As a partner at Mathys & Squire, what makes a strong patent team and how do you go about building one? 

A strong team requires open communication, trust and mutual respect. As a team leader, I endeavour to put these values into practice and encourage my team to do the same.  I try to be mindful of my own weaknesses and look for opportunities to improve. One of the most important and rewarding aspects of building a successful team is nurturing and supporting colleagues to grow and develop to their full potential. This requires a holistic approach, focusing not only on honing their technical and legal skills, but also their own leadership and teaching skills. Hopefully it goes without saying in 2024, but the importance of creating an inclusive working environment where everyone is treated with dignity and respect and is free to bring their authentic selves to work cannot be overstated. 

How have attitudes to IP monetisation shifted over the last 12 months, and how do you expect them to change in future? 

Funding for healthcare-focused biotechnology increased in 2024 compared to the previous year. However, funding for pre-clinical technologies tightened. This suggests that prioritising advancement of existing assets to the clinical stage is important for attracting investment in the current climate.

Biotech companies have become increasingly sophisticated in their approach to intellectual property, and adapt their strategies to give them the best chance of success given current investment trends. This is likely to be reflected in their IP strategy as they look to bolster their portfolios around existing assets. However, innovative companies will also be mindful that funding drivers must be balanced with securing their intellectual property for the future.

You have experience in a wide range of subject matter within the biotech and life sciences spheres. How do you stay abreast of the latest developments in such a fast-moving space?

This can be challenging! However, it is crucial to my clients that I stay on top of fast-moving technologies and legislation surrounding their protection. 

Luckily, I have always been a magpie for science and enjoy keeping abreast of new innovations. Current hot topics include precision medicine and advanced therapies and the adoption of AI in biotech. I am often lucky enough to be involved in the very early stages of new and disruptive technologies, meaning that I can learn about cutting-edge science in real time as it develops.

Further, jurisprudence can develop rapidly. It is important to draft and prosecute applications to allow for flexibility in case of unexpected developments. I strive to maintain an extensive knowledge of global IP practices and a strong network of attorneys with the necessary legal skillsets in other jurisdictions. 

In a world where more assets are not patentable, how do you communicate the significance of trade secrets to your clients?

Balancing the roles of trade secrets and patents in protecting intangible assets can be tricky, particularly for SMEs. SMEs can feel pressured by potential investors to have ‘hard’ assets, and find it difficult to persuade them that an IP strategy reliant on trade secrets can be a strong and valid strategy. However, overreliance on trade secrets – without understanding their limitations – can also cause problems. 

It is crucial to help companies understand trade secrets – in particular, when they are an appropriate form of protection. It is also important to help companies establish robust trade secret policies and procedures, given that in the world of AI, more subject matter may need to be protected in this way. The goal is to help clients develop a strong multi-faceted IP strategy. 

If you could change one thing about prosecuting patent applications in the United Kingdom, what would it be, and do you think it is likely to happen? 

I’m not sure what I’d change! Prosecuting patent applications at the UK IP Office (UKIPO) can offer several benefits. It is often much quicker than EPO prosecution and offers good value for money. UKIPO examiners are often more open to informal discussions and their approach to inventive step is less rigid. For example, arguments based on the relative age of documents and the commercial success of the invention can be given more weight at the UKIPO than at the EPO. My SME clients will often look to prosecute their first (priority) filing at the UKIPO, as obtaining early grant for a UK patent can lend credibility and make them more attractive to investors.