Getting the best return on your innovation

Andrea Williams
Marks & Clerk LLP

Simon Portman
Marks & Clerk LLP

There is a common misperception that IP is a “cost” to the business rather than an asset. This session will look to dispel this misconception, and educate the audience on the advantages of a strategic IP portfolio, and provide hints and tips on commercialising you’re IP from the perspective of both a European patent attorney and an IP lawyer.

We will discuss:

Cost effectively managing your IP portfolio:
• Considering the value of a patent filing – is a patent the most appropriate form of protection? What is the potential value – consider quality and value rather than filling patent quotas.
• Think ahead and consider market trends – if the IP does not have value now, could it do so in the future. Consider the market direction of competitors.
• Make sure your IP portfolio is the right size and shape for your budget;
• Regularly audit your portfolio to check your IP remains in line with your business needs;
• Select an appropriate IP firm for your need, including negotiating a good tariff and strategically selecting foreign counsel;
• IP prosecution can, to some extent, be accelerated or slowed down – consider tactics for managing and aligning ongoing patent costs with your budget.

Advice on the different elements and pros and cons of universities supplying innovation to industry via the following options:
• Knowledge transfer.
• Licensing.
• Stand-alone start-up company.
• Spin-out company.

Suggestions on how to foster a more commercial mindset among academics, including:
• Remuneration for inventors on patent applications.
• Sponsored PhDs.
• Multi-disciplinary hubs.
• Increasing IP awareness by means of regular interaction with technology transfer offices and adoption of invention disclosure forms.
• Seminars on commercial topics.
• Networking events with industry.

How to find a workable compromise between the differing agendas of academia and industry including:
• Will the university license or assign the IP?
• Which takes priority, publish or patent?
• Accommodating the limited resources of some technology transfer offices.
• What warranties the university should give.
• Remuneration.

How to make a successful start-up, including:
• Getting the people dynamics right.
• Identifying technology there is really a market for.
• How to run the company.
• Budgeting for legal advice.
• Contractual pitfalls to avoid.
• Dealing with big multinationals.
• Being aware of the regulatory framework of your industry sector.
• How business culture differs from country to country.


Simon Portman, Commercial IP Layer
Simon specialises as a commercial contract lawyer for clients in the technology and innovation field. He works for clients in the electronics, bioscience, defence, software and nanotech industries, advising universities, research institutes and companies ranging from small start-ups to big multinationals as well as individuals, hospitals and charities. He advises on a wide range of contracts, including licenses, R&D collaborations, manufacturing agreements and procurement documentation. On the regulatory front he has advised on compliance with clinical trials legislation and novel food applications, as well as freedom of information and data protection issues.

Dr. Andrea Williams, Chartered UK, and European Patent Attorney
Andrea is a Chartered (UK) and European Patent Attorney who works for both local and overseas clients to draft and prosecute patent applications worldwide. She has significant experience in drafting and prosecuting applications, as well as providing freedom to operate searching and due diligence matters. Andrea works in the biotechnology team but also handles mechanical and other device work. Her diverse client base includes universities, research institutions, start-up companies and large multinationals. Her first degree was from the University of Warwick where she gained a First class honours degree in Biology. She completed her PhD at the University of Cambridge where she investigated the role of protein clearance pathways (autophagy and the UPS) in the pathogenesis of neurodegenerative disorders.