An interview with Kristine Čapase, Intellectual Property manager at the Latvian Insitute of Organic Synthesis, on the significance of IP management in general and for her institute in particular.
Why do you think IP management is important?
IP should be carefully managed first of all because it is a way to be informed what your competitors are doing. You should always examine patents of your competitors to ensure that you are not infringing on their IP. Secondly, IP management is important because it helps to determine your organization’s IP value and to clearly identify the benefits you reap from your IP portfolio. It is important to carefully examine on a regular basis whether it is worthwhile to maintain existing patents with their respective geographical coverage, or to better allow them to lapse. Furthermore, strategic IP management helps you define areas where your organization potentially needs to modify its existing set of IP assets and create new ones. As a result, good IP management can turn an organization into a more attractive business partner for investors.
How important is Intellectual Property management in your institute?
The Latvian Institute of Organic Synthesis (LIOS) is a state research institute specializing in pharmaceutical, organic chemistry, molecular biology and bio-organic chemistry. All these sectors create new values and innovations, and it is essential to protect them. Usually we protect novel inventions by filing a patent and in the last years we have significantly increased our IP portfolio. Obviously, the number of filed and granted patents does not matter if those do not represent any value for the organization in terms of exploitation and potential benefit. Therefore we regularly review our patent portfolio to see and discuss, whether we need to maintain all of them in all designated countries or whether we leave them to lapse.
Do you have a standard analysis method that you use with every invention when they come out of your laboratories?
Yes, we have a list of questions that we ask the inventors to answer. Those questions include for instance whether someone is the sole inventor or if any co-inventors have been involved (usually our inventors are performing their work in groups). Other questions address formalities such as the name of the project under which the invention was created and yet another set of questions deals with the expected benefit and the nature of the invention concerned: What are the outstanding features and functions of the invention? Obviously, we also closely look at issues related to public disclosure prior to filing a patent application and perform patent searches in different databases such as espacenet.com, depatis.de or SciFinder. We do that in order to avoid wasting efforts, time and money trying to patent inventions that do not satisfy the requirements for patentability.
How many patents do you apply for per year? How many of them are granted?
In the last two years we have filed 16 patent applications with the national office and up to now we have been granted more than a half of them.
Have you been able to exploit some of those patents?
Yes, we have made very positive experience with some of our patents, which have been subsequently licensed to some of the largest pharmaceutical companies in Latvia. But due to our internal policy I am not able to tell more details.
Is there an IP management team in your institution? If yes, how many people does it encompass? Is there any written IP policy in your institution?
In our institution we have one person who is directly responsible for all matters related to patents, patent applications etc. and there are three more team members involved in IP management but not exclusively responsible for patent filing.
And yes, we have developed an internal LIOS IP policy, which is binding for all our inventors.
How do you communicate with the scientist of your institution? How deep is their knowledge of Intellectual Property? How aware are they of the importance to deal with IP?
The best way is to communicate face-to-face to make sure that things are well understood and in order to prevent any misunderstandings. However, it is not always possible and of course we communicate via email and phone as well. Scientists who have already filed patent applications or have been granted patents are familiar with the requirements they need to fulfil. Yet, in case an inventor is about to file a patent for the first time, it is vital to help them identify what is intended to be protected and to help them draft the application.
In 2014 our inventors had the possibility to attend a seminar called “Intellectual property rights management and commercialization processes” in which they gained further insight as to how to deal with their new inventions. Moreover, we intend to organize an additional seminar related to IP this spring to increase our inventors’ knowledge and awareness of IP issues even more.
Do you think that the patent portfolio of your institution is going to grow in the next few years? Do you think you are going to be able to exploit the inventions produced and protected?
Yes, we certainly think that our patent portfolio will grow in the next years as we can observe a positive trend already. LIOS is not going to stack the obtained patents. We are open to commercialize them. Therefore we are keen not to maintain more patents than we can efficiently and profitably deal with. Furthermore, LIOS has improved the effectiveness of its IP management by implementing modern IP management software.
Do you usually need help from a patent attorney to write your patent application?
No, we do not use patent attorney services to write our patent applications. In general this is a collaborative effort of our in-house patent specialist and the inventor.
Can you give us an example of a recent invention that was developed and protected by your institution? Has it then been successfully exploited? Is there any plan for exploitation over this invention?
Since we are still in granting process of some good applications, it would be worthwhile to come back to this issue in a few years time.
Have you ever had to enforce your IP rights? Did this bring you to court?
Not yet. But in case of such a need we will do everything necessary to protect our interests.
What are common challenges that you face with regard to IP management in general?
Principal challenges are to increase the overall innovative potential, to improve the knowledge of our inventors and stakeholders from the pharmaceutical industry on IP rights and their management as well as their expertise concerning technology transfer issues.
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