Success comes in multiple flavors. It can mean obtaining a portfolio that not only covers their invention, but the spot where their invention generates revenue for the company. In other cases, success is getting a portfolio on paper before the product is even available, and that generates value for investment.
Fish & Tsang LLP represents small investors, startups and multi-billion-dollar Fortune 500 companies through all aspects of the IP process, including patents, trademarks, copyrights and trade secrets, as well as litigation and licensing. The firm's experts help clarify the complexities of IP law so clients can make sound business decisions aligned with their business goals.
What does your role involve?
"I'm a Senior Patent Agent.
"I've been working here for about 18 or 19 years with the same group, doing mentoring for both junior and senior agents. I do much of the heavy lifting in all matters life science, or bugs and drugs.
"I'm also involved in chemical engineering and processing. Then there's a smattering of a couple of mechanical things, including air swimmers, but it's predominantly patent prosecution, for both our US and international clients."
What are the typical challenges your clients are facing?
"Every case is different, but most of the time it's trying to get a portfolio to fit across multiple jurisdictions. Patent prosecution in Europe for example is very different from China, Japan, US and Australia, so unifying all these different components into one document, which will cover all aspects can be challenging.
"Sometimes in the pharmaceutical field when you're trying to get some broader coverage with diagnostics or cell-based therapeutics, local rules will either not allow you to do that because you're covering natural products, or bioinformatics. Local rules will also tell you that you can't patent an abstract idea even though the embodiment might be computer implemented.
"The complexities of some inventions can mean examiners sometimes have a hard time understanding them in the limited time they have.
"It's packaging all these different demands into one single application, that's providing coverage and that is clear enough not to miss any technical details where they matter, and also to allow an examiner to follow up quickly."
What does success look like for you and your clients?
"Success comes in multiple flavours.
"It can mean obtaining a portfolio that covers not just their invention, but the spot where their invention generates revenue for the company. It's not just the technical write up, but also to have a business tool that is effective for clients to maintain their competitive advantage by exercising their patent rights.
"Sometimes success comes in the form of targeting an infringer with a portfolio that is already existing, and we're just adjusting claim language, filing continuations and divisionals to box the infringers in. In other cases, success is getting a portfolio on paper before the product is even available, and that generates value for investment.
"So there are many different facets to success, but most of those are foundational for many of our clients."
How have you used PatSnap to help address some of your clients challenges?
"In the first steps when educating clients in what's already out there, PatSnap's reports are really meaningful. When you show them a report with the landscape and keywords, it helps them to recognise that they're not the only ones in their space.
"The ease of working with the interface is something I really enjoy. It's very simple to find relevant documents in a fairly short amount of time, which translates directly into money.
"The better you are at knowing what you're looking for, the better you find landmines. "
Are there personal drivers behind what you’re doing? Why is this so important to you?
"Learning something new. It's just a thrill to see how things work and that there is process. I also enjoy working with our many clients."