We’re kicking off our Dublin IP and R&D Summit interview series with John McEvoy, SVP, and Chief Legal Officer of Poolbeg Pharma Plc.!
John McEvoy is a highly qualified lawyer in the US (New York), England and Wales, and Ireland, with extensive experience in Corporate M&A, Tech, Media and Telecoms, Life Sciences, and Commercial Contract matters. He is a proven contract negotiator in the M&A space, with a strong background in contract drafting, IP, licensing, compliance, and managing legal teams globally. John is adept at identifying client and business needs and creating significant value for shareholders.
John is responsible for advising the Poolbeg Group on M&A, commercial contracts, licensing, data protection, general corporate matters, managing external counsel, global legal budgets, and ensuring that external legal resources are aligned globally for the Poolbeg Group.
Recognized as the Life Sciences Lawyer of the Year 2023, John was also identified and recognized as one of the most influential and innovative General Counsels in the Legal 500 (Legalease) GC Powerlist: Ireland 2022 and GC Powerlist: Ireland Teams 2023. We explored his award-winning expertise ahead of the upcoming Dublin IP and R&D Summit in an exclusive interview focused on the power of IP in SMEs.
Take a look:
How important is IP in the process of building and maintaining a strong business for an SME?
The importance of IP in building and maintaining a strong business is widely underestimated by SMEs. IP can become a valuable business asset if it is adequately protected and there is a demand for the IP related products/services in the market. IP can also generate income fees and royalties through licensing, sale or commercialization of products/services that may significantly improve an SME’s market share, valuation or increase its revenue/profit share which is critical in the early years of growth. IP can also help SMEs provide protection for their assets if managed appropriately, effectively and efficiently, preventing others from commercialising them and thus achieving a higher return on investment.
How do you balance the need for innovation with the protection of intellectual property rights within an up and coming company?
It’s obviously important to drive innovation in order to create value, but what is vital in my view is that IP protection goes hand-in-hand with innovation. Adequate protection of a company's IP is critical in deterring potential infringement, inhibiting competition and to transform innovation into assets with a real market value. By taking advantage of IP protection sought and granted, it enables companies to monetize and profit from their innovations which then drives further innovation - so it becomes cyclical. Striking the balance in terms of budget for innovation versus protection of IP could depend on what your business model is, i.e. whether your model is research and development, commercialisation or a combination of both, but my view is that if you are going to invest in innovation at all, you need to invest in appropriate IP protection in the appropriate markets in order to protect that innovation from the outset, otherwise you risk seeing significant value in that innovation and company as a whole not being realised.
How does having a solid IP strategy impact an SME's ability to attract investment and what are some of the biggest challenges you see from SME's in protecting their IP, and how best to overcome them?
IP rights can significantly enhance the value of any company. A great example of how competent IP strategies can drive company value, thus making them attractive to investors, is within the biotech industry where intangible assets such as IP, know-how, data, designs, trademarks etc often become more valuable than the physical assets of a company and as a result, can become a very attractive proposition for investment.
SME’s in general can struggle by not having the requisite knowledge and understanding of how important IP protection is. Certainly in the Pharma industry, IP protection is the life blood of a company and understanding that is critical to the success of the business.
The two key challenges that I see in my experience is firstly, when dealing with SME’s their ability to acquire or license a strong IP portfolio is rare, as it is a challenge when you don’t have a significant budget to acquire the ‘perfect’ or ‘solid’ IP portfolio for either an approved product or one in development, so they have to look at portfolios which are not ideal and which will require investment to get them to a position where they offer adequate protection before significant investment can be made to either clinically develop or commercialise a product.
When an SME is in that situation, it is important from the outset that someone with the requisite expertise evaluate a portfolio and provide an opinion on a path forward to ensure that, although not ‘perfect’, there is an ability to layer protection on to what already exists to offer greater protection. There are a number of examples which I have come across whereby SMEs have either acquired or licensed IP without having adequately undertaken this exercise or, through a lack of understanding about the consequences of poor planning on how to deal with data, publish information before patent application(s) are filed thus creating ‘prior art’ which can be hugely damaging to the success or strength of a patent portfolio and value of a company.
Secondly, there is no doubt that the cost of the above and of registering and prosecuting IP is one of the biggest hurdles to navigate for an SME and can be perceived at times that the initial cost of obtaining IP protection can outweigh the protection it would bring, particularly in the Pharma industry where a significant part of the costs can be incurred before the product has even reached commercialisation.
My view is that, despite these challenges, it is critical for SME’s to obtain as much solid IP protection as they can from the outset and directing adequate budget to facilitate this in the short term can pay dividends in the long term for the company’s growth, valuation, attractiveness for partners and investors and thus – its ultimate success. It is critical that IP assets be maintained, monitored closely and managed carefully to realise their full potential.
How do you plan to continue evolving your IP strategy as your business grows?
As a business grows it is vital that your IP strategy evolves and grows with it across the board from budgeting to enhance, and defend, your IP rights; to investing in expertise to grow and manage your portfolio; and investment in research/development and acquiring IP to drive further innovation and growth. The IP landscape is an ever changing one and staying informed and strategically managing IP and the assets it protects, becomes increasingly important. Being proactive as opposed to reactive when navigating the complexities of IP laws in the different jurisdictions you operate in whilst leveraging IP for business growth is crucial for all business, but particularly SMEs as the failures of not doing so can be potentially disastrous whereas successively achieving it can be hugely rewarding for a business and the likelihood of its long-term success.
You can learn directly from John and more experts at the Dublin IP and R&D Summit this September.
The IP Awareness Day panel, ‘Navigating Investment Opportunities: Intellectual Property and the Impact on Financing,’ will host John alongside professionals from major companies like Overcast HQ and Awakn Life Sciences to examine the intrinsic value of intellectual property in the context of start-up financing and further growth.
Learn more and secure your place: https://www.dublinipsummit.com/
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