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Jacques Warcoin European Patent Attorney and CEO, Cabinet Regimbeau, Paris, France.

Thirty years ago, most patents that were related to drug research and development described classes of chemical compounds or synthetic processes. Then, as the biotech revolution began, many new challenges and questions emerged about the intellectual property associated with research discoveries in this field, such as the patentability of genes and proteins linked to diseases. Jacques Warcoin, a European Patent Attorney, has been closely involved in the sector since its inception. “In 1978, I filed the first application in France in biotechnology — the first transformation of yeast — and from this time I have learned about biotechnology with the people who discovered it,” says Warcoin.

Warcoin joined Cabinet Regimbeau, a firm of patent attorneys based in Paris, as a junior patent agent directly after obtaining a degree in chemistry from the Ecole Nationale Supérieure de Chimie de Toulouse in 1971. “Like everyone at that time in intellectual property, I started by drafting mechanical cases, which is essential to understand the patent process,” recalls Warcoin. “However, with the support of my manager, I rapidly decided to find chemical cases, and then broadened further into microbiology. I found it exciting and worked very hard, with the help of inventors, to learn more about prokaryotes and eukaryotes.” In this way, he became one of France's leading attorneys in the field, and as applications related to biotechnology emerged, this became a major area of his work, and has been ever since.

During the past 30 years, Warcoin has filed many patents related to biotechnology and advised on licensing and development strategies in the field, as well as defending the intellectual property rights of biotech companies, multinational firms and public research bodies in cases before the European Patent Office (EPO). Achieving success in such cases is something he has found particularly rewarding — for example, in the case he led arguing against a controversial patent for diagnostics related to the BRCA1 gene and the risk of breast cancer, which was subsequently withdrawn by the EPO in 2004.

Although Warcoin is now CEO of Cabinet Regimbeau, which has grown to employ 180 people, he still continues to learn about new research directions in biotechnology. “In a hybrid area such as this, you need to have a strong technical background, but always be prepared to learn more, and to have good contact with clients and inventors,” says Warcoin. “What is challenging in this job is that you need to remain on top of the science until your retirement, even if you have some involvement in management, as it is not possible to have discussions with inventors if you are not aware of the latest developments in the field.”

For those considering patent law as a career, Warcoin would not hesistate to recommend trying it, although he cautions that it needs a strong ability to handle stress and pass many challenging examinations. “To enjoy it, you must aim to be the best in a specific field of intellectual property, and be prepared to be creative, especially in biotechnology,” he says.

Leslie Meyer-Leon Founder, IP Legal Strategies Group PC, Centerville, Massachusetts, USA, and President, Boston Patent Law Association

Patent attorneys who work as outside counsel require a breadth of knowledge and skills to solve a diverse range of problems. This appealed to Leslie Meyer-Leon who, after working for large law firms for a number of years, founded IP Legal Strategies Group PC in 2000. “In a smaller setting I have the freedom to be much more client-centred than in a large law firm,” she says.

After earning a Ph.D. in molecular and cellular biology from the University of Wisconsin-Madison, USA, Meyer-Leon joined a large intellectual property law firm as a technology specialist. “I always had a strong preference for interdisciplinary studies and felt that patent law brings together the best parts of science, business, law and people: significant scientific developments, interesting business problems, the challenge of building on legal precedent and people who are creative and enthusiastic about what you are doing for them,” she explains.

She began by drafting and prosecuting biotechnology-related patent applications for the law firm, earning her license as a registered patent agent while also attending law school. After completing law school, Meyer-Leon moved to a large general practice law firm and worked on a series of litigation and corporate projects that contributed to the breadth of intellectual property skills she now uses. During this time she realized that her main interest was in helping companies use portfolio strategies to overcome business obstacles. “I really liked the combination of business and intellectual property, and I wanted a much more seamless mix between the two... [Now] I use a broad range of patent, trademark and transactional skills to do strategic portfolio analysis, and to help companies understand and overcome the problems they face with competitors.” This includes counselling clients on their freedom to operate around competitors' patent rights and on business approaches to take when competitors misappropriate or infringe on their patents.

Becoming an integral part of the business development team of a small company, combined with interesting science, is the best of both worlds for Meyer-Leon: “You work with people who are creative and excited about making commercial products from their inventions. They are forward-looking, enthusiastic and excited about having you as part of their team.” This also helps avoid any feelings of isolation from not being part of a large firm, a possibility she also counteracts by being very active in the Boston Patent Law Association — currently as its President.

Although Meyer-Leon enjoys burying her analytical mind in a problem and allowing herself to get really absorbed into it, this is often saved for evenings and weekends owing to the pace of the job — responding to numerous clients having diverse needs, and keeping abreast of a continually changing field of law, changes in the rules of the world's patent offices, rapidly evolving science and a shifting business climate. “Sometimes it gets pressured but intellectually it never gets boring... you are constantly on a learning curve, no matter how long you have been in this profession,” she concludes.