What has been your proudest professional achievement to date, and what makes it stand out? 

Of course, I am always thrilled whenever we secure patent rights for a client – especially on foundational technology – but my proudest moment to date occurred early in my career. I was collaborating with a great team on a worldwide litigation matter on behalf of Conor Medsystems, a small company developing a drug-eluting coronary artery stent. We had devised a strategy challenging several competitor patents in various jurisdictions in response to their threatened infringement actions. One case was brought in Australia and we identified a unique entitlement error in a competitor’s patent, which we believed irreversibly rendered it invalid. The court agreed with us (Conor Medsystems Inc v The University of British Columbia, 2/2006, FCA 32). Interestingly, the IP Laws Amendment (Raising the Bar) Act of 2012 revised Australian patent law with respect to entitlement, directly addressing the issue that we identified in Conor Medsystems and allowing for correction when necessary. 

You work with a broad range of clients, from start-ups to international corporations. How do adapt your approach depending on the type of client you are dealing with? 

Obviously each client is unique and comes with its own special needs, but one of the biggest differences between our start-up and established international corporation clients is our extensive interactions with multiple aspects of the start-ups’ business. For example, we are routinely involved in chemistry, manufacturing and control decisions, regulatory strategies and agreement drafting and negotiations. Comparatively, while we certainly have similar interactions with our international corporation clients in these areas, our role is not as prominent, given their in-house expertise.  

What is your take on SEP holders using the International Trade Commission (ITC) to obtain injunctive relief, and should they factor this into their litigation strategies?

I support SEP holders using the ITC to obtain injunctive relief in appropriate circumstances – for example, when an infringer refuses to negotiate a FRAND royalty in good faith or unreasonably delays such negotiations. Without such a vehicle, an infringer is less motivated to enter good-faith negotiations. Further, robust enforcement of SEP rights – including through injunctive relief – incentivises participation in global standards development, especially given the short lifespan of many of these patents due to technological advancement.  

Previously, you told IAM that a shift in the US pharma and biotech sectors towards a broad-based licensing model for foundational technologies was on the horizon. Has this come to fruition, and how are you helping clients to adapt their licensing strategies to the current landscape? 

We have not seen this model come into existence yet. I certainly thought that the battling CRISPR patent portfolios would have been particularly appropriate for such an SEP/FRAND-type licensing model, but Vertex Pharmaceuticals’ ability to navigate the morass in commercialising exagamglogene autotemcel makes such a model unlikely for these portfolios. If this model does come to fruition, I think that we will see it first in foundational biotechnologies developed using US federal funds, as US policy makers continue to focus on how to maximise value from the use of such funds. As I previously relayed to IAM, SEP/FRAND-type models may be particularly suitable to maximise value for foundational biotechnologies. 

What recent decisions or legislative developments are having the biggest impact on patent prosecution strategy in the United States right now? 

Undoubtedly, it is the scope and reach of obviousness-type double patenting (ODP) to invalidate patents from the same family that have received patent-term adjustment (PTA). In Cellect, the Federal Circuit held that a patent filed later with a later expiry date due to PTA can be invalidated for ODP over earlier-filed and earlier-expiring patents in the same family. In Allergan v MSN, the Federal Circuit further clarified that a first-filed, first-issued and later-expiring patent cannot be invalidated for ODP by a later-filed, later-issued and earlier-expiring patent with a common priority date. Thus, it was established that the first-filed and first-issued patent in a family sets the “maximum exclusivity for the claimed subject matter and any patentably indistinct variants”.  These cases have prioritised strategically ordering which claims are pursued first and attempt to maximise potential PTA in the first-filed patent for the most valuable claims.