Leading the way in advanced materials IP: Q&A with Emily Weal

Congratulations on the Gold ranking for Keltie’s materials practice in the FT listings this year. What do you think contributed most to this recognition?

 

Thank you! Our materials practice has been going from strength to strength in recent years with new clients joining us and existing clients growing or expanding into this field. There is so much innovation in this sector, so it’s no surprise to see it growing. We’ve seen some great results for our clients in this area: wins in EPO opposition and appeal proceedings, important patents granted, and strategic advice that has helped navigate complex commercial situations. We’re proud of the work the team has done.

 

The FT rankings are influential. What does recognition like this mean for Keltie and your team?

The FT rankings mean a lot to us because they are based solely on recognition from our clients: no dressing up, only votes from your clients. It’s our clients’ opinions that matter most to us, so you can’t get higher praise than this! We’re delighted to have earned the gold award in this sector.

 

What are the biggest IP challenges facing companies working with advanced materials right now?

For many companies, the challenge is in the logistics and resources needed to get adequate protection in place. Balancing budgets can be challenging for start-ups, especially as funding tends to be harder now than it was in the past. If you’re on a budget, you have to be creative with how you handle your patent strategy and filings. And every company, no matter its size, can struggle to make the time that’s needed. In the field of advanced materials, a good patent application might need data that has to be acquired specifically for the patent application. This can mean extra experiments and time from the inventors. The internal resource available doesn’t always align with the pressures on timescale from investment, commercial activity, and disclosures, which can be tough to navigate. An understanding patent attorney can help; you have to find a practical solution and plan ahead as much as you can. My philosophy is that there is always a way through, and I’ve never been proved wrong yet.

 

You work with everyone from early-stage start-ups to multinational corporations. How do you tailor your advice across a broad client base?

 

The fundamentals don’t change, but there are two key things I will always adapt in my advice. The first is strategic: I’ll look at what fits with their business goals and priorities, how their competition works, their budgets and business cycles, and what pressures or constraints they have internally and externally. It is much more nuanced than ‘big’ or ‘small’: it is about how they need to use IP to achieve the best results, and what fits with the practicalities of their business and their people. The advice and strategy need to fit that, otherwise the IP isn’t doing its job.

 

And the second is about the content and style of communication. It’s so important to adapt this for the people you are working with so that you can make the process as hassle-free and as possible and get the best results. What does my client already know about IP? How much time do they have to take this in and make a decision, and how do they best digest information?

 

My aim is that you won’t think of me as an external advisor, but more like the best colleague you ever had, who is there whenever you need IP advice.

 

Strategic IP management plays a big role in your practice. What does a ‘smart’ IP strategy look like in materials and manufacturing today?

 

A smart IP strategy has a few key ingredients:

• It is rooted in the overall business strategy: know what your business wants to achieve, and the role your IP needs to play in supporting that.
• It has a framework for decision-making that flows from that business strategy. This helps you make key decisions like what to file/disclose/keep secret, where to file, what scope of protection to aim for, and whether to speed up or slow down the patenting process.
• It has a clear process for keeping on top of IP creation, pushing things through a decision-making process, and documenting the IP and decisions around it.
• It involves thinking ahead with budgets, time, resources, and decision-making; what are you going to need in six months’ time—a year—two years? More data and clarity on some aspect of your invention? Budget to fund national filings? A decision on territorial coverage?
• It allows for agility. You can act fast if you need to, but the processes and frameworks help you keep a clear head while you are acting.

 

And, of course, it involves advice from a very good patent attorney who understands what you need!

 

You’ve built your career in some of the most complex areas of IP, from nanotechnology to energy storage. What keeps you excited about this space?

 

It would be hard not to stay excited! A wonderful thing about materials science is that it touches on almost every type of technology and commercial sector. That’s part of what drew me to materials science in the first place. I arrived at university expecting to be a theoretical physicist and reluctantly took a module on materials science, only to fall in love with it within the first few months. I loved the real-world application of it and the breadth of subject matter. Straddling physics, chemistry, and engineering is fantastic for a patent attorney.

 

 

 

Finally, what advice would you give to companies innovating in the materials space who haven’t yet thought about IP?

 

If you’re starting out, it’s never too early or too late to think about IP. Use online resources (like our IP guide for start-ups) to educate yourself about the basics, and then go and speak to some patent attorneys to get some insight on how it all applies to your company and your goals. Most firms will offer you a short consultation at no cost, and if you can go to that with some background knowledge in place, you’ll be able to get the most out of it by focusing on your business. Speak to a few attorneys and find one that works for you, so that you have someone ready to turn to when you need it.

 

 

If you’re a company innovating in the materials space and haven’t yet explored IP strategy, Keltie’s free IP guide for start-ups is a great place to begin.