IP Cases & Commentary – Details
29 June 2010
From Acorns To Oak Trees - SME Life Sciences Guide
Zöe Clyde-Watson & Lawrence King
Is Your Intellectual Property In Safe Hands?
Are you a Small Medium Enterprise (SME) in the Chemistry and Life Sciences sector? D Young & Co can add value to your business by maximising the value of your intellectual property (IP) rights.
Whether a fledgling university start up or an established SME, developing a well balanced IP portfolio is imperative for companies in the chemistry and life sciences sector.
Securing patent protection for key inventions is often a critical step for businesses seeking to raise additional platform capital from investors and ultimately provides companies with a means to recoup the substantial expenditure required to develop their technology, whether through product commercialisation and/or licensing.
At D Young & Co we recognise the value of IP for SMEs. We also appreciate that in the current economic climate many SMEs are faced with increasingly tight budgets with which to generate, protect and commercialise their IP. Faced with such constraints, we understand the need for commercially-focused, cost-effective advice.
Growing your business
The majority of SMEs in the chemistry and life sciences sector seek long term sustainable growth, be it organically, through mergers or acquisitions, or both. Obtaining appropriate patent protection for key business assets can be a critical driver for such growth.
We have a wealth of experience in advising SMEs and many of our attorneys have in-house experience in the chemical/biotech sector. Whether delivering strategic advice to the Board or discussing the latest R&D initiatives with scientists, we pride ourselves on providing a first-rate professional service that is tailored to your needs.
Are you a fledgling start up?
We can provide step-by-step guidance on how to implement a suitable patenting strategy for SMEs in their infancy with little or no existing IP. We first seek to understand your commercial objectives and will then implement an IP strategy that is fully aligned with these objectives. With a suitable strategy in place, we can assist with obtaining and enforcing IP rights for your technology. We also have experience in handling agreements to cover R&D collaborations to ensure that the ownership of IP generated from joint ventures is correctly apportioned. Our in depth knowledge in these areas means that we can help you avoid some of the pitfalls associated with growing a small company from grass roots.
Or an established SME?
For SMEs with existing IP, we can offer advice on cost-effective portfolio management, assist with the prosecution of existing cases, seek to enhance the existing portfolio through new patent filings, and provide legal opinions to facilitate in-house and third party due diligence work. We also have an enviable track record in proceedings before the European Patent Office Examining Division, Opposition Division and Boards of Appeal, thus we are well placed to provide strategic and practical advice on contentious matters as well.
Maximising the value of your IP
We recognise the importance of maximising the value of IP for SMEs and our attorneys aim to provide advice that is tailored to individual business needs having regard for the budgetary and time constraints frequently faced by small businesses.
We seek to implement innovative and cost-effective filing strategies for our clients, with careful consideration given to the timing of filings, the content and/or number of filings, and the scope of protection required. We also regularly advise clients on best practice for filing divisional applications, 'ring fencing', secondary filings and patent term extension opportunities such as Supplementary Protection Certificates (SPCs).
Whilst IP can play an important role in the success of an SME, it is seldom the sole contributor. Successful businesses require multi-disciplinary teams that work together to achieve common goals. At D Young & Co, we strive to ensure that our advice is fully aligned with your wider business needs.
Spreading the cost
The costs associated with obtaining and maintaining an IP portfolio are significant and we understand that sometimes these need to be deferred until adequate funds are available. We always provide a clear indication of the costs for a given task to enable you to make well-informed and cost-effective business decisions. Our attorneys can provide advice on how best to minimise costs without comprising your commercial aims.
For many SMEs, due diligence is viewed as a necessary evil in order to attract further investment and/or secure licensing or sale opportunities. However, the prospect of due diligence can be daunting, with runaway budgets, tight deadlines and the involvement of multiple parties, each with their own interests at heart.
We regularly assist SMEs in the chemistry and life sciences sector on issues relating to due diligence. Whether providing an internal portfolio review for the Board or an independent assessment of third party IP, we can assist you in all aspects of due diligence to ensure that the process runs as smoothly as possible.
Speaking your language
We pride ourselves on our ability to deliver legal advice in a manner that is clear and coherent. We understand that IP issues are often complex and we tailor our advice to ensure that it is concise and commercially focused. Our attorneys regularly advise clients from all walks of life, including scientists, project managers, commercial staff, Board members and potential investors.
Our Track Record...
D Young & Co has a wealth of experience in assisting SMEs in the chemistry and life sciences sector from their initial conception, through further financing, and eventually to initial public offering (IPO).
We have a longstanding relationship with Oxford BioMedica (OBM), a company spun out from Oxford University with an established a platform of technologies in gene delivery and immunotherapy. Catherine Mallalieu and Dr Charles Harding have assisted OBM for over ten years, including drafting, prosecution, advising on contentious matters and assisting with due diligence. Of particular note is D Young & Co’s involvement in the coordination of a global licence agreement with Sanofi-Aventis to develop and commercialise Trovax®, a vaccine for the treatment of cancer.
We are principal patent attorneys for Dundee based biopharmaceutical company Cyclacel which is dedicated to the development of mechanism-targeted drugs to treat cancer and other proliferative disorders. Dr Zöe Clyde-Watson and Neil Nachshen have assisted with drafting, prosecution, portfolio management and due diligence activities for over eleven years, including advising on Cyclacel’s reverse merger with Xcyte Therapies, Inc in March 2006 to form the NASDAQ listed company Cyclacel Pharmaceuticals, Inc.
Catherine Mallalieu and Dr Simon O’Brien advise Molmed SpA, an Italian start up company with research interests focussing on recombinant therapeutic proteins. D Young & Co advised Molmed SpA on an IPO on the Milan Stock Exchange in March 2008, which yielded proceeds of €56 million.
Amura Therapeutics is a Cambridge based drug discovery company whose research interests lie in the development of cysteine proteinase inhibitors with therapeutic applications in the treatment of disorders such as osteoporosis, osteoarthritis and bone metastasis. Dr Zöe Clyde-Watson has been handling Amura’s patent portfolio for over six years, and is involved in drafting, prosecuting and coordinating a number of extensive filing programs worldwide.
PolyMASC Pharmaceuticals was the first UK biotech company spun out from a university that was directly listed on Alternative Investment Market (AIM). Neil Nachshen was responsible for the successful prosecution of a number of key patents in Europe and the US which formed a platform for Polymasc’s commercial activities in the field of PEGylated liposomes. The company was subsequently sold to Valentis, a NASDAQ listed US drug delivery company, in a £12m deal.
Sterix Limited was spun out from the University of Bath and Imperial College London to develop novel therapeutic approaches using steroids and related molecules in the areas of cancer, women’s health, diabetes and hormone-associated diseases. A single drug candidate synthesised in the early 1990s led to a patent and laid the cornerstone of the whole business. David Alcock advised Sterix over a number of years, handling drafting and prosecution work, as well as advising on due diligence matters. Sterix was subsequently acquired by Ipsen, a mid-sized European pharmaceutical company.
D Young & Co also advises the following academic institutions and University spin out companies:
- University of Bergen
- Domantis (subsidiary of GSK)
- Imperial College Innovations
- Helperby Therapeutics Limited
- University of Southampton
- Revolymer (spin out of University of Bristol)
- University of Cambridge
- BioEos (spin out of UCL)
- University of Cape Town
- Smart Holograms (spin out of University of Cambridge)
- Yale University
- Canbex (spin out of UCL)
- Plasticell (spin out of Imperial College)
- University of Bristol
- Cronos Therapeutics (spin out of Imperial College)
- University of Bath
- Allergy Therapeutics
- Erasmus University
- Kings College London
- University of Oxford (Isis Innovation)
For a Free Consultation...
If you are an SME working in the Chemistry and Life Sciences sector we would welcome the opportunity to discuss any of the matters raised in this article with you.
To arrange a free, no obligation initial consultation with one of our attorneys, please contact our Business Development Manager, Rachel Daniels.
For more information about the D Young & Co Biotechnology, Chemistry & Pharmaceuticals Group please visit our life sciences related patent services page.