In “How to craft a powerful IP strategy,” Mathys & Squire Partners Sean Leach, Posy Drywood and David Hobson draw on their extensive experience across a range of industries and clients to explore how to manage your intellectual property the right way, either as a fledgling start-up or a more seasoned corporation.
They cover a range of topics centred around the crucial importance of patent applications, including managing the filing strategy evolving over time, from investment to protecting the market share, determining the commercial viability of ideas, and how to balance effective drafting and costs.
You can listen to the episode on Spotify here.
Episode summary
Topics discussed🎙️
- Engaging with clients as a patent attorney, from startups to seasoned companies, and the importance of building a strong relationship and understanding each client’s technology.
- Expert advice on developing an IP strategy, from tailoring a strategy to a specific field, such as AI where the technical effect is harder to prove, to managing long timelines and R&D phases.
- How to draft a successful patent claim, balancing a comprehensive depiction of your invention and not losing your main argument.
- The trick to balancing cost, quality and long-term protection, and how to ensure money isn’t lost further down the line.
- The importance of mapping patent portfolios to your business goals and the market, so that your IP strategy evolves with your company.
Key takeaways💡
- IP strategy evolves with your business: Startups may need broad early protection to attract investment, while mature companies should focus on specific strategies to leverage their IP for further commercial gain and to stand out from competitors.
- One size doesn’t fit all: Tailoring your approach by sector, technology and business goals is critical. A powerful IP portfolio should reflect your product roadmap, geographic reach and commercial priorities, not just your inventions.
- Get close to the tech: The best patent strategies come from deep engagement with your patent attorney and the attorney understanding your technology; for example, by visiting labs and asking questions, a patent attorney could spot patentable inventions founders may overlook.
- Drafting is everything: Strong, focused, well-supported applications are cheaper to maintain and easier to defend. Cutting corners on drafting will just create problems later on.
- Data drives defensibility: In fields like chemistry and AI, credible technical data isn’t just helpful, it’s essential for patentability and enforcement.
Notable quotes🔊
- “There’s a temptation at the outset when you’re writing a patent application to throw the kitchen sink into it and throw every tiny detail in. But that’s a terrible idea, because then your publication timeline will be your own worst enemy. So you’ve got to think ahead. Understand enough about the prior art to know what you need to disclose to get the protection you need, but then have an eye for, when you come to implement this idea in practice, what’s going to be commercially necessary.” – Sean Leach, IT & Engineering
- “I’ve been in the lab or at the bench with somebody looking at something they’re developing and seen something that looks a bit unusual and asked, what is that? And then the conversation which comes from that leads to something of real value, which, if you didn’t have that relationship with them, you would never have identified.” – Sean Leach, IT & Engineering
- “Saving on the drafting costs, nearly nine times out of ten, is a false economy. The number of times then that prosecution costs have doubled, tripled because you’re arguing over points that were poorly drafted.” – Andrew White, IT & Engineering
- “The key is to engage. We live in the client’s story with them and have a passion for their success.” – David Hobson, Life Sciences & Chemistry
- “If you get a business to draw a picture of how their business works on a piece of paper and they draw it on a product basis, then that’s probably a really good way to think about how you might structure an IP strategy. If they draw it on a territory basis or different operations in different countries, then that might be your starting point, because the IP strategy should always reflect the business strategy.” – Posy Drywood, Life Sciences & Chemistry
