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Q&A with Teresa Lavoie: How a Patent Prosecutor Racks Up Wins

June 16, 2017

Q&A with Teresa Lavoie: How a Patent Prosecutor Racks Up Wins

June 16, 2017

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How a Patent Prosecutor/Strategic Adviser Racks Up Wins

Patent attorney Teresa Lavoie was interviewed by Metropolitan Corporate Counsel in the article “How a Patent Prosecutor/Strategic Adviser Racks Up Wins.” In the interview, Lavoie discusses building patent portfolios, advising biotechnology startups, and working with biosimilar and biologic companies. She also discusses the unique challenges of academic and research institutions, as well as her niche practice representing emerging food technology companies.

“MCC: You have spent the past seven years helping build the IP portfolio for your client Samumed, which was called “the most valuable biotechnology startup on the planet” by Forbes in May 2016. How important are patents to the value of startups and emerging companies? What advice would you give to companies that want to be the next “most valuable biotechnology startup on the planet”?

Lavoie: Before a company has a product approved, with an associated revenue stream and management track record for success, the IP portfolio can be seen as a proxy for the strategic thinking and scientific creativity of the startup team. While there is an impetus now to file quickly in order to address concerns under our first-to-file regime, you still need to map out your program research activities, including clinical development activities, and align them with your patent portfolio development in order to avoid missing important filing opportunities or cause yourself prior art headaches down the line. My advice often is to step back, take a breath and think about your portfolio on a macro-level. And do that every quarter or so, to ensure that the portfolio is moving in the direction of your current research and strategic business goals.

MCC: Working with biosimilar and biologic companies is another area where you have deep expertise. What are some of the key patent issues you are dealing with right now in this space?

Lavoie: As I previously mentioned, the timeline for product development in biotech has been drastically reduced, including notably so for biologics such as antibodies. There are a great number of very smart biologists working in the field who have brought the first and second and third generations of biologics to market and who are now “all in” on providing the next generation of biologics in record time. For biologics, addressing the scope of the case law as it pertains to patent eligibility remains a concern for both methods of use and compositions, as well as monitoring freedom to operate issues around the newer targets being identified.
In addition, biologic companies are just starting to wrestle with market entry of biosimilars, from both the legal and commercial standpoints. We saw a large increase in patent filings related to biologics over the past decade, as innovator companies attempted to build a patent wall to protect their blockbuster products, including in areas where innovators had not traditionally pursued much IP. These included protein production, purification, post-translational modification and formulation technologies. With the advent of post-grant review proceedings such as inter partes review (IPR), we are seeing biosimilar companies trying to knock out some of these “evergreening” patents in their attempts to simplify the ultimate “patent dance” that may occur before the biosimilar can get to market.”

Attorney Bio

Attorney Teresa Lavoie
Teresa A. Lavoie, Ph.D. | Principal

Over the past six years, Dr. Teresa Lavoie has developed, managed, and overseen the sale of patent portfolios worth more than $33 billion in deal value. Her international practice focuses on strategic patent counseling, prosecution, and portfolio development advice, including patent opinions, due diligence, freedom-to-operate analyses, and...