IP Counsel Meenu Wani: „IT companies are more defensive in filing patents and would try to build a strong “portfolio of patents” around certain technologies to block their competition”

Monica Lupașcu: Hello, Meenu, I met you last year at CEIPI in Strasbourg. I knew that you were an IP counsel specialized in patents, but I’ve just found out two months ago about your great GREAT professional experience. Your resume is impressive, especially if we take into consideration how restrictive and difficult the biotechnology and chemical industry is. Please Meenu, how would you describe your job? Tell us something about your work, about the company you work with?

Meenu Wani:

Thank you Monica for a nice introduction.

About myself: I am a Lawyer and a postgraduate in Pharmacy. I have been working in the specialized area of Intellectual Property (Patents) for nearly 12 years and have been associated with Pharma, Biotech and Chemical companies. Currently, based at Hyderabad, working as an IP Lead in the Indian office of a large chemical manufacturing company .

I enjoy travelling; cooking and exploring new dishes. Apart from referencing law books I also like reading women oriented leadership articles penned by management experts/gurus.

My current professional profile includes:
Specification drafting as per the US, EU, PCT, IN rules; Performing patent prior art search using various databases to ensure the company’s IP strengthens; Prosecuting patent applications in USPTO, IPO, JPO, EPO Offering legal opinionson different aspects of IP; Review reports on Prior Art Search, Novelty Search and Assessment, Validity Search, State-of-the-art search, Freedom to Practice (FTO) Search, Patent invalidation through technology analysis, Patent Monitoring; Assessing Patent and Technology Landscaping/Mapping; Strategizing Competitive IP Intelligence, Claim Charting, Citation Analysis, White Space/Gap Analysis; Quality Checking on Project deliverable; Performing legal research on issues of competition laws in India, licensing agreements related to IP issues; Maintaining online E-filing of patent applications to the Indian patent office.

About my company: I work for Ashland Specialty Ingredients (ASI), a division of Ashland Inc., an American Fortune 500 company that operates in more than 100 countries and is headquartered in Covington, Kentucky, in the United States. We, at the Specialty Ingredients division, offer products, technologies and resources for developing new specialized formulas and product performance. Our customer focus includes personal care, pharmaceutical, food and beverage, energy and coatings.

Monica Lupașcu: I suppose that behind your activity there is a lot of passion. A passion that drives you daily and makes you stronger each day, and it’s no secret that you are a real inspiration to me, especially because of this positive and passionate attitude. Please tell us, what are the usual challenges for a woman who works in this field? What would be your advise to them?

Meenu Wani:

Like many other working mothers, the biggest challenge for me is the everyday juggle between work, home, relationship and family. It’s definitely passion for my work that helps me stay focused amid the overstretched balancing where, in a tug of war between home and work, sometimes I win, sometimes I lose.

In general, apart from the pressure to balance the work and personal life, there are many other challenges that, today’s working women have to deal with, like limited opportunities for women in terms of job responsibilities, projects and organizational advancement; thus many of them have to settle for less challenging jobs than their capabilities/talent. Women tend to take care of everyone around them and end up with no time for themselves. The end result to this is that many times, women get easily demotivated by such challenges, feeling defeated, guilty, underestimating their self worth and eventually, they just QUIT.

The biggest roadblock I feel is that large percentage of women can’t seem to speak up powerfully or negotiate for what they deserve. And also they are reluctant to leverage their network and ask for help. Work, Life, balance….will always remian a challenge; however, somewhere you have to prioritize some YOU time. You need to Charged up and Renergize.

At Ashland, I am a part of an Employee Networking group (AWIN) that primarily focuses on moving women higher on the corporate ladder, and understands the needs and challenges faced by womenin the workplace. We plan certain strategies, both on a global and local level, to improve communication, business skills, confidence and networking need of our employees, particularly females.

Is passion enough for being/ keeping you competitive with your “male colleagues”?

Passion is important but passion ALONE doesn’t seem sufficient to me. Practically, we need to remain focused, keep upgrading ourselves with new technologies, new leanings, keep ourselves updated with new rules, laws and happenings around the world. The other skill sets like positive attitude, confidence, self-assurance, mentoring, planning, and prioritizing play an important role towards dealing such competition.

Is professional passion enough to compensate for not spending so much time with your family?

A passion is something you nurture for a lifetime, it has nothing to do the number of hours you have put in. Personal and professionalbalance doesn’t come easily and probably never achieved completely. You need to set your priorities/choices right and take complete responsibility of your actions.

Monica Lupașcu: One says – innovation is crucial in progressing economically – What is your opinion on this aspect? How does the patent system sustain innovation in general? I am asking you because there are people who say that the worst thing that happened to innovation is the patent system itself. What is your reply to this? Is the patent system a REAL and effective support for what is being invented?

Meenu Wani:

It’s very true that innovation is like change, as change is very important in life. Similarly, innovation changes the way you look at things, it improve your life.

I am a firm believer that the patent system is a strong base for innovation. Innovating activity, like any other activity, is motivated by expected profits/incentives or by competition. On one hand, Patents provide incentives for innovation by allowing developers of new technology, new products, a period of exclusive marketing rights; on the other hand, patents provide the public with disclosure of the protected work, on which promising future research can be built, without duplicating the efforts of previous developers. This building up new research on the State of the art is known as incremental innovation.

I cant’s even imagine economic development without Patent system. Assuming there would be no public disclosure of invention through patents, wouldn’t that leads to duplication of research efforts, and more hardship for inventors. And no exclusive rights will further demotivates the researchers. I assume fear of un-rewarding efforts will bring more stagnancy in the research arena rather dealing with stiff but rewarding competition.

Monica Lupașcu: From your vast experience, is the patent system protecting inventors or the companies?

Meenu Wani:

A patent right is a negative right; it is a sword, not a shield. It gives you the right to prohibit a competitor who makes unauthorized commercial use of your patented product (“infringement”). But, as I said, obtaining a patent does not automatically grant you the right to use your invention free of other intrusions. The patented intellectual property is usually not sufficient to deliver the product. Lots of intellectual property rights which belongs to others need to be taken into consideration.
Let’s say our inventors solved a key technical problem such as the solubility issue of certain chemicals or polymeric compounds that enables our customer to develope new application or build new business however, before launching a new business, we will need to use a lot of other technologies to build and deliver a complete product, e.g., the polymer manufacturing process might be protected by our patent, but the product composition might be subject to another company’s “blocking” patent. And then the choice is to just go ahead, seek a license, or design around. And lastly, comes the Patent litigation which is an expensive court game require spending millions (minimum 2-3$ million for each case) and time (around 3-5 years).

So, for a sole inventor to geta commercial valuation for the patent is a difficult task, but not impossible, as there are various ways like out-licensing, technology transfer, partnership, patent pool etc. Also, if a patentee can prove infringement, he can demand treble damages for willful infringement.

The valuation of a patent very much depends on the business field (IT or Pharma) and strategy (Defensive or Aggressive). For example, a standalone “Drug Patent” usually referred to as “product patent” is worth billions of dollars. Lipitor®, which contributed close to $10 billion to Pfizer’s revenues, is the world’s biggest-selling drug and has generated sales of over $131 billion and is considered to be the most valuable patent in the history. On the other hand, IT companies are more defensive in filing patents and would try to build a strong “portfolio of patents” around certain technologies to block their competition.

My viewpoint is that it’s worthwhile to file patents for your key inventions and build on them; of course, this needs to be based on the companies’ marketing as well business strategies. At the same time, “Be Vigilant”, pay close attention to third party patents that others hold and which might enable competitors to block you. In my experience, “freedom to operate” is more critical and important when evaluating a business plan than patent ownership. Non-patent intellectual property strategies, like defensive publication (Research Disclosure), or Trade Secrets, or protected exchange of information under NDAs have been proveneffective IP processes.

Monica Lupașcu: You’ve maybe heard about the recent proposed changes to the US patent law aimed at fighting so-called patent assertion entities (PAEs). The Partnership for American Innovation group warned that this so-called fight against “troll -patents” could also hurt truly innovative companies. In a recent statement, the group’s representative said that the “group would oppose efforts to make software or biotechnology unpatentable”. Please tell us your opinion on these “Patent Reform” bills. How would you explain these demands to change the legislation? and how will these changes affect the US patent procedure?

Meenu Wani:

I think I should begin first with simplifying, to understand what a patent reform bill is, its purpose and the reason for this opposition.

The Patent reform bill, also called the Innovation Bill, is proposed to prevent litigation abuse by certain patent assertion entities (what some call “patent trolls”).

The Proposed Innovation Act is expected to amplify the specific formalities by patentees in case of patent infringement allegations. Requiring a patent holder to provide basic details (such as which patents and claims are at issue, as well as exactly what products allegedly infringe and how) when they file a lawsuit. The Act also requires a patent plaintiff to disclose some basic patent ownership information to the court, including the patent assignee, the assignee’s parent entity, any entity with a right to sublicense or enforce the patent, and any entity with a financial interest in the patent. Such provisions will undoubtedly decrease the number of patent infringement law suits.

Now, why did this need arise? In the two years since the AIA (America Invents Act) was enacted, patent litigation has exploded. More and more firms are acquiring broad patents, not to use the technology, but rather to extract licensing fees from companies that infringe the patents accidentally. These growing companies, commonly known as ‘patent trolls,’ employ these litigation tactics as a business model abusing the patent system’s strong protections, and undermining the innovation environment. Recently, these “trolls” have moved beyond targeting the conventional technology companies and now suing even restaurants, supermarkets, airlines, casinos, real estate agents and other brick-and-mortar businesses. So a number of industry groups that weren’t traditionally involved in patent debates have begun agitating for patent reform.

Overall, two groups have formed: those who are in favor of such enactment, such as large companies Google/Microsoft, and also end user customers that include small companies, retailers, restaurant owners, airlines, coffee –shop owners, casinos etc, who got agitated by patent infringement threats.

Another group is made up of patent lawyers, the biotechnology and pharmaceutical industries, and the Intellectual Property Owners’ association who are against the Patent Reform act , since they believe that it went beyond the scope of addressing troll and it has severe effects on legitimate patent holders.

Healthy competition amongst companies is definitely good for innovation and good for end user consumers to keep the prices low and we certainly need stronger reform to stop the disturbing trend of patent trolls picking on customers and end users, particularly when the cost of such frivolous litigations lies in a few billions. However, it would be next to impossible to have such a customized and generalized law, which should deal solely and strictly with Bad Faith Patent Demand Letters. Hoping well!

Monica Lupașcu: The final question will be about your victories. Tell me, please, about the works/projects that you are proud of.

Meenu Wani:

I came across hundreds of projects and each one is different/diverse and exciting to work on. I work as an in-house IP counsel for the US based organization and need to work with the scientific team and legal attorneys who are off-shore, so the biggest challenge is usually to match the time zone and to work virtually. Thanks to the flexible work hours and the advanced technology equipped infrastructure that my organization has which helps to keep these challenges at bay.

Most of the time me and my team need to deal with business urgencies that require filing an application in the least possible time, less than even one day; for example the product is due for customer sampling and that needs to be IP protected. Other times, we deal with urgent commercial launches which needs legal clearance. Routinely for various products and technologies we provide patent search analysis, landscaping and claim mapping. Certain times, I provide a technology that covers State of the art search, a broader view of the particular technology like use of certain polymers or compounds in personal care or, more specifically, skin care and further specifying whether it is for aging or skin whitening etc. My work further involves prosecution activity for my company’s filed patent application that requires dealing with patent offices, world-wide. Replying to office action (examiner’s objections) is yet another time bound exercise which should not be missed. I further enjoy overall project management tasks that require a formal project initiation, managing the project assignment, addressing meetings, communicating the project’s progress in terms of timing and percent completion, evaluating risks at the outset and periodically throughout the project, and taking action where necessary to keep the project on track and minimize extreme variances in the project’s scope, and schedule.

Successfully and efficiently dealing with these challenges everyday is nothing less than a victory!

Monica Lupașcu Romanian Lawyer since 2005 with LL.M. in Intellectual Property Law. She currently activates as European Trademark Attorney and internet and technology legal practitioner.

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