What are the biggest challenges surrounding licensing or negotiations within new markets, and how can one overcome these?

In new markets, a key issue is uncertainty as to the value of early-stage technology. The most obvious effect of this is on royalty rates, but the question is so fundamental that it impacts many other issues too – not least because it makes the value and effectiveness of core intellectual property difficult to quantify. 

This has a direct impact on the balance of many points in negotiation. How should arising intellectual property and improvements be dealt with? How are costs to be shared? What performance criteria are reasonable to place on the licensee? Who should have the right to control sub-licensing and in which territories?  

There are no easy answers. Both in new markets and well-established ones, a crucial aspect is recognising which issues a counterparty sees as a key risk to them and why, so that those issues can be resolved without compromising your own client’s needs.

As a partner at Mathys & Squire, what does inspiring leadership look like to you?

I have had the privilege to work with several very effective leaders. Some had outstanding charisma and were able to inspire commitment through sheer force of personality, while others led by setting an example of excellence and rigour in their technical and legal work. There is no doubt that, in our industry in particular, charisma and excellence both matter. Colleagues want to work at the top of that industry, do the highest value work and to the highest standard. They also want to have fun and enjoy working with their colleagues because their colleagues inspire and challenge them intellectually. Unbending integrity is also vital – always doing the right thing, without hesitation. Consistency matters, too. Genuinely inspiring leaders need all of these things.

While all of these things are necessary, in my view they are not enough. The best leaders I have worked with also had the emotional intelligence to act decisively and with sensitivity, allowing them to achieve the results they need while treating people with respect. This isn’t just the decent thing to do – it establishes a culture in which colleagues are motivated to excel and treat their team members with that same sensitivity and respect. 

What challenges have your clients faced in the last 12 months, and how did you help them to overcome these?

The perennial challenges, which are all linked, are cost management, ensuring that IP spend is aligned with strategy and clearly communicating that strategy to stakeholders. 

At the root of all three of these issues is communication between attorney and client, and clarity with regard to strategy. The attorney and client both need to know what the strategy is and how to articulate it. Having reached this shared understanding, questions about how much is to be spent, and on what, when and why, can all be answered within the context of the overall strategy.  

In your view, what are the key characteristics of a world-class prosecution strategy?

The key characteristic is success in securing commercially relevant and easily enforced legal rights without wasted costs.

This means filing short and tightly focused patent applications, each directed to a single invention. Patent applications must say just enough to support and enable the claims and no more. With the right care, this can be done in a way that:

• provides a basis for amendment and problem and solution arguments at the EPO;
• supports broad interpretation for claim scope and equivalents; and 
• avoids making any admissions that characterise the invention in a way that might be used to limit the scope of legal rights after grant. 

You cover a wide range of industries in your practice, from medical devices to automotive to semiconductors. How do you keep abreast of all the latest developments in such a diverse array of fields?

I have always had an active interest in technology, so this is the best part of my job – my clients educate me every day.  

Sean Leach

Partner 
[email protected]

Sean Leach works in Mathys & Squire’s IT and engineering team, specialising in electronics, medical devices, network communications and software. His work includes drafting and prosecuting patent applications, as well as advising on IP strategy and agreements for clients including multinational corporations and start-ups. Mr Leach has expertise in dealing with the exclusions from patentability of computer programs, mathematical methods, methods of diagnosis and methods of treatment by surgery and therapy.