Early indications are that SMEs are embracing the Unitary Patent System... attracted by the benefits it offers in terms of cost, broad territorial coverage, and pan-European enforcement. WWW.LAWYER-MONTHLY.COM 39 be used defensively, should the patent proprietor threaten action against you, or offensively in a revocation action. If the latter, a decision should be made as to the best forum for the challenge (e.g. the Opposition Division of the EPO, the UPC, or the national courts). In your experience, how important is patent licensing for SMEs in the life sciences, and what factors should they consider when negotiating licences? Licensing can be extremely important for SMEs in life sciences, either from an FTO perspective or as a means of generating revenue. Many SMEs in-license patents for FTO for their products or services, while others out-license their patents to generate income because they lack the resources to exploit them. It is essential that SMEs considering either in- or out-licensing patents conduct their due diligence before approaching patent proprietors or potential licensees. SMEs considering in-licensing IP should be clear that they do require a licence under the patent(s). Some of the key questions they should consider during due diligence include: Are the patent(s) in force? Are they valid? Is it possible to ‘design around’ the claims? Do they need an exclusive or non-exclusive licence? And, perhaps most importantly, what is the maximum price they are willing to pay for any licence? SMEs as potential licensors should consider whether they are willing to grant exclusive or non-exclusive licences, how much control they need to maintain over the patent portfolio, what restrictions on the licence are non-negotiable, and critically, the minimum income they would expect from the licence. How do you approach supporting SMEs in managing their patent portfolios effectively, especially with limited resources? Before you can support an SME in managing its patent portfolio, you need to understand its IP strategy and the significance of the patent portfolio within it. If the SME does not have an IP strategy, then you should assist in formulating one and agreeing on a process for implementing it. The patent portfolio may be only one of its IP assets; others, such as trade secrets, designs, copyright, and trademarks, may be equally as important. The next step is to review the patent portfolio with the technical and business
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