In conversation with...Beatriz San Martin, Arnold & Porter

The scientist-turned IP specialist chats to LSIPR about why she ‘loves’ the IP sector, her views on policy and funding in science and research, and the cases she’s most proud of.

While Beatriz San Martin began her career in academic research, she soon followed a path that would eventually lead her to intellectual property law.

Her academic career is no small thing though. San Martin was a scientist with a degree and a Wellcome Trust PhD and postdoc from the University of Cambridge specialising in genetics, cellular and molecular biology.

But an interest in scientific policymaking led to an interest in the IP sector and she is currently a partner with Arnold & Porter in London.

More than 20 years on, her practice encompasses not only life sciences, but also innovative technologies. For example, she is currently working on complex database rights infringement proceedings involving multiple claimants, defendants and counterparty defendants, Genius Sports Technologies & Ors v Soft Construct (Malta) & Ors.

San Martin has built up an impressive body of experience that includes handling cases before the UK Courts and the Court of Justice of the European Union ( CJEU) and specialising in supplementary protection certificates (SPCs).

San Martin counsels on and litigates other IP rights including copyright, trademark, passing off, design rights, database rights and confidential information. Her cases have included pharmaceuticals, medical devices, agrochemicals, insulation products, software, medical imaging and mosquito nets.

“Because of the way that my career has evolved, I've ended up covering all IP rights,” San Martin explains.

“At one point, I thought I might focus just on patents, but I've actually worked on many matters involving other IP rights. At the moment, I'm involved in a significant database rights case, for example.”

Her broad experience gives her a unique perspective on IP because, as she says, she can approach things “holistically”.

“There are a few of us in the IP litigation community, to be fair, that have a biosciences PhD or research background. But I'm interested in innovation and novel technologies generally, and I'm not wedded to the life sciences. I'm really interested in developments such as AI, for example.”

Broad perspective

Rather than becoming a patent attorney, San Martin considered that her ‘soft skills’ or interdisciplinary skills lent themselves better as a solicitor.

She says that being exposed to all IP rights means she can consider things from a strategic perspective more broadly than if she purely focused on, say, patents and litigation.

“In the last three years at Arnold & Porter, I've had more exposure to corporate transactional matters, and also worked with competition and life sciences regulatory colleagues for numerous clients,” she explains.

“Because we work quite collaboratively with other departments and across different offices, I benefit from many different perspectives. And I can see when other areas of law—whether it be contractual, competition, privacy, life sciences—might affect what companies should be considering outside of IP.”

Branching out

San Martin realised early in her academic career that she didn't want to just focus on one small area of research, but wanted to be involved in science more broadly.

“I became interested in scientific policymaking, curiously, and that led to an interest in IP,” she explains.

“Fortunately, I really love the sector. I think it's interesting because it's forever evolving, not only from a legal perspective, but also the technical perspective. You're always faced with and challenged by new things.”

She has also been involved on the policy side through her involvement in a number of trade and industry committees, for example the UK’s Intellectual Property Lawyers Association, which sometimes provides responses to UKIPO consultations, and also through her involvement with the UK BioIndustry Association.

“So in that sense, I feel quite privileged to have been involved in all of those things,” she adds.

Government priorities

There has been a concern in the science and R&D community that the UK government is not prioritising the sector enough.

Withdrawal of funding from Horizon Europe since Brexit, for example, has left a question mark over the whole issue of funding of research and innovation in the UK and has prompted fears of a ‘brain-drain’ of top academics from the country.

And it did not go unnoticed that the new Prime Minister Liz Truss took three months to appoint a new science minister (Nusrat Ghani) to her cabinet.

It is a situation that San Martin, for one, is concerned about.

“I have concerns on a number of different levels,” she says. “The UK historically has been a hub for R&D at the academic level and in the biosciences.

“We have a number of different centres of excellence, for example at the London universities, Oxford, Cambridge, Edinburgh, Bristol—there are various hubs with great expertise.”

Talent pool

But the challenge now is attracting and retaining talent, and funding academic research, she continues.

“A lot of the conversations I hear through my involvement with the BioIndustry Association are about having sufficiently qualified people with the necessary skill-set, which is quite specialised, to continue to grow a particular community in the UK.

“We have a number of areas where we have been leading and should continue to be leading such as synthetic biology and genomics.

“But have we become less attractive because of no longer being in the European Union and the immigration challenges that that creates?

“At the moment, the policy is unclear, because we don't really have clarity on what exactly is being done to address all of those issues.”

Compulsory licensing

San Martin is watching with interest the latest move by the European Commission (EC) to revise the compulsory licensing framework to ensure future crises such as COVID-19 can be tackled efficiently within the European Union (EU).

Currently, EU member states’ regulation for the compulsory licensing of patents is fragmented, says the EC.

San Martin points out that legislation and harmonisation for compulsory licensing already exists, at least for World Trade Organization (WTO) member states, in the shape of the TRIPS Agreement.

“TRIPS includes the ability to seek a compulsory licence,” she says, “although you firstly need to make reasonable efforts to enter into a voluntary arrangement with the IP rights owner. So that's already contained within the agreement.”

She emphasises that what the EC proposed in its consultation and call for evidence needs at least to be consistent with the criteria set out in Article 31 and Article 31 bis of the TRIPS Agreement.

“But despite the fact that you already have a framework, that framework at times leaves uncertainty as to exactly how you implement compulsory licensing regimes across different WTO member states,” she highlights.

San Martin believes compulsory licensing in the EU could have a positive impact on creating greater transparency in terms of the circumstances in which you might be able to obtain a compulsory licence.

For example, this could be achieved by defining what reasonable efforts are in obtaining a voluntary licence; or in a crisis, where you can circumvent some of the TRIPS requirements, defining exactly what circumstances would be considered to be a crisis.

An innovator’s perspective

Following its call for evidence, the EC has now published views from stakeholders having closed the consultation period on September 29.

“The response has generally been one of concern from the innovative sector, given the implementation of the COVID IP waiver, and how that came about,” observes San Martin.

She goes on to say that those in the innovative sector strongly consider that the IP waiver was not the correct way to address the challenge that was being faced in terms of COVID vaccine supply—that is by limiting exclusivity of IP rights holders or limiting the ability of IP rights holders to control how their IP rights are exploited.

“So I think there's concern from IP rights owners as to whether this is merely a way of limiting exclusivity further, as opposed to whether this could be a positive outcome across the various stakeholders and sectors.

“This is in part because, politically, the way the wind has been blowing within the EU over the past decade or more has been towards a move to curtail IP rights as opposed to expanding IP rights.”

Case studies

San Martin considers three cases she is most proud to have worked on:

Vestergaard Frandsen v Bestnet  (2013-2017)

San Martin was involved in this case while at her previous law firm, Fieldfisher. It concerned confidential formulas for the manufacture of long-lasting insecticidal mosquito nets—the largest ever confidential information case litigated in England & Wales.

“That went through various levels of courts of various times, including up to the Supreme Court on a specific issue and back down again, and it included a liability trial and an inquiry as to damages,” she explains.

“We were able to show that the defendants, who were two ex-employees and consultant heads of R&D, had misused our client's confidential information.

“We showed how they had also doctored certain documents that they had filed at court to support an untrue account of their purported product development. It was a lot of work; with litigation, you can have lots of ups and downs, because we had to work incredibly hard for quite a long period of time.

“But it was good, both in terms of developing the law and the learning process. I feel quite fond of that [case], in no small part because of the relationships I developed with colleagues and barristers at that time.”

Eli Lilly v HGS (2010-2015)

San Martin considers herself “very lucky” to have worked on a number of antibody cases for Eli Lilly, initially with partner Mark Hodgson, who subsequently retired.

“It was a privilege to work with someone recognised as a top 10 global patent litigator. He was (and still is) a great mentor—I learnt a lot from him,” she adds.

“I'm a bit of an SPC geek, for good or bad” she laughs. “At the time I'd had some life sciences experience, but I hadn't had that much pharma experience. It showed me that I could apply my knowledge and skill set in different ways and was incredibly helpful to my career development.”

Sandoz v Searle (2016-2019)

“By this point, I had been a partner for several years and was instructed because of my specific skill set,” says San Martin, adding that she was the partner with conduct of the case right from the start until it settled, which coincided with her departure from Fieldfisher.

“It was a slightly bittersweet experience because, by the time of the Court of Justice hearing, we knew about the Brexit referendum decision and that the UK would be leaving the EU, such that I knew that unfortunately it was going to be my last case with a reference to the Court of Justice.”

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