Fractional IP counsel gives you a senior patent attorney who has worked in-house at pharma and biotech companies and knows how investors and partners assess an IP position. This page covers what the role involves, why it matters in this sector, how it compares with using a patent firm, and who it suits. For details of our own fractional services, see fractional IP counsel.
Related guides: Fractional IP counsel | IP strategy
Investors and pharma partners looking at a new technology usually ask two questions. Does the science work? And how is it protected? Fractional IP counsel helps you answer the second one. A good fractional attorney has held in-house IP roles in pharma or biotech, has followed products from discovery through to loss of exclusivity, and knows what pharma companies and investors check when they assess a portfolio. They work with your company for an agreed number of days and use that experience to shape your strategy.
Most of the value is in strategy. That means setting an IP strategy that fits the science, the commercial plan and what you have promised investors and partners, and updating it as new data arrives. The attorney also covers the rest of the in-house role. They manage the portfolio, deciding what to file, drop or defer and where. They instruct and supervise outside patent firms. They catch inventions before publication, review manuscripts and posters, and answer scientists’ day-to-day questions about what they can disclose. And they support deals, from financing due diligence to the IP terms of a licence or collaboration and the IP slides in a board pack or pitch deck.
IP matters more to the success of a pharma or biotech company than in almost any other sector. The patent portfolio can decide the value of a programme. Pharma companies know this. They look at a prospective partner’s published patents and applications before business development gets in touch. Their in-house IP team reviews the position and gives it a red or green light, often before you have had a chance to pitch. If the position looks weak, you may not even get as far as a non-confidential discussion. In-house pharma attorneys are also closely involved in evaluating biotech companies for in-licensing and acquisition, and in negotiating the deals that follow. An attorney who has done that work knows the questions diligence will raise, which weaknesses can stall a deal or reduce its value, and how the IP terms are usually negotiated. So the IP strategy has to look ahead. It is best set by someone who knows your field and knows how the portfolio will be reviewed, because they have done those reviews themselves.
Patent firms are good at day-to-day drafting and prosecution, and at carrying out instructions. What they often lack is the commercial and strategic insight that comes from working in-house at a pharma or biotech company. That includes knowing how a portfolio will be read in due diligence, what a partner’s IP team will look for, and which claims will matter to the product years from now. Someone also has to instruct the firm. Without a head of IP, that job usually falls to a founder or the CSO, and the firm only sees what it is sent. Fractional IP counsel works on the company side. The attorney sees the data as it comes in, sets the strategy and decides what to ask the firm to do.
Any pharma or biotech company that sees IP strategy as important to its success. Typical examples are a biotech heading into a financing or partnering process, a clinical-stage company whose head of IP has left or is overstretched, and an established pharma IP team that wants an experienced second opinion on a programme. What they have in common is a need for senior judgement from someone who has worked in the industry.
Every engagement is set up around what you need. That might be a set number of days a week or a month, cover for a fixed period such as a head of IP’s leave or the run-up to a financing, or support on a single project such as a partnering deal or a portfolio review. Most engagements start with a short review. The attorney looks at the business first: the pipeline, the plans for the next twelve months, the likely partners and investors, and what they will expect to see. Next comes the portfolio and the arrangements with outside firms, reviewed the way a partner’s IP team or an investor’s diligence team would review them. You come away with a written IP strategy and clear recommendations on what to file, drop and defer. From there we agree how the work will run, and change it as your needs change.
No. With outsourcing you hand set tasks to a supplier. A fractional IP counsel takes charge of your IP strategy, works out what needs doing, and makes sure the work supports your investment and partnering plans. Ours have done that job in-house at pharma and biotech companies.
In practice, yes. Different firms use different titles for the same thing, a senior attorney who runs your IP from inside the company. What matters more is whether that person has done the job before. Ours have, in pharma and biotech.
A senior patent attorney who has worked in-house in pharma or biotech and now works with your company for an agreed number of days. They look after strategy, the portfolio, deals and the questions your scientists raise day to day. Because they work as part of your team and know how partners and investors will look at your IP, they set the strategy as well as carrying it out.
Because the people who assess your IP have that experience. Pharma IP departments and investors’ diligence teams compare your portfolio with what they have seen succeed and fail over the life of a product. If your attorney has done that job, they know what will be looked for and can plan for it.
Investors and pharma partners check your IP carefully before they commit. We have carried out those checks from inside pharma. We can look at your portfolio the way they will, fix weak points before they find them, get you ready for due diligence, and help with the IP terms once a deal is on the table.
Yes. Our attorneys have evaluated biotech companies for in-licensing and acquisition while working in pharma, and negotiated the deals that followed. We have also negotiated for biotech companies on the other side. We can get your portfolio ready for review, run the due diligence, and advise on the IP terms of a licence, collaboration or sale.
Yes. We are based in Europe, but we advise on IP strategy worldwide, including the US and Europe, and we have clients in both. We have managed global IP strategy for multinational pharma companies, deciding where to file and protect according to which markets matter most. As UK and European patent attorneys we also handle EPO prosecution and oppositions, Unified Patent Court matters and SPCs ourselves.
Ideally before your first big financing or partnering conversation. Your published patent applications will be reviewed before you get the chance to pitch, so it helps to have the strategy in place by then.
Yes, and some clients do. Your firm can carry on with drafting and prosecution, and we give them clear instructions based on your strategy and commercial goals. We can also do the drafting and prosecution ourselves if you prefer.
No. We set things up around what you need. That could be a few days a week or a month, cover for a fixed period, or one project such as a financing or a partnering deal. If your needs change, we change the arrangement.
One of our Patent Directors, all of whom have worked in-house in pharma or biotech. Steven Gurney founded Evolve and has more than 20 years’ experience in pharmaceuticals, in-house and in private practice. Rose Hughes was Director, Patents at AstraZeneca, leading IP for the neuroscience department and the biopharma cell therapy group. Alice Walford has more than 15 years’ experience in private practice and in-house, working with small and large pharma and biotech companies.
We are happy to have an informal conversation about your programmes and your current IP arrangements, with no obligation. You can reach us through the contact form, by email, or by phone.