Lisa Thorne
Partner
Patent Agent & Trademark Agent
Webinaires sur demande
46
Wendy Hurlburt 00:13
Hi, Brian. Thank you very much. Good morning, everybody. It's nice to Nice to be here. I want to welcome you to our annual third annual event presented by Gowling WLG. We have enjoyed this partnership for many years, and we hope you find this session extremely valuable as we commence. Before we get started, I want to acknowledge that I'm joining this meeting from the ancestral, traditional and unceded territory of the Coast Salish peoples, including the territories of the Musqueam Squamish and Tseil-Waututh First Nations. In addition, I'd like to acknowledge that our speakers and many participants are joining from other unceded and indigenous territories across this beautiful province and country. I would like to introduce our new members, if Ryan you could pull up that slide.
Wendy Hurlburt 01:14
I may. Okay, here we go. Thanks, Peter. So, what we've started to do at many of our excuse me events is acknowledge the new members that have joined us. It's great to have them on board. So our new members that we want to draw your attention to today is a BM response by a medical electro mate, the University of British Columbia School of Biomedical Engineering, new generation microbiome action and Versailles cardiovascular. So welcome to everybody. Now, moving on to the program. I'd like to introduce our speakers, they're all going to turn their videos on as we start. So the first person I'm going to introduce is Brian Kingwell. Brian is a partner at Gowling WL G's Vancouver office practicing in the firm's intellectual property and life sciences groups. Brian advises clients across a range of sectors and industries including healthcare biotechnology, agriculture and energy. With over 20 years of experience in focusing on packet patent prosecution and strategic patent portfolio counseling. Brian uses a creative and resourceful approach to maximizing the benefits of intellectual property for his clients, helping them recognize risks and capitalize on opportunities. Thanks, Brian, for joining us. I look forward to hearing what you have to say on the panel. Everyone's going to be very keenly interested. Our next person is Edith pente curettes. She's a charter patent attorney and European patent attorney also practicing at Gowling WLG Life Sciences team in Vancouver. Prior to joining Gowling WLG. He has spent six years practicing in the UK. She uses her wealth of international patent prosecution experience to help clients develop effective strategies to promote their intellectual property across the world. Her clients range from individuals to large multinational corporations working in a right wide range of fields including chemistry, biochemistry, and molecular biology. Thanks Edith. Next, we have Lisa maybe Lisa wave. So Lisa Thorne is the partner in Gowling WLG. Vancouver office also practicing in the firm's IP and life sciences group. She works with clients ranging from small startups to large multinational corporations, and provides clients with a product driven approach to the protection of their IP assets worldwide. She's managed global IP portfolios and prepared opinions that have formed an integral part of the investment due diligence conducted by many companies regarding acquisitions in transactions and then allocating corporate resources. And Lisa is going to be the moderator for this webinar. So thanks for taking on that role. Lisa. And our final panelist is going to be Ben Thiede. Ben is a registered US Patent Agent and Senior Business Development Officer at Stem Cell Technologies. Ben has over 10 years of scientific research experience in both academic and biotechnology in industry settings, and comes in fields as pharmacology, regenerative medicine and developmental biology, then uses his extensive experience and background to bring new scientific ideas to the marketplace. So without further ado, please join me to turn it over to you and we look forward to a great discussion.
Lisa Thorne 04:38
Thank you, Wendy. And good morning, everybody. Before we really delve into how we conduct FTO analysis and IP landscaping, I think it would be worthwhile to take a step back and talk a little bit about how we integrate and how different companies integrate intellectual property issues and intellectual property concerns in an innovative company. So how do you make IP a part of your corporate culture? Ben, would you like to start us off on this on these thoughts?
Ben Thiede 05:22
Sure, Lisa. So, I guess, speaking more from my experience, not necessarily from stem cell. But having a good IP culture is very key for a very innovative company, especially since you're going to be in a very highly competitive marketplace. And we have all if you have a lot of scientists and your R&D coming, a lot of the scientists don't have a lot of experience in reading patents, I mean, they may be very good at knowing about transcription factors and CRISPR cast nine, but when it comes to reading claims, it's a very different kind of language. And I'm coming from a scientific background myself, I can know how challenging, challenging it is to really understand patents and IP. And so in order to really be to be effective in managing and controlling your IP, you have to have a very good training culture. So whenever you have a New Scientist, or new employees coming into your company, it's very important to kind of just go over the basics and training and then routine training, offer me different kinds of opportunities for people to engage the experts. I myself will meet one on one with some of the leaders in R&D, or research and development group. And I've come across many kind of misconceptions. And I can try and have conversations with people and navigate them through the complex world of intellectual property and patents.
And, Brian, do you have based on your experience with different companies? Do you have anything to add to that about, you know, maintaining that employee engagement? I'm, I know, quite often companies rely on free lunch, to keep seminar attendance off and those sorts of ideas. Do you have any further to add on this point?
Yeah, it's but I think it's a theme, I think we'll probably end up returning to a few times today that freedom to operate is really a process. It's not a single exercise. And that process happens in the context of a culture and affirm. And we're talking about mitigating risks that arise because of innovation. And so the closer the IP function can be to where the innovation happens in a corporation, the more the more likely, you're going to be effective in identifying risks as they happen. And it's an extremely serious challenge. It's quite obviously different from the actual mechanics of a particular FTO exercise that may be defined in terms of a product. It has everything to do with the way the culture and the policies of an organization are organized. And I do think it's worth over emphasizing how important that is to having a successful risk mitigation strategy in terms of freedom to operate. So that sort of, I think, lends context to the individual comments about how you how you make that happen in an organization, I think it should also lend emphasis to the amount of time that gets spent on it. I think it's easy, easy to imagine, as IP professionals or IP professionals working within the context of company that others will know something about these risks and pay attention to them. But I don't think that that's true. And, Ben, I know you're not speaking from the perspective of stem cell, specifically, but I do think you've got a very interesting perspective on how to make how to make the IP function as close to the innovation function as possible. Yeah,
I mean, when it comes to freedom to operate, it's it's much more important to invest resources on the prevention and protection rather than on the cure. So like you said, it's not about preventing risk. It's about minimizing risk. And we were like, it's important for your people in IP and business development roles to work very closely with your people who are in innovative and scientific funds to ensure that there is a close marriage make sure that there is nothing that we are we can minimize our risk upfront rather than worry about cross crossing lines later down the road.
Yeah, it's a it's an it's an interesting process because I think it is one that happens organically as the company develops And the products during becomes more crystallized. Like I had a case where I actually attended at company facilities to talk about bringing IP and the innovation closer together. So people could start thinking about, you know, as they're working on their R&D projects, you know, what are the risks? And what are others in the market? What are others in the market doing? In terms of like, formalizing that process of FTO and accumulating, you know, references and having somebody sit down and go through that? When do you initiate that process? What are some of our thoughts on there?
Um, I mean, I guess it depends on the culture of your company, like, there's some companies that do a lot more research than development. And so on those kinds of cases, they may be doing a lot of freedom to operate and doing some kind of like patent landscaping to see where their areas they may innovate. And then other companies, they may do more development of technologies that already exist and research them. And so in those kinds of cases, you're looking to bring in some kind of exciting technology. And so when you discover a potential kind of asset to bring in, then you have a kind of a more clear picture of what you're looking to, to commercialize on. And then you can look more specifically around that area. But it's important to know like fringe operate is not just of the product at the end of the day, like when you do freedom to operate, you have to look at all the components during the internal research and development, the commercial use is one marketing is another. And so the way you market and position products you got to worry about as well. And it's not also the end package as well, that you have to break everything down into its component parts. And it's a very complex process that from my job is to kind of shield some of the scientists from all this kind of stuff, but to be aware of all the minutiae of everything that's going on. And I kind of forgot some of the original question, did I enter it?
Yeah, yeah. He does. Do you have comments on, you know, the initiation and ongoing and crystallization of freedom to operate opinions and, and looking into those issues? Yeah, I mean, as we were saying that some, it's really important to have those coming back to the education, the foundations for everyone involved, so that everyone is in the product development process is aware of the risks. And so these discussions happen earlier, rather than later. So you don't get to the end of the development road, and then realize you have issues and education sessions are a really good way to start these discussions and maybe highlight any risks involved. So you can decide where to move forward. And whether that be internally like I do stem cell have lots of internal education sessions or externally, I got into companies and given overviews on you know, yeah, just understanding patents and, and what freedom to operate is and risks like that, and how to search. So having that early on is really important. Maybe even for smaller companies having and having freedom to operate might be when you're looking to fundraise or to get investment might be the first thing that investors looking at maybe even before patentability. So it's definitely something that you should look at early on. Yeah, and it also becomes a balancing act of resource allocations. So, you know, you see a massive multi million dollar investment and a new facility and you need to take a scorch the earth approach. But then other times, it's much more targeted, the number of competitors are more or known or more I identified, or you may have particular in house expertise on a certain area. And then what are some of the tools that you've used in conducting some of these freedoms operate? Analysis? You know, do we rely on Google or sort of the approach of documenting and keeping records?
I mean, you don't need anything fancy to do for free and operate search. You could get by with guest Google patents. There are a lot of there are a lot of tools out there that are available. I know Brian uses pet snap, and is very useful for finding patents and IP, just discovering those and then you can drill down through the actual us pair. For me, I don't use anything particularly fancy. And it's also important to know to know not everything will be in a patent database. And patents aren't published for the first 18 months. And so it's also important not only to look at patent literature, but also look into the scientific literature as well to see what's been published recently, because there could be unpublished patent applications out there that you need to be aware of and look, being aware of all the kind of technical innovations within the past year or so is it very important from doing like PubMed searches as well, or looking at all the scientific journals?
Yeah, it's interesting, and Ben saying you don't for most cases, you don't need anything fancy other than keyword searching like Google patent or Basnett. But there are the other page tools like Pat snap, where you can do more sophisticated searching like sequence searching and structure searching. And we're also trialing another artificial intelligence searching tool called an alpaca, which is more of a semantic search, which where the algorithm guesses your keywords and you teach it to go in the right direction with we're looking at that at the moment as well. And then, a question for Ben maybe is often patents searching gives quite large datasets, and what how do you manage those large datasets? And what kind of tools do you do use internally?
Um, I guess we still don't use anything fancy. I guess. I don't I just wade through it using my own kind of intuition or something. Sorry, I don't have a more specific answer for you. Well, let me let me turn around Edith, what kind of you use when you have these really extensive data sets when you do your IP searches?
Yeah, we use pops up has some analytic tools that you can gives you some nice pictures of how a patent landscapes are changing or how they develop and you can Yeah, but it's, it's, it's useful. There are some limitations, obviously, um, Lisa might have an example of this. Actually, we were discussing this in preparation. And we did a quick search on the tool for Coronavirus, just to see patterns citing Coronavirus, and looked at the analytics of B. The application trends. Yeah, so you can see 2004 When SARS was a big thing, and then in 2020 Well, 2019 but quite a few new applications. 2020 A lot of people having Coronavirus applications published early perhaps. And you can see 2021 and 2022. Maybe the algorithm hasn't quite doesn't know we're in a pandemic. But tools like this can be really useful in general. And in terms of also another resource that I that I think is also important to keep in mind is the tremendous internal expertise of the R&D Group and the scientists, because sometimes I think some follow up questions are always worthwhile. I've had cases talking to inventors, where you start to probe a little bit and the response, you know, in their mind, it's easy. But to everybody else, it's really hard. That, you know, that sort of knowledge that scientists carry is quite an incredible tool that, you know, asking questions of, of have, you know, different papers and different patents that have been identified, asking R&D about it. They can provide some very quick insights so you can see if you're headed in the right direction or not. Brian, do you have any more to add on this context that I think we what we've been talking about are various layers of analysis in the sense that there's a very large scale for landscaping analysis that can be part of freedom to operate which gives you a sense of who competitors are and what space they occupy and allows you then to choose, in some cases strategic direction For to direct your innovation into areas where you're, you've got good reason to believe this, there is freedom to operate. And so that's a very large scale, look, look at a landscape and then burrowing down all the way to the most granular you end up, of course, looking at individual patent claims. And so it's a multi tiered kind of exercise. And for each of those tiers, there are different tools that are well suited for that.
Now, we just had a question come in that would feed into this discussion as well, as a company's going through this exercise and, you know, identifying where there may be room to operate. Or don't want to be or too much of our freedoms operate topic that we've had a question about, what about, you know, when do you have a product that could be patented, and I that reveals itself, as you find holes in the landscape, as you're going through this exercise. Now say for as a different situation, you come across and you start seeing that your target area is quite populated. And you're looking at a situation where you may need to license in various technologies. How do you go about initiating those outside licensing inquiries?
Since I'm probably the only one in the panels that does licensing, I might as well answer. But I guess it's a reaching out to the patent holder, the license holder and often the case, it may be another company, it may be an academic institution, a lot of innovation going on at universities around Canada, and the US and all around all around the world. And if you're a company that does more development than research, you may be looking for these kinds of new discoveries, new patented technologies, to bring in to commercialize and for, for that particular purpose, it's reaching out to them to see if there is a license available. And typically, if it's a university, that's, that's what their goal is, is try and get technologies out into the marketplace. And usually, professors and universities aren't in the business of making products. And so they're looking for people in biotech and pharma, who are going to take on their, their patents, and make a product in a day for the public benefit, then it's there, they're looking for us more often than we're looking for them sometimes. And it's it's a lot of reaching out. And in my experience, too, you'll start having conversations with universities and or industry. And you'll ask them if they've done a freedom to operate. And from their perspective, they don't, they almost always say yes, we have complete freedom to operate. But really, it's it's all on you as the licensee to do your due diligence and never take what I hear from licensed or that they have and operate without doing some kind of analysis on my own.
Think to put in a plug for outside counsel here. A lot of organizations, I think, especially smaller organizations that have a limited number of commercial opportunities can feel nervous about having identified potentially problematic IP owned by others, the act of reaching out to that third party carries with it some risk of raising a red flag. And that is, of course, something that has outside counsel we can do without identifying the prospective licensee. So that is a delicate thing for different organizations to handle in different ways. I think that Ben, you've been clear about the exercise being straight forward, in your sense, you reach out and deal with those discussions early on, which is which is a way of tackling issues that might arise in the future, early rather than later. And rather than hoping to avoid a problem early in the innovation process,
we write your right to Brian there are instances where there may be there may be IP out there similar to what you're doing yourself. And those are more delicate kind of arrangements for how you approach them. And like you said, you could put them on to you that you're commercializing in their space and then they may not want to pet license to you and then you have to really have a different kind of strategic focus going forward from that point. So I can see why it's sometimes it'd be good for people to reach out to Brian kimberleigh goaling to do their business for licensing business for them.
And in terms of reaching out to licensing partners, at what stage of product development, should we should companies start thinking about this? You know, before you've invested too heavily in R&D, and you've spent a lot of money and you may not get the contractual relationship you're looking for you get into this very difficult situation. Um, you know, does anybody on the panel have comments about timing?
I would say it's a case by case basis. But it also there's a lot of factors that will play into it like for one, is your product you're developing? Or if you look at the claims of the potential patent, are you able to work around that bend? or invent some kind of solution that's not infringing? And if so, then maybe it's not as much of a risk to contact them early on? Because if they don't want to play fair, then you could, you could always start going in a different kind of direction. But I think, I think, if you know that there's some kind of IP that blocks your goal. I think kind of having an idea of whether or not you can overcome that IP, or that blocking IP early on is pure advantage. Because I wouldn't want to spend a lot of resources developing something at the end of the day, you will not be able to commercialize I guess.
Any? Yeah, he does. I know you've had some thoughts about using licensing negotiations as a chance to go a little bit more on the offensive against against some existing prior art and patents that are pending, which is another thought to keep in mind with licensing negotiations. Yeah, it depends what your relationship is with the third party and how aggressive you want to be. Situation Lisa referring to I was involved in one client in the UK who was in some licensing negotiations with a third party and they were dragging their heels a lot, and it wasn't really going anywhere. And in the meantime, we did a validity search on the patent in question and filed in opposition to the European patent and then ended up having their patent revoked. So I think if I'd known that they might not have been so hard in the negotiations. But yeah, it's case by case basis, as has been said as to what the right way forward is.
Mm hmm. Just curious, do you have any kind of anecdotal statistics for going into a validity search? How many times you might be successful, I guess, just based on your punches, like how many patents you think you could probably find evidence that couldn't validate? It? Is it? Is it like 50%25 5%25?
I'm not sure. Yeah. I couldn't tell you.
Brian Kingwell 28:37
It does, that does highlight the fact that what you're looking at in a in a landscape are a spectrum of patents, often that run from this strong to the weak and claims that run from the strong to the weak. So it's usually the case that most patents have some claims in them that are vulnerable. And also, most patents have some claims in them that are that are pretty strong. I mean, that's that's part of the exercise, obviously, of drafting a good set of patent claims that you run from your most ambitious broad claims to your strongest narrower claims. And part of a freedom to operate exercise is often involves evaluating where on that spectrum, your problematic claim sits so that if your problem is with a broad claim, and there are good reasons to think that's too broad to stand up, then maybe that's a problem, the risk you're willing to take. Whereas if your problem is with more narrow specific claims, and I think it is often the case that those of course been vetted by a patent office and are often fairly strong IP that needs to be dealt with, within another way and as they are other ways of course designing around is a perfectly legitimate exercise.
I know we've touched on this in terms of a little bit in terms of contractual rigor in licensing negotiations or contractual indemnities. Regarding regarding freedom to operate, I know such indemnities won't necessarily won't be given by academic institutions. But that could also be a negotiation point with non academic licensing partners. And we've also touched as well, a little bit on this. Brian mentioned it, what do you start to look to outside counsel for assistance?
I, I guess I would say it's what you do. When you think about freedom to operate, it's all about risk and depends on what your capabilities are internally. And if you have experiences in an area, you may have a good or if you have expertise in house, you may have a good understanding for what your relative freedom to operate may be. But if you start branching out new markets or doing something new, or there may be a question that's a little bit more risky than normal, you may want to consider reaching out to Brian or anyone from who does freedom to operate analysis. And I mean, it comes with a, it comes with a cost. But I think at the end of the day, it's better to have, it's better to have an understanding of your relative perceived protection against infringement of unlicensed IP rather than have to worry about the cure. And so I'd rather spend, if I, if I don't have expertise myself, I'd rather spend like five to 20,000, whatever it is, to have an expert opinion from people like Brian, rather than have to worry about paying like treble damages down the road.
Yeah, that sounds very good point. And how about, Brian, for you about how to use outside counsel efficiently, to make sure that, you know, for the concern for the company that they're turning to outside counsel for to make sure that they're getting a work product that really meets that need? at a reasonable price as well.
Brian Kingwell 32:37
I guess, ideally, we're actually sort of part of the culture of the company in the sense that we're called upon in ways that optimize our usefulness. And we're anxious not to be a cost barrier in the sense that I think it is, sometimes we sometimes give the impression that if you're getting in touch with outside counsel, that means you're going to go through an expensive FTO exercise of a particular kind. And I think it's it's wise to instead involve outside counsel in a in a range of ways and to be comfortable with a degree of flexibility and how you how you ask the questions, and what kinds of answers are actually useful for your business. And so I think that people shouldn't be shy about involving outside counsel and I'll and a relatively minor wave for early stage discussions about whether or not something might really be a problem or probably isn't a problem. But in order to have those conversations comfortably, outside counsel does have to have a reasonable degree of familiarity with what the expertise is with within the company. So that's, that's my pitch for involving us early in a flexible kind of way and including us in your problems actually have a significantly better way I think, for us to interact, and making sure that we can have the conversations to frame the questions in the right way so that we understand what challenges are and what the goals are.
Brian Kingwell 34:37
I guess we've bounced around this a little bit, but it's something I did want to raise at some point. Today, there is also the exercise of looking at the space when in which this freedom to operate can also lead of course to the your own patent efforts. So So patenting and there is such thing as different pounding. So that's that's worth also thinking about in the context of reaching out to outside counsel as part of your IP strategy, and then I don't be interested in your views on how defensive patenting can work or not for different organizations in different contexts.
Yeah, I think it's a very important point. Whenever you're in a highly innovative area, if you come up with a new discovery that could that is patentable, let's just say, I think it's very well worth considering filing a patent application, just in the sense that you'll be able to prevent other people from practicing what you discover, but also, just to prevent against the potential case that a third party comes up with the same discovery, and then patents and prevents you from practicing your own discovery. I think, yeah, I think it's very critical. And I guess that's also one of my main misconceptions I always hear when I do a scientist, or pretty much any person in general with the pens, is that owning rights to pen doesn't give you rights to practice, within the patent, a patent only prevents you from or only allows you prevent others from practicing as well. And so I often hear that we need, we need to license a patent or we need to file a patent. So we have freedom to operate practice. And, obviously, if you understand how patents work, that's not the case, you only can prevent other people from practicing within your claims. And so we, when we file a defense of patent, we want to make sure that mostly we, no one can prevent us from practicing what we discover, but also so we can prevent our competitors from practicing what we discover as well. But then there's also the trade off too, sometimes, it's sometimes it's better to have trade secrets, and to never really show your cards for how you make your discoveries. Because as you do file pending, you also have to worry about whether or not it's enforceable, and whole different discussion, maybe a whole different webinar.
Brian Kingwell 37:06
And there's a nice historical anecdote, it doesn't have to do with life sciences, I won't tell it but the Wright Brothers ended up in a long patent dispute with a guy named Curtis who invented air ailerons, it's a it's an instructive, exact example of exactly this kind of exercise. Gives you an idea how far back this kind of problem goes, though?
And what about revisiting and ongoing issues? You know, it's one thing, you know, for searches conducted early on, and, you know, you start working in an area, you think, okay, we're feeling that we've got a good handle on the prior art, but then, you know, as research and product or product development meanders, you may end up in a different place. So how do we keep? Yeah, how can companies keep these issues sort of at the forefront? And this almost circles back to our very first question of integrating IP and innovation? Like, do you keep, you know, just the R&D team keep, you know, looking at and prior art, or, you know, do you send a reminder to yourself to keep revisiting how a project is developing?
Yeah, I mean, it's, it's filmed, Robert is not done just once. And then you can just put it, put it in a folder, put it in the cabinet and brush your hands and be it called, call it job done, that you're continuously doing it. And we, we constantly are monitoring the patents, the patents that are coming out in the space, and we have weekly emails about certain kinds of keywords that would target certain areas that we're interested in. And so we're always continuously monitoring the IP landscape to ensure what's going on, see where what's coming and touching on a kind of area of competitive competitiveness and innovation. And also looking for ways that we could that could be opportunities for us as well.
You want to get think about so these search tools you can set up to keyword searches or searches, then they can send you reminders or emails whenever a new person has published with those in with those keywords or that structure. And of course, a lot of the patents you'll find in doing your initial searching might be pending or might still might not be published yet when you do your initial searching. So coming back to it. Patents are published after 18 months. You have to have to read your search after 18 months and then you might I want to keep an eye on some of the pending patents as your product develops, to see where you're falling within the claims that are being prosecuted, and then eventually, which claims are granted. And whether your product is it whether that patents are relevant to your product.
Yeah, I definitely agree with that. I think that's one of the biggest challenges of when you're doing an FTO analysis is evaluating the claims for pending applications and trying to determine what the examiners may allow and what they may not allow. And sometimes you get surprised and examiner's will allow pretty broad claims and send some and then sometimes it's the opposite, where they'll throw they'll be hit the applicant really hard. And so trying to gauge where a patent may go was very challenging, for sure. And that's why you definitely need to continuously monitor how things go through through the, like, the different patent offices
Brian Kingwell 40:52
does highlight the fact that different patents offices around the world offer a range of opportunities for you to interfere with the patent applications of your competitors. So whether it's formal opposition proceedings, for example, and in Europe, or what we call protests in Canada, there are ways in which and yeah, and even in Canada the opportunity to expedite your competitors cases, if you don't think that they stand a good chance of getting a patent, but they're sitting on a pending application are actually ways in which you can force an office to consider that application early rather than later. So there's a range of ways to proactively approach potentially problematic IP.
Yeah, I have a client he's got, they have quite a good search string of keywords that they periodically run. And as new things published, sometimes they're sent my way to have a quick look at and also important for USPTO disclosure requirements, as well. But knowing about this art early on, actually makes for a stronger and more efficient prosecution.
Just taking a quick look at our at our Q&A panel here, perhaps, Brian, you can stab at this one is what is a typical cost range for conducting an FTO analysis. Appreciate that there will be dependencies but a directional idea. And I think that circles back to your point about having a discussion to talk about what the question is, and where a company is in terms of its product development and investment stage?
Brian Kingwell 43:03
Yeah, I think an important aspect of the answer is there is no such thing as a typical FTR exercise. They're all when, by nature, very specific to particular issues. And and the important thing is to remember that there is flexibility there the we're dealing with the mitigation of risk, as Dan said, This is not an exercise that will leave you. And in very many cases, with no risk at all. It's a question about the degree of risk that a business is prepared to take on. And so the FTO exercise is something that you budget for within the context of the desired degree of mitigation that you're after. So that can be everything from a quick phone call to say, what about this issue that gives you some comfort, to a full blown formal opinion in circumstances where you might need that for, for example, partners in a significant investment who want to be sure that what you're bringing to the table has been thoroughly vetted. So I think, like Ben, is, is familiar with that range of ways of asking questions and about being strategic about how you involve outside counsel.
Another question here about jurisdictional issues in FTO. Ben, do you have comments on that about looking at FTO from on a country by country basis?
Certainly, I mean, we when you sell when you sell products all around the world, you have to be aware of all the different jurisdictions and if you're a company headquartered in Canada, can you have to look at what are the patents for making, making and using products or processes in Canada, but then if you're selling in the United States, you have to be aware of what are the patents for importing and selling in the United States as well. And so when most of your businesses in Canada, Europe, you can spend a lot, mostly your time evaluating the pen landscape in those kinds of jurisdictions, and then it's a would be almost an impossible task, I guess, almost to really look at every single country in the world. But I would just say it's, it's, it's how much risk you're willing to tolerate. And if what's your businesses in Canada and Europe, and maybe just you're okay, looking at the patent landscape in both Canada or Canada, US and Europe, and then thrown to the wind, like Australia, Japan, but it all boils down to how much resources are you willing to expend to ensure that you have minimized the amount of risk you're going to face?
Brian Kingwell 46:04
I think that to then, depends upon the degree of formality that you require, in terms of your analysis, in the sense that the pattern of analysis for infringement risks and patents is similar around the world with important nuanced differences. And so you can get some fairly clear answers about the existence or not or degree of perspective, risk and a range of jurisdictions from for example, Canadian Council, if you need a formal opinion about the risks of infringement and China, you will need Chinese counsel to provide that. But it as part of the iterative process, it's hardly ever worth going to the trouble of getting a formal opinion that you have a problem. If, if you're strategic about the kind about the layers of advice that you get, it would normally be the case that by the time you're asking for a formal opinion, you've got a pretty good idea that that's a piece of paper that's going to help you.
I think, another question here about licensing about maintaining the confidential nature of licensing discussions and ensuring those internal discussions, maintain or maintain privilege. So what's not to what you just don't know where things are gonna need? Brian, do you have any comments on that?
Brian Kingwell 48:29
Yeah, Privilege is obviously extremely important. When you get to the stage of having identified something that looks like it may well be very problematic. And when you're getting formal legal advice, and you really acting in contemplation of litigation, and so there, there are extremely important nuances to how communication can work between in house counsel and outside counsel in order to observe privilege and how communication works within the company, so that it's important to be aware of that, that I think becomes something then that in house is a another layer in which you need to exercise some education amongst people who are involved in that kind of discussion. You know, that kind of degree of risk doesn't hopefully come up all that often for organizations in the sense that you're dealing with a real threat of liability and and therefore exercising, getting legal advice about that in ways which contemplate litigation but again, and then can talk about how you can manage that internally within a company.
Questions How to manage confident, confidential discussions internally? Yeah. Carefully. Yeah, um, I don't know if I have a really good answer for you, Brian,
Brian Kingwell 50:20
I think carefully is it and, and, and in each case, you will be thinking about who needs to who needs to see the information and why very, very carefully, very carefully,
50:36
right. I'm just looking through a last question we have regarding IP strategies on an on a novel target. But without the drug being developed yet, and a lot of those, as many of these issues are positioned is that it depends. And it depends product development and how you go from, you know, initial targets to product and the prior arts and licensing issues and disclosure issues that come up along the way very much depend on the on the specific on the specific circumstances. And I think a lot of that can be, you can begin to think about what to do by conducting an FTO analysis early on, and being aware of what the priority is, and who else out there could be interested in what you're working on.
Brian Kingwell 52:15
That's an area to in which an analysis of the likely validity of claims often becomes important in the sense that not as much now as in the past, but there'll be lots of cases in which people have made what get called Reach through claims to products based on identifying targets. And in many circumstances, you can reach some degree of comfort that those kinds of reach through claims are unlikely to survive. Enforcement. So really, just as a more general proposition that highlights the significance of looking individually at claims and in many cases, evaluating the merits of that spectrum of claims?
Well, I see we're at our hour is almost up. So I'd like to thank our panel members, Edith, Brian and Ben, for a very interesting discussion this morning that I think raises a lot of issues for companies to think about and, and to plan for and to work with their teams internally on how to mitigate these risks and keep their products moving towards development. So I'll turn it back over to Wendy.
Thank you very much, Lisa, and all the panelists. Very interesting. This is a topic as you have demonstrated very well have one of great complexity that involves a lot of thinking around each potential move that you make, and requires a lot of expertise, both with collaborating with external counsel, as well as leadership with inside a company. So thanks very much. It's, as they say, it's a it's a very technical topic to try and navigate through through a webinar. And I think as you can see from the questions, there's a lot of interest. So thanks for taking the time and the continued support of our sector and life sciences, BC in particular. Just closing off, I want to draw everyone's attention to our future events, which, on October 29, we're doing our showcase series in Prince George, back in the days that we used to actually travel. This involved us going to Prince George and, you know, bringing the ecosystem together to showcase the innovation that is happening in Prince George from academia, research and early stage companies. So the nice thing about it being virtual is it gives the opportunity for people from outside of Prince George to also participate So if you're interested in what's happening in Prince George, please join us. In November we kick off with our annual Investor Summit presented by alumier Ventures. We announced earlier this week, the 32 companies that we'll be presenting, they range from biotech medtech, digital health and some bioinformatics and AI companies. So, hope you can join us with that. We have a keynote speaker from a Aurinia Peter Greenleaf, who's going to tell the extraordinary Aurinia story which should be also really interesting. We then go and do our showcase series in Kelowna. Then a member spotlight with sativa, which will be fascinating. We are currently planning for December to have our holiday party virtually So more to come on that. Then we'll do our showcase series in Surrey. And a little bit farther off to hard to think about January right now. But just to draw your attention to the JP Morgan conference is happening January 11 to 14th and we are going to have our career connected which was an inaugural event last year, which was presented by bio talent Canada, which we'll be doing again this year. So thank you again, Gowling WLG, we really appreciate the partnership. It was a great discussion. And thanks to everyone and I hope you have a great rest of your day.
For any organization invested in research and development, IP landscaping and Freedom to Operate (FTO) analysis can serve as a vital roadmap as you bring your product to life – and finally to market.
Join LifeSciences BC and members of Gowling WLG's Life Sciences Group along with Ben Thiede of Stemcell Technologies, as together they explore strategies for managing IP risks and opportunities in an innovative life sciences enterprise.
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