Five minutes with…Mike Fuller, managing partner at Knobbe Martens
Ahead of his participation in an LSPN Connect session, Trade Secrets: An Alternative for Life Sciences IP? on Thursday, October 8, Mike Fuller, managing partner at Knobbe Martens, shares some insights about the challenges facing life sciences IP and why innovations are ripe for trade secret protection.
Can you tell us about the course of your career?
My career started almost 30 years ago when I joined Knobbe Martens as a technical adviser. I had no background in IP at the time, but had come from a high tech startup which I had joined out of graduate school. I loved the idea of being able to work with innovators and discovering and protecting their ideas. I was able to work with some of the best and brightest men and women who were developing phenomenal technologies. It didn’t take me long to realise that if I wanted to work at a law firm, I ought to be a lawyer. So I kept working at Knobbe Martens during the day and attended law school at night. After becoming a lawyer,
I continued at the firm as an associate, then as a partner, and I’m now managing partner of the San Diego office.
What in your opinion are the biggest challenges facing the IP sector in the era of COVID-19?
I believe the biggest challenges relate to how we can continue to advance and protect innovations, while we all need to be safe and maintain social distancing. Many of the innovations I am asked to protect are complicated systems for performing biotechnology assays. It’s difficult to understand their operation unless we can see them in action. But that’s not feasible in the era of COVID-19. So we look at inventions over Zoom calls, or Facetime. But trying to understand the details of those inventions and also work in teams to develop an IP protection strategy is more challenging when we can’t get together in person. Also, there are now significant challenges in enforcing any IP since our courts are mostly closed and delaying the start of trials for many months, or even years, as they work slowly through their backlog of cases.
What key developments do you see emerging in life sciences and medical artificial (AI) in the coming years?
I am working on many AI related innovations in healthcare and life sciences and I expect this trend to continue. AI and machine learning allow a system to be trained to understand patterns, and then rapidly identify those patterns again. So, I expect AI to help advance diagnostic assays, eg, for the detection of cancers from any type of medical images. I also expect that AI will help physicians understand the best course of treatment for a patient based on all the data, including genomic data, for that patient. Integrating genomic patient data into a diagnosis and treatment is extremely complicated and not easy for a person to comprehend because the data is so complex. However, it’s tailor made for AI systems to ingest and analyse.
And what cases in recent years are likely to have a long-term impact?
Our Supreme Court has undertaken a very active role in shaping IP in the US. Several of their cases, such as Mayo v Prometheus (2012) and the Association for Molecular Pathology v Myriad Genetics (2013), are still having wide-ranging effects on our ability to protect innovations in human diagnostics. That has had a chilling effect on the development of new diagnostic assays since companies don’t want to invest millions of dollars to develop a diagnostic assay that is then easily copied by a competitor due to the lack of any IP protection.
What are you looking forward to discussing in the upcoming LSPN Connect session, Trade Secrets: An Alternative for Life Sciences IP, on October 8?
I’m looking forward to discussing how my clients decide how to protect their trade secrets and the steps they undertake to decide whether a particular innovation should be protected by patents (and made public) or protected as a trade secret and kept confidential.
We have considered trade secrets in life sciences for a long time. But for the reasons I mentioned above with respect to the Supreme Court, some innovations can’t be patented. So more innovations are ripe for trade secret protection since patent protection isn’t reasonably available, at least in the US.
Have you faced any barriers or challenges in your career?
I haven’t faced any more challenges than anyone else who chooses a long-term career in a law firm. Knobbe Martens is a wonderful firm, which is why I’m still here after almost 30 years. But it’s still a law firm and has all the same billable hour requirements and management challenges that come with a legal career.
What advice would you give to someone looking to follow a similar career path?
I interview a lot of candidates who wish to join the firm. The first thing they need to understand is that this career generally requires a technical background which allows them to help our clients. For candidates in high tech, that’s normally a bachelors or higher degree and hopefully real-world experience in a high tech company. For candidates in life sciences that’s generally a Phd in the related field and similar experience. We have found that, without these strong technical backgrounds, the candidates struggle to work effectively with our clients or to understand the complexity of the innovations we are working to protect. If you have that background, then they can apply to be a technical adviser or patent agent and see if they enjoy the work.
What is the best part of your job?
Easy question. For a super-nerd such as myself, the best part of my job is working with the inventors to learn about their technology. I particularly enjoy working with clients who have new technologies, so I can learn it first-hand from the men and women who understand it well.
Trade Secrets: An Alternative for Life Sciences IP? will be live on LSPN Connect on Thursday October 8. Watch the session live or on demand after that date here.
LSPN Connect is the membership programme for the Life Sciences— for more information on joining, visit www.lspnconnect.com
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