IP: From Intellectual Property to Investable Portfolio

Simon Portman specialises as a commercial contract lawyer for technology companies. He works primarily for the bioscience sector but also advises clients in the defence, software and nanotech industries as well as individuals, public bodies and charities. He advises on a wide range of contracts, including licenses, R&D collaborations, manufacturing agreements and procurement documentation. On the regulatory front he has advised on compliance with clinical trials legislation and novel food applications, as well as freedom of information and data protection issues.

Simon talked to us about the ever evolving world of IP and shares his views on the current trends emerging from early stage science and how he and his clients are positioning themselves for success. 

B&M: Simon, you’re Managing Associate at Marks & Clerk LLP, but can you briefly summarise what your role entails and where you feel you add the most value?

Simon Portman: I head up the Cambridge office of Marks & Clerk Solicitors. I also head the firm’s Commercial Team, advising clients on non-contentious intellectual property and commercial contract issues. I’ve worked in Cambridge, Europe’s leading biotech cluster, since the nineties and clients have ranged from small start-ups to leading universities and big multinationals, based locally, nationally and internationally, engaged in drug development, medical devices, clinical trials and bioinformatics. I therefore like to think I have a good grasp of the sector, its strengths and needs.

B&M: Can you briefly outline Marks & Clerks current service offerings and explain in a little detail how you see your core IP services adding significant value to your clients?

Simon Portman: The Marks & Clerk group comprises patent and trade mark attorneys, lawyers (both contentious and non-contentious) and IP valuation experts. Clients can therefore find all their IP needs met under one roof, both literally and metaphorically. Our fee earners also have a real empathy for their clients’ business needs and an in depth grasp of their technology. We don’t just supply a “one size fits all” approach. Finally, we have offices in the UK’s leading technology clusters and, further afield, a global presence, particularly in emerging markets like Asia.

B&M: How have you seen the demands of your clients change in the last 12 months? Are there particular trends you’ve seen in what clients are asking of you?

Simon Portman: We’ve seen real interest in how clients might be able to structure and exploit their patent portfolios to take advantage of the new Patent Box regime. There has also been a lot of interest, particularly from the US, in the Unitary Patent. On the commercial front, both companies and universities have sought to take advantage of grant funding for R&D collaborations and IP audits. Lastly, VCs are still being somewhat cautious but business angels are turning out to be a useful source of funding so we’ve been helping putting companies in touch with them where possible. It helps that this is a very networked sector – almost incestuously so!

B&M: How has Marks & Clerk responded to these changing demands / trends?

Simon Portman: Obviously, we have to get up to speed with and often anticipate legal and regulatory developments so that we can help our clients prepare for and take advantage of them. Just as importantly, however, with many businesses still suffering from the after effects of a long global recession, we need to help clients make the most of their IP assets in a strategic, well thought out fashion.

B&M: How do you see IP continuing to evolve in the UK landscape? Do you see this differing to what’s going on in Europe and the US?

Simon Portman: Currently there’s a lot of concern about the US regime’s stance on the patentability of natural products. Recent Supreme Court rulings in this area have left the industry very vulnerable as the US has in effect just done a u-turn on the viability of patents in genetics and the ramifications will be felt way beyond US borders. Unsurprisingly, there is going to be a lot of push back from companies in this field – and from their advisors. It’ll be interesting to see what happens.

B&M: What are the key steps universities or biotechs need to be mindful of when preparing their IP portfolios?

Simon Portman: Do proper IP landscaping. Do you have the freedom to operate in that field? What licences might you need from third parties? Also, don’t waste money filing willy-nilly. Restrict your applications to those territories where there will be a market or where you will be manufacturing. At the same time, don’t be too narrow in your outlook but look ahead; think of the territories and markets you might one day move into and not just of today’s. Finally, from day one run a tight ship and, in the case of start-ups, act from inception as if you want to sell the business. It will make the due diligence process that much painful when you go through a round of investment or a company sale.

B&M: What are the key factors in your mind that make for successful IP discussions, collaborations and negotiations? How important is the need for an appreciation of the IP asset?

Simon Portman: Do your homework not just on the technology but also on the other side’s team. If you get a bad feeling from any pre-contract negotiations and it doesn’t go away, the chances are that, if you sign on the dotted line, the project won’t go well either. So don’t be afraid to pull out if you have persistent misgivings. To smooth the path during negotiations, identify your champion within the other side’s organization and cultivate him/her but, at the same time, have a substitute lined up in case of a change of staff.

B&M: What are the most common oversights or incorrect assumptions you encounter when dealing with clients around IP?

Simon Portman: “There’s no point in applying for patents. We could never afford to sue infringers anyway.” Not true. Most companies will at least think twice about infringing someone else’s rights. In any case, a small company’s aim will often be to license out to a big one that can take on the patent costs. “Patents are all that matter.” Again, not true. Even in a “patentist” sector like biotech, much of a company’s value may reside in other IP like branding or know how or in being ahead of the competition.

B&M: What still needs to be done to ensure UK universities and biotechs make full use of the IP of their assets?

Simon Portman: These days they are mostly pretty clued up on the importance of IP but lack of funding is still a real problem. In the case of universities it would be nice if alumni started leaving money to their university’s technology transfer office instead of a new building or the wine cellar! That’s why universities are getting into knowledge transfer – to get money now rather than just sitting there and hoping that the patent royalties will come in at some time in then future. Biotech companies also face a funding challenge because it’s a high risk sector and venture capitalists all too often display limited evidence of being adventurous or having capital. The fact remains, though, that these universities and companies are developing products and processes intended to treat diseases and improve quality of life so they have to be helped to succeed.

B&M: What is the single biggest opportunity for Marks & Clerk at the moment? How will you realise this opportunity?

Simon Portman: Taking advantage of the emerging markets which are now no longer just sources of IP or manufacturing expertise but also of funding and custom. With our plethora of overseas offices and foreign associates in Asia and South America we are well placed to take advantage of these opportunities.

B&M: Conversely, what do you see as the biggest hurdle or challenge to realising that opportunity? How could you see the Marks & Clerk addressing those challenges?

Simon Portman: Needless to say, the above opportunity has occurred to our competitors too but I like to think that, with our breath of reach and depth of expertise, we are one step ahead.

B&M: What is the one golden piece of advice you would offer to a university or biotech in relation to executing an IP strategy?

Simon Portman: Despite the strong temptation, don’t cut corners at the beginning just to save funds, time and effort. Doing things properly and enlisting lawyers, patent attorneys and other industry experts to help you all cost money (so by all means get an indication of costs and be judicious) but, if used properly, these advisors will save you money in the long run. Getting it right at the outset is cheaper than hauling these people in to sort out a mess further down the line when it may be too late.

This interview was taken from our August edition of Drugs & Dealers magazine. To read more great articles, like the above, from The Crick Institute, Imperial Innovations, Edinburgh BioQuarter, UCL Business, Isis Innovation, Cancer Research Technology, The Wellcome Trust, Coller IP, J&J Innovation, BBSRC, GSK, Apposite Capital and Silicon Valley Bank Download it for free and become a Biotech and Money subscriber.

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