but you cannot grant any licence agreement to a third party without first obtaining consent from your co-owners. In the United States, the laws can be different, so it's really important, if possible, at the beginning of a collaboration project all the parties come together and address IP issues early on. There are so many different types of IP protections, and Lisa already talked about this earlier, and now let's just go back to really the key of today's topic, IP protection. Lisa what are some of the IP protection, types of IP protection, that life sciences companies should be aware of and deploy when applicable?
Lisa: There's a wide variety. We have various forms of IP protection listed here. So patents, trade secrets, trademarks, copyright, plant breeders' rights, for those working in agriculture industries. A lot of this can also tie into your brand and protection of your brand as you move forward. But one of the initial decisions that growing life sciences companies come to us with first is, do I need to file a patent application? A robust patent portfolio can really set the foundation for a trajectory of growth. However, as with anything, it's not necessarily a slam dunk for when a company is looking at where they're at and where their finances are. It's a very common question. Someone will pick up the phone and call us and ask, "Do I need to go through the process of patenting our technology or can we keep this as a trade secret or as confidential information within the company?" The answer here is to weigh the pros and cons of each, and you have to decide how each fits into your overall business plan, and that's a theme that we're going to circle back to a few times today is about your business plan. The advantages of patents are that they are an asset, that is very attractive to potential investors, potential collaborators and potential licencing partners. For a company looking to grow, entering into relationships with these potential partners is key for growth. We certainly saw that during the COVID-19 pandemic, and the development of vaccines, how important cross-licencing agreements were between various companies to deliver vaccines as quickly as we did. A further advantage of patenting is enforcement. What scares people off about filing a patent application? The initial cost can be of concern. Another issue is that filing a patent application requires a full and frank disclosure of the invention. This can be an intimidating proposition for a company that has spent significant time and resources, and put a tremendous effort into protecting their confidential information, and then having to disclose it all can be difficult. We don't have to disclose everything but you have to disclose enough information, in a patent application, to ensure that somebody who else works in the field can make and use the invention. With these concerns about patenting, many companies will perhaps want to keep their technology as a trade secret, within the company.
The advantages here are an immediate cost savings, and we'll touch on what some of the long-term costs can be, and simplicity in terms of we just have to have confidentiality agreements and non-disclosure agreements. However, there are a number of difficulties that can arise, particularly as a life sciences company is growing, they will need to enter into relationships with contractors and subcontractors and various partners, and ensuring that all of those entities sign a confidentiality agreement, to your liking, can be very difficult and with a lot of change and a lot of growth happening, it's easy to miss a confidentiality agreement. It's not unheard of. Another issue is if your competitors are watching what you are doing, if they get a hold of your product, can they reverse engineer it easily? If a competitor can easily reverse engineer your product then maintaining it confidentially within the company and not filing a patent application, that competitor can just go ahead with what you have put significant resources into. What happens even if you have all the confidentiality agreements and non-disclosure agreements, what if there's a breach? What if somebody says something by mistake or something happens, your remedy available is breach of contract, and that process of going through the claim of breach of contract is not nearly as advantageous for the technology owner as being a patent owner. Being a patent owner, should there be an infringement by a competitor, it's a very different remedy system and quite often will result in a settlement or a licencing agreement, or what have you. So you're still receiving benefit from your patent filing.
Jayde: For sure. I think the key message is there are so many different types of IP protection and when it comes to building your empire, when it comes to building your IP portfolio, I think it's important to go back to the drawing board in the sense really take a look at your technology platform. I think have a strategic discussion internally and think, which types of IP protection are applicable? Often they can overlap. Like Lisa said, for certain aspects of your technology, if reverse engineering is quite simple then patent protection would make more sense versus the other side. If something no one will ever be able to solve as to your secret sauce, like KFCs secret recipe, and if you have the infrastructure internally to protect your valuable IP information in that case, then trade secrets protection can be really valuable since it can last forever, as long as you can keep your secret sauce a secret. Lisa, I know we talked a lot about patent protection, and I think for the life sciences sector patent protection is really important. So here are two questions for you. When, and how, should a life sciences company pursue patent protection?
Lisa: There's a great saying in the patent field, and we have it up there, that it's never too early to file a patent application until it's too late, such that your competitor has filed their application first. There's so many considerations that go into the determination of when to file. As you had mentioned earlier, most patent systems around the world operate on a first to file system. So what that means is that the patent rights will go to the company that files their application for the technology first. So what that essentially sets up is a race to the patent office. However, and especially important in the life sciences sector, and we're seeing this in policy decisions as well as court decisions, is that the patent application needs to contain enough data to show how the invention works. I know I mentioned this previously but it's a very important point that we see lots of patent examiners saying that your patent doesn't have sufficient support. A common question I get on this is, does the data need to be in vivo? The answer there is, no. You don't need to have in vivo data but you need to have some data that allows someone who works in the field, and has the common amount of knowledge as they would have in that field, to make and use the invention. Another common strategy that I think a lot of our audience will have seen is you'll see companies, they'll file a first application that is extremely broad that covers a huge amount of terrain in the field, and you'll see subsequent filings where the application itself is much narrower, and it may be directed to certain elements of formulation or preparation. That's a common strategy that we'll see. A first filing that's very broad and then narrowing down to specific technologies. So knowing the success of this strategy, when you're drafting an application, it's extremely tempting to throw in every alternative and variation that you can think of and this is well founded, but be considerate when doing this. Just in case some of those elements that you're putting in, are you going to be conducting specific research to that area? Do you have projects ongoing or in the next year? Are you going to be generating data directed to that element of the invention? Because you may not want that disclosed quite yet. You may want to flush out the data on that point a little bit more, and have your first filing, and then follow up with the second filing when you've got a bit more data. It's a lot of dialogue between various stakeholders in the company and keeping an eye on what your competitors are doing as well. During the COVID-19 pandemic it was a race to the patent office. You have a lot of companies working extremely hard and they will file applications as soon as they can. In other areas, the growth is slower, so you don't see as quick as a number of patent filings. Keeping an eye on your competitors, knowing what they're doing, is important and that ties into our tip number four, which relates to some more specifics about what your competitors are up to. Jayde, I think you have a few comments on that.
Jayde: Yeah, for sure. I think here the key message is be strategic. Don't be reactionary. Tip three and tip four, they're somewhat related in the sense searches can be very useful. It is a useful tool for you to sort of decide on a pathway to your IP strategy. Here one type of searches is prior art search. It's really important to know what's out there already before you invest money, effort and time into a project. It's always frustrating, and it's really not that uncommon for someone to engage in R&D efforts and then decide to seek patent protection, only to find that there is an older patent which covers something very similar, or even identical in some situations. So it's important to do prior art searches which will help you to shape your IP and patent strategy. When it comes to commercialization, and I'd love to hear Lisa's perspective on this point as well, having a granted patent doesn't provide you with a legal right to go ahead and commercialize your patent to the invention without ignoring other people's patent rights. So often we say patent rights are negative rights. So I'm not entirely sure whether it's a shield or a sword at this point, but the gist of it is you can rely on your patent to stop another person from commercially exploiting your invention, but it is not a shield to say, oh look, I have a patent therefore I'm able to practice my invention. An effective IP strategy, in my mind to have in terms of appropriate searches, to have those searches done so that you know what other people have done in the past and you will also know what your competitors are doing. So you see it's important to gain competitor intelligence so that you can analyse the results and the results will provide some reassurance around freedom to operate. Another search is called IP landscape search. So again that's sort of the competitor intelligence you're trying to gain. So Lisa talked about COVID-19 and it's just such a relevant example. Many players are in that space right now. So the COVID-19 space is likely to be quite crowded, so it's important from a business perspective to understand and to navigate what IP rights other people may have because their IP rights, they impact on your commercialization plans. Lisa, going back to you, do you think patent rights are a shield or a sword?
Lisa: Yeah, well to tie in what you were saying about searches, it's important to do your own independent search. Of course when you're going through the patenting process various patent offices will also conduct their search, but they're not necessarily perfect, and having your own understanding is very important in the sense that if you have a granted patent, and you know want to search your patent against a competitor who you believe is infringing, you don't want them to be able to turn around and say, "I don't think your patent's valid and in fact I have this piece of prior art to show it." Understanding your competitor's patent landscape, what they are doing, what direction they seem to be headed in, that can help you develop your IP strategy as well, in terms of whether to file or whether to maintain your technology as a trade secret. I think what this all ties into is our fifth tip which is matching your IP strategy with your business goals. Making sure that what you're protecting via patents, what you have consciously decided to keep as trade secrets, how is that aligning with your business goals in the direction that your business is headed in in terms of product pipeline? Are you going to go out looking to sell your own products or are you going out to look for potential licencing partners and collaborators? The life sciences sector is extremely investment intensive. Many companies, in order to grow, do need to reach out and establish these collaborative relationships and having a robust patent portfolio is very important for that. Or, for certain aspects of technology, keeping it all in-house you're able to manage that and you have sufficient capital to move forward. In terms of matching IP strategy and business goals, what do you think of that tip, Jayde?
Jayde: I agree with you 100%. One of my favourite books is the '7 Habits of Highly Effective People' and I think for our audience who are involved in life sciences, in this sector I think many of you will echo, probably have read the book and you will recall that habit number two is to begin with the end in mind. I use that mantra, not only in my professional life, my personal life, but I also think that makes so much sense when it comes to the development of an IP strategy. I think we mentioned many times the development of an IP portfolio is time intensive. It costs money so often the reward from IP protection may not be obvious at the beginning, at least. It becomes obvious the day where a potential investor walks into your lab who may be interested in investing, where a competitor files for practical protection which may eventually interfere with your business operations. So I think really when we think about IP strategy we do want to begin with the end in mind. So it's important to plan ahead. Once you know where you want to be in 5 years, or even 2 years, and then it's easier to come up with an IP strategy which match your business identity and to help you achieve your business goals. So Lisa talked about different examples, perhaps I can add another example, so here if a company's brand is to foster innovation and to engage in collaboration with different entities, perhaps for that company their IP strategy would have a major component involving patent protection. Perhaps this is because at the end of the day patent protection, it aims to encourage disclosure of everyone's innovation, so everyone else can come in and collaborate and create more knowledge and ensure that knowledge through licencing, cross-licencing and other means of collaboration. Begin with the end in mind. Think about your corporate identity and then your IP strategy will follow.
Lisa: Yeah, I think that's a great way to end our discussion today of our five tips. So thank you, everybody, for tuning in. If you have any questions about what we talked about today, or any other questions relating to IP, please feel free to reach out and thank you very much.