Torys’ Tips™: What you need to know about IP
By Eileen McMahon and Karen Townsend
As cross-border IP lawyers, we work with life science companies across the entire industry. We guide clients through every aspect of intellectual property, such as creation, acquisition, and the management and protection of IP rights.
Unsurprisingly, how you structure your IP strategy will depend on various factors unique to your organization and business plan, however, there are common considerations that each company should keep in mind.
• The first step to an IP Strategy at a small or medium-sized enterprise (SME) is to determine the budget that you have for IP. What is the budget for this year? What is the approximate budget for the next few years? These are data points that must be factored into your IP strategy.
• A sound IP strategy might include a decision to defer filing a patent (while maintaining the confidentiality of an invention). Filing a patent for every innovation within your company is a costly strategy and you want to ensure you are filing for inventions that you expect will be valued by investors and competitors.
• Remember any disclosure of your invention (e.g., at a conference, in an abstract, as part of a Q&A in a business meeting) could harm you if the invention has not been covered in a patent application.
• Deal with any IP ownership issues early (e.g., get assignments executed as soon as the patent is filed, or the branding is created). This will help keep your IP budget in check down the road.
• There are invariably pros and cons to each IP decision. The best you can do is to do your homework and make a decision that is right for your company, based on the data points available to you (including the IP budget).
• There is a lot of information that is publicly available that can help inform your. decisions on IP strategy. What patents are your competitors filing and in which countries? For the “big players” in the therapeutic class you’re working in, look at what scope of patents they are seeking and in which countries they are filing. All of this information is publicly available and should be part of your homework.
For more information on the work Torys does to support life science companies, reach out to our team.
Eileen McMahon is a co-founder of the intellectual property and food and drug regulatory practices at Torys. She represents the entire spectrum of companies on regulatory clearance and intellectual property protection of products. Across sectors—including life sciences (pharmaceuticals, medical devices, natural health products), agribusiness, consumer products and more—Eileen helps clients identify, protect and leverage IP and regulatory assets, obtain and maintain market exclusivity, handle high-risk situations (corrective actions, recalls, regulatory orders), and navigate the impact of current and proposed laws on clients’ ability to sell products. Eileen also has market-leading experience with patented medicines and the oversight of Canada’s Patented Medicines Prices Review Board (PMPRB). Eileen also represents investors and companies looking to finance or invest in companies with intellectual property and regulatory assets, as well as companies looking to acquire or divest such assets.
Karen Townsend has extensive experience advising clients on pharmaceuticals, biotechnology, food and drug law and intellectual property issues. She brings deep technical skills to clients’ work in therapeutics, molecular biology, immunology, regenerative medicine, personalized and precision medicine, vaccines, and drug delivery systems, making her go-to counsel for patent protection issues of all kinds.
Karen has substantial experience in all aspects of patents, including drafting and prosecution, and regulatory issues relating to acquiring, maintaining, and defending patent rights. She also provides advice on risk management of intellectual property and regulatory matters. For investors interested in life science companies, Karen assists in evaluating technologies and intellectual property portfolios.
Karen is a registered patent agent in the United States and Canada. Having worked in the United States previously, Karen is one of a handful of patent agents residing in Canada who has passed both the U.S. and Canadian patent agent exams and is allowed to represent any applicant before the United States Patent and Trademark Office and the Canadian Intellectual Property Office.