Biotech and IP: Getting Started
August 15, 2019
Launching your biotech start-up is an exciting, albeit overwhelming, venture. Eager entrepreneurs often struggle to navigate the labyrinth of tasks necessary to getting a startup off the ground. Securing funding, expanding research and development, and protecting one’s intellectual property are just a few of the challenges faced by entrepreneurs in the biotech field.
Today we explore three of the issues faced by biotech entrepreneurs as they launch their startups. Caldwell IP Law Patent Attorney Katie Rubino and a team of biotech experts will help us answer some of the most pressing questions faced by entrepreneurs and their promising biotech startups.
Meet the Experts
Dr. Johnson is Chief Medical Advisor of The Medicines Company, a New Jersey biopharmaceutical company. He is a co-founder of healthcare investment firm MPM Capital LP, and investment banking and advisory firm JSB-Partners, LP. Dr. Johnson holds a BS and MD from the University of Alabama.
Jennifer is the President and CEO of Cristcot, a Massachusetts-based medical device company. She is a teacher at the Boston University School of Management and has written for the National Institute of Health and the Food and Drug Administration. Jennifer holds a BA in History and Economics from Furman University.
Dr. Dewilde is CSO & C0-founder of InVitroMetrix, a company established to create a self-contained, cell-based multi-well research device for drug discovery. Her past research includes tissue and limb regeneration, extracellular matrix isolation, and nanotoxicology research using the Quartz Crystal Microbalance, a whole-cell biosensor which she helped refine and patent. Dr. Dewilde holds a BS in Biotechnology from Worcester Polytechnic Institute, a MS in Biotechnology and PhD in Biomedical Engineering and Biotechnology from the University of Massachusetts Lowell.
Dr. Tebbe is Co-founder and CTO of Quench Bio, a Cambridge-based company developing therapies targeting innate immune pathways to treat life-threatening auto-immune and inflammatory diseases. He has worked in the areas of pain, diabetes, metabolic disorders, infectious diseases, and cancer. He has platform-based experience with cell surface receptors/GPCR’s (including ion channels), proteases, and other enzyme targets. Dr. Tebbe holds a BS in Organic Chemistry from the University of Notre Dame and a PhD in Organic Chemistry from Stanford University.
What’s the best way to protect my intellectual property? Is a patent always necessary?
Few dispute the necessity of protecting one’s IP, but the question becomes far more nuanced when one begins to explore the many ways to do so. While patents may be the intuitive type of intellectual property protection to come to mind, Jennifer Davagian, President and CEO of the medical device company, Cristcot, explains that entrepreneurs should not discount the value of a trademark, “A patent has a lifespan. If you can build a brand through your trademark…you’ll build value because then (your brand) becomes the named valued for the generic thing.”
Dr. Abiche Dewilde, CSO and Co-founder of InVitroMetrix, explains that her company maintains trade secrets in addition to patents, “We have a patent on our device and how it works, but all of the data algorithms, data collection, data analysis systems, those are all kept secret because we can then offer them in software packages… those are our our trade secrets on top of our patented device.”
Co-founder and CTO of Quench Bio, Dr. Mark Tebbe, emphasizes the importance of corporate strategy when considering IP options, “For most companies, the likelihood is that they will be bought someday before they’re even close to commercialization… you want to make sure that your intellectual property is covered.”
“You’re not selling pills, you’re selling IP.” – Dr. Mark Tebbe, CTO Quench Bio
How much money should startups spend on intellectual property protection?
Much like developing an IP protection plan, securing funding for a start up requires both strategy and intentionality.
It is critical for entrepreneurs to ensure that they consider the timeline of intellectual property protection and plan accordingly.
“As time ticks by, fees will begin to compound. Not having a plan for that and neglecting to plan the rounds of investing that you need to get to where you need to be is a big miss,” explains Davagian.
Dr. Tebbe elaborates on the strategy behind proper timing, “It depends on when you file. That was a big benefit of not having to file our provisional until we had our funding all set up at Quartet. Once you start that clock ticking, not only does the patent life term start to tick one year past the provisional, but the money clock is also ticking.”
Is filing internationally a good use of a startup’s limited funds?
With a finite amount of money and seemingly infinite expenses, entrepreneurs are often forced to prioritize their costs.
“Decisions to file internationally can sometimes move parallel with your business strategy, and keeping those things in mind together can be very important,” explains Katie.
The international IP strategy of Cristcot was born of a targeted effort to identify the countries with the best return on investment, “We took a look at the different drugs used…along with instances and prevalence of disease in different regions around the world and where the growth patterns are.”
She further explains the importance of keeping an eye on profitability, “ We then identified the where the payer systems are. If there’s no payer system to pay for it, your patent is not going to be worth anything when you go to large entities for out-licensing.”
Although accelerating a startup into a thriving company can seem intimidating, a little understanding goes a long way in making such goals more attainable. Join us next time when we discuss startup IP from an investor perspective, strategies to monetize biotech patent portfolios, and the process of licensing patent rights.