Maria Nichol, Galapagos
7 December 2017Biotechnology

LSPN Europe 2017: What in-house counsel want

Attendees at yesterday’s Life Sciences Patent Network (LSPN) Europe conference learned exactly what in-house counsel want when it comes to private practice lawyers.

The importance of business development cannot be overlooked and interactions at conferences can prove vital for future relationships.

For Maria Nichol, vice president of IP at Galapagos, it’s important to tell her something she didn’t know before. “When something comes up in that area, there’s someone you naturally think of,” she said.

Receiving prompt responses to requests also ranks highly.

“It doesn’t happen so much anymore, but historically, I’d have to wait two weeks to get a comprehensively drafted letter,” explained Nichol, adding that lawyers should respond by phone.

“The more formal the relationship is, the less it works. We’re looking for something easy.”

Steve Ward, lead patent attorney at Syngenta, added: “The problem with using outsiders is that it doesn’t save all the time you might expect it to save. You have to guide them … there’s a running-in period.”

For some, it’s about the private practice lawyer fitting in with the company’s ethos, although this can be a bit difficult to find, according to Ward.

Martyn Andrews, head of IP at Oxford Nanopore Technologies, wants lawyers who recognise that IP is a business tool and who take time out from the technical level and engage at the business level.

He added that US lawyers are more exposed to patent litigation and so tend to have more commercial awareness.

Nichol was speaking earlier about portfolio management, saying diversity and flexibility are two important features of a portfolio.

For small biotech companies, focusing on commercial expectations is important because of budgetary constraints.

Companies on a limited budget should consider what is the minimum protection it can have, she said, posing questions including “what do you need to have so that IP is not a deal breaker?” in licensing deals.

When it comes to marketing a product, the situation changes, with questions such as “what are you marketing—single or multiple compounds?” becoming important. It is also good to consider other options including open innovation, where open access and publication are the primary goals, not exclusivity.

Nichol said that the in-house team retains control for managing the company’s portfolio, but this does create a larger burden on them, “so you need the resources to manage that”.

In order to manage external costs, she advised providing clear instructions to agents and ensuring that minor formalities are completed in-house.

Some of the challenges she faces include changes in focus, in territories and in purpose (eg, licensing versus marketing), so it’s important to build flexibility into the portfolio. But on the plus side, she has discovered a “surprising number” of jurisdictions where patents can be resurrected, delayed and extended.

LSPN Europe was hosted by Life Sciences IP Review.

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