Contact Ian Bryan Founder Assimilate IP E: Ian@assimilateip.onmicrosoft.com Tel: +44 777 616 0259 www.assimilateip.com About Ian Ian is a PhD biochemist, a European and UK patent attorney and founder of Assimilate IP which provides IP training and consultancy services. With more than 25 years of experience as an IP professional, working both in private practice and in-house in healthcare, he specialises in supporting SMEs, particularly in the life sciences sector. Ian takes pride in helping clients develop their IP strategy, manage their patent portfolio, conduct freedomto-operate analyses, and license their IP. He is also a firm believer that a thorough understanding of IP principles is essential for anyone in a leadership or advisory position for tech-based companies and enjoys giving open and in-house training. An FTO analysis is a risk mitigation tool aimed at avoiding timeconsuming and costly litigation. WWW.LAWYER-MONTHLY.COM 41 The FTO analysis should not only minimise the risk of costly litigation but can also be used to reassure investors. The analysis can prove a rich source of technical and competitive information and can even identify potential licensees and/or partners. Conducting a robust FTO search and analysis early in the R&D phase will help define the product or service offering and allow time to devise a strategy to avoid any blocking third-party patents. As highlighted above, this may involve redesigning the product or service so that it no longer infringes the patent claims, negotiating a licence, or challenging the patent. The strategy may involve pursuing two of these activities in parallel. What advice would you give to startups regarding early-stage patent protection and the importance of securing licensing agreements? Life sciences startups should not rush into filing patent applications but should think carefully about their IP strategy, which may include other IP rights. It may be that trade secret protection would prove more valuable than patent rights, depending on the technology and product lifetime. Patents, patent applications, and trade secrets can all be licensed to third parties if generating early revenue is key to the IP strategy. If patents are the most appropriate form of protection, then early filings could be critical, provided there is sufficient experimental data to support patentability. This is particularly important in life sciences, where experimental results, such as physicalchemical data and biological test results, are required to support the patent claims. In this respect, the use of the priority system to allow extra time for experimental studies throughout the convention year should be considered. SMEs should be cautious about filing any patent applications before they have supporting data, as there is a risk that the application will be refused for lack of sufficiency. If this does happen and the application is published, then they will have disclosed their invention without being able to gain any protection. Generally, a patent proprietor can expect to negotiate more favourable financial terms from a licensee for a granted patent than for a pending application. However, one advantage of securing a licence agreement for a patent application could be to have the licensee pay all the prosecution fees. A first filing at the UKIPO is attractive due to the modest costs, quality of the examination, and speed to grant, which will be particularly important for SMEs seeking to license their IP rights. Accelerating the examination and, hence, patent grant can also be requested before the EPO and the USPTO. Other factors to be considered are the key territories for filing and whether to file directly in these countries or allow more time to assess the patentability of the invention and its commercial value by using the ‘PCT/international’ route.
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