16 June 2015Big Pharma

Life Sciences Law Forum: a sneak preview

James Horgan, legal director of European patents at Merck Sharp & Dohme (MSD)
What is your day-to-day role at MSD, and what projects are you working on at the moment?

The team of patent attorneys here is responsible for prosecuting the vast majority of MSD’s patent applications in Europe, and that includes defending oppositions against our own patents and filing oppositions against third parties. We also file large numbers of supplementary protection certificates (SPCs), and there will be a lot of those in a year when there are a number of new product launches.

On top of this, we get involved in some of MSD’s patent litigation in the UK and Europe, as well as supporting business needs with due diligence and general patent questions.

I sit on a number of industry committees and, as you would expect, issues surrounding the introduction of the unitary patent and Unified Patent Court (UPC) are taking up our time. It is important that these initiatives work well for our innovative industry and we are working on practical matters that will support their successful introduction.

What are the main points you’ll be discussing at the Life Sciences Law Forum?
I’m chairing the conference so I am looking forward to listening to the views of the speakers on the various topics on the agenda. I am very interested to hear from Judge Richard Hacon on how the Intellectual Property Enterprise Court is faring, and how he sees its role after the introduction of the UPC. I have a particular interest in second medical use claims, as they are currently a hot topic.

I also look forward to posing a few questions to whoever is speaking on SPCs. Despite, or perhaps because of, the continual flow of Court of Justice of the European Union judgments there are always interesting conundrums that come up on these rights.

What are the biggest challenges facing in-house patent counsel in the pharmaceutical industry this year?
Undoubtedly getting ready for the introduction of the unitary patent and UPC. This cuts across all industrial sectors. We are getting closer to the commencement of the UPC and a lot of thought will need to be given to whether, and how much, to opt out of its jurisdiction.

For those choosing to opt out there is significant work needed for generating a complete list of intellectual property rights in advance of the start of the court. More particular to the pharma industry are the guidelines being produced to implement the Nagoya Protocol.

Once these are set there will be a need to implement cross-functional record-keeping within companies to ensure best practice is followed so that IP rights can be secured.

Anthony Kenny, assistant general counsel at GlaxoSmithKline (GSK)

What is your day-to-day role at GSK?
I provide support to the following global functions: real estate, tax, finance, treasury, procurement and communications. I help with the delivery of projects and the resolution of issues arising from day-to-day business activities. I especially enjoy supporting the work we do in collaboration with charities such as the King’s Fund and Save the Children.

What are the main points you’ll be discussing at the Life Sciences Law Forum?
I will be on a panel discussing effectively managing collaboration. Both my day-to-day role and my project work involve cross-functional collaboration between legal, tax, finance and the business, and between internal and external legal advisers.

I hope our panel will discuss the practical ways such collaboration can be achieved and the important role legal plays in managing and implementing collaboration to achieve important strategic business objectives.

What are the biggest challenges facing in-house patent counsel in the pharmaceutical industry?
I am not a patent counsel but I believe the biggest challenge facing all in-house counsel is finding the right balance between being a guardian of the business (in an increasing regulated world) while also being a business partner. It has never been a more exciting time to be a lawyer.

Lawyers have visibility of all aspects of a business and we have a real opportunity (if we are prepared to accept the challenge) to step up and be more than just lawyers.

As someone who doesn't specialise in IP, is there anything patent related in the life sciences industry that you find particularly interesting?
I am not an IP specialist but, as for most lawyers, it has been a key aspect of all my roles. I have negotiated IP licences and issues from the perspective of both customer and supplier. Although I still get involved in negotiating IP issues, I often defer to the expertise within GSK’s patent and trademarks teams.

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