Intercell's Adrian Spillman on How to Tackle Patenting in Unknown Markets

Adrian Spillman, Global Head of Intellectual Property at Intercell, joins Legal IQ to discuss how to decide when to patent and how to tackle patenting in unknown markets.

Legal IQ: I am sure you would agree that the cost benefit analysis of your patent portfolio is essential in deciding what to patent and what not to patent. Is this the only piece of information that you take into account when making this type of decision? If not, what else would you consider?

A Spillman: Thank you, Helen, for this question. This question is actually a very good question. It was a bit irritating in the beginning but I think what it means for me is that the cost benefit analysis is a very powerful way of looking at your patent portfolio. Not in a bookkeeping way, I think that's the important thing to understand, but if you really look at cost and benefit in a very broad sense of the meaning of the words, of course, you look at the agent's price and what the hourly rate is.

I think it would also certainly include looking at the processes you are doing; can you take certain things in-house and does it make more sense to do certain things in-house? Or, vice versa, does it make more sense to outsource certain things because maybe the agent has more know-how in this area.

I think also a very important thing is to show the organisation, normally the senior management, in a transparent way, the cost so that they can make a good decision based on that. The other side, the benefit side, I think that's really where the interesting part starts.

Looking at patents from a point of view of that could be an option for the future and particularly in my industry, the pharmaceutical industry or biotech industry where we have projects which maybe only generate monetary value in ten years' time. I think the patent function can really play an active role in that and create value in terms of collecting information from an organisation and trying to integrate that into a patent strategy.

Legal IQ: How can you be sure when you're patenting your portfolio that you've patented enough? How many is too many patents around one product?

A Spillman: In my view, I think you cannot have too many patents around one product. I've been present in litigations and the more you have the better but I of course understand an organisation, and particularly also in our time, that one has to make compromises and you cannot just patent whatever you can.

Therefore, yes, the selection process is necessary, of course, and a good tool is, again, coming back to the first question, a good tool I think is very good patent portfolio management. Good patent portfolio management can really communicate the value of a patent portfolio to management and being in communication with them to make a good selection.

Legal IQ: Patenting in emerging markets and unknown markets can be a challenge, what is the biggest lesson you have learnt from patenting in these types of markets and what tips would you share with anyone who is looking to patent in these areas now?

A Spillman: I think you already raised the keyword, unknown markets and unknown legal areas, it is indeed very challenging for a patent attorney or a patent function to give good advice here because it is very unclear how things at the moment are and how they will develop.

I would see it very pragmatically; go with the business and trust that the patent area will develop in these markets and that maybe in ten years' time, when you have a product on the market there will be, hopefully, a legal system where you can enforce as well your intellectual property.