24 Apr IP protection is crucial for business and research
The patent law and attorney-at-law firm Vossius & Partner has been an important partner for BaseLaunch since the inception of the healthcare accelerator in 2016. They advise startups and big corporations alike on IP strategy. Philipp Marchand, patent attorney in the Basel office, advocates to take IP protection seriously.
Vossius & Partner maintains offices in Munich, Düsseldorf, Berlin and Basel. How do you fit in the Swiss and Basel ecosystem?
Our firm was founded in the 1960s, coming to Basel eleven years ago. We have developed extensive and profound in-house knowledge concerning all IP issues and currently represent clients of all sizes from startup companies to big pharma in Switzerland and all over the world. Basel, as one of the most exciting life science locations, is of particular interest to our firm, which has one of the largest life science groups in Europe.
That sounds a bit sophisticated for startups.
Not at all. Our expertise obtained from representing clients of all sizes is a huge advantage for the startup sector. Moreover, instead of considering IP issues in an isolated way, we endeavour to take all possible future developments of our cases into account. This includes considering aspects from other jurisdictions since, even as a startup, you have to be aware of potential worldwide implications right from the start. In addition, we work with our attorneys-at-law to not only protect an invention but also to provide advice on related aspects such as freedom-to-operate.
You are also involved in BaseLaunch. Why is that?
We entered into a partnership with BaseLaunch in order to be closer to the startup community in Basel and Switzerland. We meet with each of the selected companies and review their IP situation free of charge in order to identify potential ways to optimize protection. It is exciting to to be able to offer our expertise more frequently to startups because we believe that they genuinely benefit from our full service approach. If they wish, later they can also enter into a client relationship and benefit from our experience right from the start. Of course, we then have to charge for our services. However, we offer a very reasonably priced system for startup companies and universities.
Why is it worth it to spend that money?
IP protection is crucial in all technological fields and in more than one aspect: It is the only reliable means to ensure that you can make a profit in the long run in different markets worldwide. For a startup company working in life sciences, or any other technological field, the most important type of IP is without a doubt a patent right. Specifically, only a patent grants you the monopoly to keep third parties from using your invention. However, further IP topics are relevant at an early stage, too. For example, a trademark protecting the company’s name or its products that are put on the market can be invaluable. Without trademark protection a startup may be forced to change its name or the names of their products, which can incur considerable costs.
What if a researcher has no intention to commercialize his or her invention right-away?
You might think keeping your invention a secret is a good idea. But in the meantime another bright mind might have the same idea and file for patent protection. Today all jurisdictions, including the US, follow the “first to file” principle, which means that you may have missed your chance and you could even be sued for infringement by a third party for using what you thought was your own invention. We therefore strongly encourage inventors and their employers to file for IP protection as early as possible.
What do I need to protect an invention?
We like to discuss everything with our clients in person to fully understand the potential product as well as its market and its customers. Afterwards, we draft the patent claims, which means that we define the invention and the technical problem that it solves. We file the application text with a patent office, usually with the European Patent Office (EPO) as part of the European Patent Organization of which Switzerland is also a member. One year after the first filing, we can prepare a subsequent application, which covers more than 150 states worldwide. The whole process until an application is granted can take more than five years.
Is there a difference in the importance of IP protection in the life sciences sector compared to other fields?
The biggest difference is the longer product life cycle for pharmaceutical products and the stricter regulations compared to, say, short-lived computer hardware. Also, due to the long product life cycles and general development costs in this sector, patent protection is the only way to ensure that the owner of the patent right benefits first from the invention. With a particular focus on the pharma sector, one should also mention the need to build-up an IP portfolio which not only protects, for example, a drug but also the process of making that drug, different formulations, dosage and treatment regimens and so on. At the same time, you should consider using additional IP rights such as trademarks. Take Bayer who invented Aspirin. The patent for the active ingredient acetylsalicylic acid has long expired, which means it may be widely produced and sold. However, the trademark still ensures that people specifically ask for Aspirin.
Are there any thrifty reasons to advise against filing for patent?
Yes, of course. There are situations where it may make sense to wait with filing a patent application until sufficient data and support has been collected. For example, it may not always be advisable to file a patent for a research platform to protect a screening method for active compounds. This is because patent applications are published 18 months after filing, meaning that everyone has access to the method. In this scenario, it may make sense to wait for the first molecule that emerges from your platform and file for product protection. However, such strategic aspects should always be discussed on a case-by-case basis.
Which misconceptions concerning IP do you sometimes encounter?
Most researchers are aware of IP protection but the execution could be better. One misconception includes the so-called grace period. There is no grace period in European patent law or in most other jurisdictions with the exception of the US, Japan and Canada. After you publicly disclose your own invention by writing or talking about it, you may not be able to obtain patent rights for your invention.
What may researchers reveal to their peer collaborators?
An invention is new if it does not form part of the state of the art, meaning it is not publicly known. Hence, every discussion with a colleague or presentation of a poster at a conference prior to filing a patent application can potentially destroy the novelty. You may think that no one will find out. However, when it comes to money, third parties will leave no stone unturned. Of course, we are aware of the conflict between patent applications and the need to publish academic papers or give presentations. If you are unsure what to do: It is always better to come talk to us before a publication, a poster presentation or any other public disclosure, even on short notice.
One final word for current and prospective BaseLaunch startups?
We are scientists at heart and enjoy discussing science. Our discussions with startups have demonstrated the enormous potential of the Swiss startup sector and the outstanding motivation of their founders. We are looking forward to being a part of BaseLaunch again in 2018.
Philipp Marchand heads the Basel office of Vossius & Partner. After graduating in biochemistry at the University in Frankfurt am Main and his PhD studies at a CNRS institute in Paris, he started his career as a patent attorney trainee with Vossius & Partner in Munich. After the bar examination, he transferred to Basel at the beginning of 2017. Recently, he started to pursue a doctorate in law at the University of Basel. Vossius & Partner is a leading patent law firm offering a full-service concept with legal competence from patent attorneys in every technological sector and attorneys-at-law qualified to practice not only in Europe and Switzerland, but also in the United States, Japan, Taiwan and Korea. The firm employs 55 patent attorneys and 20 attorneys–at-law in their offices in Munich, Düsseldorf, Berlin and Basel.