Panel: Biotech Industry Executives Shine Light On Their IP Management Strategies

“IP is a very crucial part of our business and I can’t imagine being in biotech without a very strong emphasis on intellectual property,” a biotechnology industry executive said during a panel organised at the World Intellectual Property Organization yesterday.

On 28 July, senior executives from three biotech small and medium enterprises discussed their firms’ emphases on innovation, collaboration, technology transfer, and IP management. The spoke at a side event to this week’s 22^nd session of the WIPO Standing Committee on the Law of Patents. The event was the first in a series co-sponsored by CropLife, Innovation Insights, and EuropaBio.

Marjan Frick, vice president of legal affairs at KeyGene, shared a case study on DNA Fingerprinting Technique, which was developed at her firm more than 20 years ago. “With DNA Fingerprinting it is possible to screen the DNA of a plant and connect the differences you see in the DNA with the phenotypes of the plants,” explained Frick.

With an intellectual property portfolio encompassing more than 50 patent families, Frick said the firm uses a combination of patents, trade secrets, copyrights, and trademarks to protect its portfolio.

Frick concluded by making a plea that it is essential for them that their IP rights are not only recognised and enforceable, “but also that they are legally accepted throughout the world.”

When licensing a technology to other companies, Tom Saylor, non-executive director of Arcelor Ltd., emphasised that a licensee will look at the strength of the IP of the licensor.

As such, IP strategy of his firm involves an ongoing process of training scientists to make them more IP aware, recruiting someone internally whose full time responsibility is IP management, continual review throughout the formulation process, and regularly leveraging their patent advisers.

Saylor highlighted the significant cost of IP maintenance as a challenge for his firm. He emphasised that they spend about “25 percent of our overall turnover” on IP.

Emil Pot, founder and general counsel of ActoGeniX, shared his company’s journey from formation to getting acquired by Intrexon Corporation in February 2015.

“Our mission [was] to establish a dominant IP position in the field of oral delivery of proteins and peptides via non-pathogenic micro-organisms,” explained Pot.

To meet that mission, ActoGeniX’s IP strategy was focused on new filings on platform technology, and obtaining first and second medical use claims on their lead products, according to Pot.

He cautioned that having a monopoly in the market has a downside as well, primarily because “you need to make the mistakes all by yourself” as no other companies are working in that field.

Rishi Dhir is an intern at Intellectual Property Watch. He holds a Juris Doctor with honours from the University of Ottawa, Faculty of Law. He also holds dual Bachelor Honour Degrees in Mathematics and Business Administration from the University of Waterloo and Wilfrid Laurier University. Rishi has an interest in a variety of IP issues including copyright law, piracy and Internet governance.