Given your extensive experience over the past 25+ years, what do you consider to be the most significant shift in intellectual property strategy you've observed within multinational companies?
Until year 2021, the most significant shift had been cost control and centralisation of case management, affecting selection of protection markets and the level of involvement of firms in IP prosecution. This shift was first enabled by computer-aided controls and translation, and gave place to centralising first annuities payment, then translation, and eventually filings management. AI is driving a new shift, as it touches on activities formerly exclusive to IP professionals. The full effects AI adoption in intellectual property at multinational companies are yet to be seen. At the time, AI adoption and avoiding AI pitfalls are the main trends. However, further automation of previously human driven activities, more comprehensive approaches in assessing the importance and impact of markets for filing, harder examination, and a need for more robust invention descriptions and arguments to evidence patentability are foreseeably coming.
With your background in both chemical engineering and law, how do you find these two disciplines complement each other in your work, particularly when dealing with complex technologies like biotechnology or pharmaceuticals?
In the absence of a certification of patent agents by the Mexican patent office, formal degrees, both in science and in law, are good credentials for patent professionals. Moreover, chemical engineering is extremely well suited for patents consulting. It was designed to provide process professionals capable of communicating with a variety of engineers and chemists, to solve complex problems based on general principles applicable virtually to industries, beyond chemicals and notably energy, food, pharmaceuticals and consumer products. Computer applications and programming have been also applied for decades in chemical engineering for equipment and process design and instrumentation and control, as one of the earliest practical applications of neural networks, the base of AI, while remote surveillance and control were also early proofs of concept of today’s IoT.
Having overseen the filing and prosecution of over 10,000 patents, could you share an insight into the common challenges Mexican inventors face when seeking international patent protection?
Their most common challenge is securing the funding necessary to maintain a minimum viable international protection coverage. However, the harder challenge is the strategic management of the patents. Skilled patent professionals are generally scarce in Mexico due to the size of the market – 17,000 applications yearly, 5% from Mexican applicants – and those with experience in international patent prosecution even more. As a consequence, Mexican inventors often do not fully understand the impact of amending the claims or of using certain arguments impacting the full international portfolio, and follow blindly the suggestions from the local attorneys that may be falling outside the business interests for protection.
You've held numerous leadership positions in organisations like LES International and AIPPI. How have these roles informed your perspective on the global harmonisation of patent laws and practices?
Interacting with professionals worldwide who are experts in intellectual property matters has been key for my professional development, both, to keep updated and current as an intellectual property professional and to develop valuable relationships. These organisations help you better understand the challenges of other intellectual property systems and help you provide better advice to clients coming from a different system. Of course, the work of these societies drives international practices and harmonisation efforts, but these processes are longer and difficult, unlike the understanding of the differences in the IP systems, which may be used right away to help clients.
Beyond the technical aspects, what is one piece of advice you would offer to emerging IP professionals looking to build a successful career in patent law?
Emerging IP professionals should engage as early as possible in the work of local and international high level intellectual property professional organisations. But joining the society will not be enough. Young professionals typically will find value in training or education opportunities, but as they advance in their career, IP professionals need to have an impact in the work of the organisations, because active participation will provide them leadership skills and recognition, and most importantly, relationships that will be helpful for the rest of their professional lives. Emerging professionals tend to rely upon digital social networks to engage with other professionals, but as artificial intelligence systems take over and the faces behind the work become blurry, the importance of relationships and inherently human skills and experience is escalating and will become a key for success.
