LSPN Connect: Invention harvesting
In the fast-paced environment of life sciences, the need for the IP sector to take full advantage of potential and emerging innovations is paramount, as a LSPN Connect session discovered.
The panel, moderated by Life Sciences Intellectual Property Review (LSIPR) group editor Tom Phillips on Thursday, September 10, explored approaches to invention harvesting, how to fully exploit innovations and identifying what to patent ( watch here).
Participants included Catherine Eckenswiller, legal counsel at VBI Vaccines, a biopharmaceutical company that is developing a next generation of vaccines to address infectious diseases and oncology. Catherine Lemay, assistant general counsel at medical cannabis company Hexo, and Natasha Jones, commercialisation manager at the University Of Kentucky.
The session explored how the COVID-19 crisis has posed significant challenges for IP teams working with organisations that have been confronted with unprecedented pressures and expectations.
“I’ve never seen science move so fast in this business,” said Eckenswiller, who agreed that working remotely during these strange times presented potential pitfalls for IP teams. “The risk is that you could miss a piece of information that may cause you to miss an angle for invention; that you might not get a piece of a [patenting] puzzle that’s crucial,” she said.
The panel also discussed how trade secrets posed one of the biggest challenges to IP teams working in a creative invention development process. “Identifying trade secrets and then tracking them has been a challenge,” said Lemay, who stressed that the best ways of tackling this problem was by introducing IP education throughout the organisation.
She said: “It’s about making sure people are aware of their confidentiality obligation, as well as the importance of having non-disclosure agreements in place, protecting information, discussing what type of measures would be considered reasonable in light of the different tests for trade secrets.”
She added that the COVID-19 situation has made organisations more vulnerable, emphasising that liaising with HR teams to establish an effective onboarding process and exit process, as well as IT teams, was also pivotal in ensuring the protection of trade secrets.
Eckenswiller noted that there was a general sense of heightened security around IP, pointing out that in Canada, trade secrets around vaccines are considered a matter of national security.
Maximising creativity
The roundtable also explored how invention harvesting should be a process designed to maximise the creativity of an entire company, involving all employees in the process to come up with possible inventive ideas. Lemay emphasised the importance of personal interaction, and conducting reviews of developed and developing innovations with research and development (R&D) teams.
“I’ve established links with various groups around the organisation,” she explained, adding that it is vital to ensure that IP teams circumvent any initial opposition to having a lawyer present in meetings. “I got myself invited to regular meetings with the operations team. That was quite challenging because they were so busy, so convincing them that there will be IP generated at that stage was also a bit of a challenge.”
She added, however, that it was necessary to convince research teams of the value of having an IP team involved. “I did it through IP education, by giving them concrete examples of what some of our competitors had done for patent applications. So I educated them on the type of the IP they could be generating and how they could approach it,” she said.
The panel agreed that getting the full backing of leaders within the organisation can also play a key role in successful invention harvesting. “We have full support from the top of the organisation. The message has been clear that IP has been a very strategic aspect of the business. So it is a lot easier to convince people when you have that,” said Lemay.
The panel also tackled how to adopt the right approach with researchers and academics, who, Jones pointed out, can have different mindsets to IP lawyers.
“A lot of faculty researchers see research and teaching as their primary jobs, and they don’t think about innovation, and how something they have developed in their lab can be developed or translated into a product or service,” Jones explained.
Brainstorming and focused mining sessions are also crucial in ensuring collaborative and successful teamwork in a creative invention harvesting process, noted the panel. “The challenge is to keep people engaged in the IP process,” explained Eckenswiller. “People tend to relax after the first filing but, actually, sometimes the data that comes afterwards is really critical,” she said.
She added that encouraging brainstorming throughout all stages of the process was crucial to encourage various organisational teams to understand the IP angles throughout all stages of the invention process.
The panel also explored what to do with the inventions and how to take them forward once they were harvested. “We have to follow them to see how that particular technology is working out if it is something the company is going to advance,” said Eckenswiller.
“We have to make sure that we are investing in areas that are of commercial importance, and in what parts of the world, as we move from provisional to national cases.”
LSPN Connect is the membership programme for the Life Sciences—to watch on this session and for more information on joining, visit www.lspnconnect.com
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
Avanci secures dismissal of Continental antitrust suit
