Simon Portman, Marks & Clerk Solicitors, outlines the work the company does advising pharmaceutical companies on intellectual property issues
Simon Portman, Marks & Clerk Solicitors
Who are you and what do you do?
Marks & Clerk Solicitors is a leading specialist intellectual property law firm, practising exclusively in all areas of IP, including areas relevant and important to the pharma industry such as patents, supplementary protection certificates and confidential information.
I specialise in non-contentious IP and related commercial contract and regulatory matters. A big part of my work is advising pharmaceutical companies on the development and commercialisation of their IP. This entails ensuring they have the requisite access to core technology at inception, conducting IP due diligence for rounds of investment and trade sale and drafting and negotiating contracts such as licences, R&D collaborations and contract manufacturing agreements.
What have you focussed on recently?
Recently, I have focussed on supplying licensing, distribution and maintenance contracts for a new diagnostics product and drafting and advising on a wide range of grant-funded R&D collaborations. Even in the improved economic climate, many companies find it difficult to secure funding from investors and, in such circumstances, “soft” money available under UK or EU grant schemes is an attractive option.
What is your latest service/ innovation?
Over the last year we have been conducting free seminars on contract law and negotiation which have been very popular with contract managers in the pharma sector and university technology transfer officers. While the course is not specifically directed at the pharma sector, many of the real life examples we use are pharma related.
We made the course free to attend and, as well as supplying useful training, it affords a valuable opportunity for networking. Attendees come away from the day realising that similar issues appear again and again, no matter what industry they are from. The course trains them in how to deal with those issues, what elephant traps to look out for and when to seek specialist advice.
How can you benefit the pharmaceutical sector?
Our advisors combine strong scientific backgrounds with legal expertise and commercial nous and can tailor their approach to fit any type of client in the sector, from small start up to big multinational. They also operate under the same roof, both literally and metaphorically, as patents and trade mark attorneys and IP valuation experts who complement our services, leading to the full spectrum of specialist IP input on offer.
Future plans?
Targeting new clients and markets in the technology clusters where we have offices and growing the commercial team. I’m also heavily involved in rolling out internal training in legal and regulatory matters, thereby ensuring that both our trainee and qualified patent attorneys have the edge when they take their skills to the market.