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What attracted you to the patent profession?

I was based in a very academic lab in an Institute in Cambridge, UK. I really enjoyed the molecular biology and being part of a lab but working at the bench in the late 90s was a very artisanal experience. Experiments would take several days to plan and then might take many weeks to complete manually. Automation was still in its infancy and I probably spent less time thinking about the science than I really wanted to. I was working in a very competitive area of developmental biology too and yet I was interested in so many different aspects of science and technology.

At that time the biotech boom was only just starting and it was unusual for academics in the UK to leave academia to join one of the very few start-ups. I think if it was a couple of years later I probably would have moved into the start-up biotech space as that has been where I have worked, albeit from the perspective of a patent attorney, for the majority of my career.

 

When did you decide that emerging technology companies were who you wanted to work with?

I was lucky enough to train as a patent attorney in an old traditional firm which had a range of clients from the very large pharmaceutical companies through to a few smaller start-ups. There was always a tension, though, between pleasing the big companies and dealing with less experienced early stage start-ups. That firm took the view that the relationships with big pharma companies were significantly more important than with the smaller emerging companies. I felt that even big pharma started from small beginnings, and it's in those early stages that meaningful longstanding client-adviser relationships can be built. I think I do take my work quite personally and I love to see clients grow and prosper and develop over time. I have been lucky enough to witness the full cycle of growth and exit for some fantastic companies over the course of my career.

 

What is it that you like about early stage companies?

I really enjoy establishing the early stage foundations for the IP in a company. If you get it right from the beginning, both by educating the founders of the company and ensuring that they can confidently survive multiple rounds of due diligence then I think I've done my job. I always say to my clients that patents are part of a wide range of different overlapping rights that can protect both their investment in creativity as well as ensure that they gain maximum value from their intellectual input. From time to time I am brought in to sort out the IP situation in companies that have not benefitted from coherent advice in the early days. It can be dismaying to see in these situations how value has been lost and resource has to be spent on recouping a position in a quickly evolving market. Setting things up so that companies can thrive is key. At the earliest stage, most start-ups have very little in the way of fixed assets and are entirely dependent upon their human resources and their intellectual property position to contribute to meaningful valuation.

 

Do you expect to continue working with early stage companies for the rest of your career?

I certainly hope so, the range of technologies that are being developed now and the funding opportunities within Europe, Asia and North America for early stage emerging technologies is amazing. I have been privileged to witness the growth of regenerative medicine, synthetic biology, machine learning as applied to biology, and the new wave of precision medicine. A whole range of new renewable technologies based on synthetic biology, artificial intelligence and novel organic materials also offer enormous promise to tackle the challenges of climate change that we face now and in the future. I think that being a part of this industry is never going to be boring and I really look forward to continuing to learn about new solutions to problems that can help make the world a better and safer place to live.

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We refer to our mailshot earlier this year which discussed the protection of intellectual property rights and the prevention of infringing or counterfeit goods from crossing borders by filing Applications for Action (AFAs) with customs in the UK and EU.

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The EPO practice on selection inventions has developed considerably over the past decade. Two recent decisions of the Technical Board of Appeal are particularly instructive for applicants in the life sciences field. The Guidelines for Examination in the EPO (EPC Guidelines) define selection inventions as those that “deal with the selection of individual elements, subsets, or sub-ranges from a more generic disclosure in the prior art”. The Guidelines address the examination of both novelty and inventive step of selection inventions.

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