24 May 2021
Fiona Law, Partner at Potter Clarkson, and David Lancaster, Partner at Pinsent Masons, sat down with CIC’s Michael Anstey to discuss the importance of an IP strategy and how to effectively monetise an established portfolio of patents.
Fiona is a Partner at Potter Clarkson. She is an experienced patent attorney predominantly working with UK SMEs, investors and entrepreneurs in the Life Sciences sector. She has extensive experience helping companies create and shape their IP strategies and worldwide patent portfolios. Her work with investors makes her ideally positioned to test the strength of a business’ IP strategy and assess whether the IP is adding value to the company. Fiona has guided her clients through multiple fund-raising rounds and partnering processes, helping them raise well in excess of £200 million in the past couple of years alone. She was recognised as one of Management Today’s ’35 under 35′ for accomplishments in intellectual property. Fiona is a pharmacologist and chemist by background but has worked with all kinds of technologies in the Life Sciences sector, including everything from cell therapeutics to digital health. Contact Fiona
David is a Partner in the IP team at Pinsent Masons LLP in London. David has an undergraduate degree in biochemistry and a PhD in biological chemistry. He regularly advises innovator, generic and biologic companies on a wide range of contentious patent matters. David is a qualified barrister and represents clients in proceedings before the UK courts, particularly in cases relating to innovative biologic medicines and biosimilars. He is often involved in the co-ordination of multi-jurisdictional patent actions before national courts in Europe and at the European Patent Office. David regularly provides strategic advice relating to pharmaceutical product launches together with freedom to operate and due diligence advice to clients in the Life Sciences sector. Contact David
Watch the Q&A:
My business is early stage, when is the right time to call you and discuss IP?
How do companies pick a patent attorney? What should they be looking for?
As companies start to think about budgets and how much to allocate to protecting and growing IP, what would be a typical cost?
What are the most common pitfalls that entrepreneurs and early stage business fall into when they are thinking about IP?
A question that is hotly debated is when to file patents, especially on composition of matter?
The other topic that gets hotly debated is geographic focus. Are more territories always better or should you prioritise certain territories?
How do you determine how much emphasis to put into ‘freedom to operate’ at various different stages?
When entrepreneurs are speaking to investors like CIC, they often ask what is IP due diligence and what are investors looking for. Can you help paint a picture of what that process looks like?
How can a company most effectively monetise a portfolio of patents?
What are some other strategies that companies can take as they seek to maximise the values of their IP portfolio?
If a small start-up has identified another company, large or small, that is potentially infringing on its patents, where do they start?
What are some of the emerging trends and options for enforcing patents across different territories in the EU?
Have there been any recent important trends or novel approaches for IP litigation?