Steve Visco - PolyPlus - Part 2

Global Competition | Defending & Monetizing Your Intellectual Property | Dealing With Patent Trolls & Needing Multiple Patents Per Technology | The Importance of Global IP Strategy for Startups

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Show Notes

Part 2 of 3. My guest for this week’s episode is Steve Visco. Steve is the Co-founder, CTO, and CEO of PolyPlus. Before PolyPlus, Steve worked at Lawrence Berkeley National Lab as a Principal Investigator, running several programs in the field of solid state ionics, developing an extensive patent portfolio, much of which has been licensed to industry. Join us as we sit down with Steve to discuss PolyPlus’ decade of experience as a licensing company during a time of rapid industry change. Steve also covers how important intellectual property is for defending and monetizing your technology, how to deal with patent trolls and spurious lawsuits, and the benefits of scientists understanding patent legalities. Learn more about his thoughts on why having multiple patents on a technology is important, and how crucial it can be to have an immediate global IP strategy as a startup. Please enjoy my conversation with Steve Visco.

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Steve Visco, Ph.D., is the Co-founder, CTO, and CEO of PolyPlus. He is an internationally recognized expert in lithium batteries and fuel cells. Dr. Visco currently holds more than 100 U.S. patents, over 200 international patents, and has authored close to 100 journal articles. He has also authored a number of books, monographs and other publications.

In addition to his accomplishments as a founder and lithium better expert, he has successfully raised $45M in government contracts and grant awards, serves on numerous scientific committees and panel, and directed research leading to recognition of PolyPlus by TIME magazine and a Gold Edison Award in 2012.

He received a B.S. in Chemistry from the University of Massachusetts, Amherst, a Ph.D in Chemistry from Brown University, and was a Postdoctoral Fellow at the University of California in Santa Barbara before joining the staff at the Lawrence Berkeley National Laboratory, where he ran several programs in the field of solid state ionics, developing an extensive patent portfolio, much of which has been licensed to industry.

Episode Transcript

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Intro - 00:00:00: Welcome to The Biotech Startups Podcast by Excedr. Join us as we speak with first-time founders, experienced scientists, serial entrepreneurs, and biotech investors about the challenges and triumphs of running a biotech startup. Gain actionable insight into navigating the life sciences industry in each episode as we explore the business of science from precede to IPO with your host, Jon Chee. 

Disclaimer - 00:00:31: The purpose of The Biotech Startups Podcast is to provide general insight into the ever-changing world of life sciences through the experience of a variety of guests. The use of information on this podcast or materials linked from this podcast are at the user's own risk. The views expressed by guests and any employee of Excedr on the podcast are their own and do not necessarily reflect the views of Excedr or content sponsors. Any appearance on the program does not imply an endorsement or recommendation of any product, service, or entity referenced in the podcast by Excedr or by its guests. 

Recap - 00:00:09: In our last episode, we spoke with Steven Visco about his graduate school experience, witnessing the tech transfer boom, and his time at Lawrence Berkeley National Lab. If you missed it, be sure to go back and give it a listen. Today we're excited to continue our conversation, diving into Steve's experience with global competition against Sony, joint transfers with DuPont and Dow, IP strategy, and handling patent trolls. So sit back, relax, and let's get started.

Jon - 00:01:40: You spin out PolyPlus. You're staying both at Lawrence Berkeley and also working with PolyPlus. How did you find your CEO?

Steve - 00:01:49: Well, we were lucky. So the way that worked is the tech transfer office organized with I think it was Stanford too. I think it was Berkeley Stanford. There may have been one other school, but I think it was basically Berkeley Stanford, because Stanford was already doing this. Actually, they were ahead of the game that way. Their medical school, they were filing a lot of patents, doing a lot of tech transfer, and they were pulling in quite a bit of revenue. So Berkeley reached out to them to help organize this event, right, where entrepreneurs who started companies would give presentations and in the audience would be a variety of like Angel investors, Venture Cap. firms, and other interested parties. So we give this presentation and yeah, we got besieged right, with companies that want to talk to us. But in that grouping was this guy, Rudy Hurwich, who did end up being the CEO, and he started a company named DYMO. DYMO was hugely successful, came out of Berkeley, actually was a Berkeley company. I don't know if you've ever seen these kind of devices because it's pretty old school. It was before computer labeling systems, but you had the letters of the alphabet on a circular platform and you would dial in letters, then pull this kind of trigger and this adhesive material, this kind of sticky tape would come out and it would raise punch up into the polymer and create a raised letter. I mean, they were on the New York Stock Exchange. They were wildly successful.

Jon - 00:03:14: That was his company.

Steve - 00:03:15: That was his company. And they eventually got bought out in an adverse raid. And so he cashed out. He was quite wealthy, but he always wanted to duplicate the success of DYMO. So he became an Angel investor. So he was always looking for something that he thought could have a big impact on the world. And when we gave that talk, he got very excited. He said, this reminds me of DYMO. He asked us if we were willing to engage with him. He would help raise the Angel money, get a bunch of qualified investors. And then actually, he wanted me to take over the CEO position immediately. But when I told him, like, hey, I'm not ready for that, so he took it. He took the CEO slot. So we were lucky because this is a guy who had like 30 years of business experience negotiating deals and partnerships, mergers. He had an unusual amount of experience coming to us with a very small company. But we started with four people.

 Jon - 00:04:11: Who were the other? Was it you two? So you and Rudy, and then two more?

 Steve - 00:04:17: Mostly faculty, so it was myself and then guy named [Luke Garden Young, who was professor of Material science. Michel Armand, he's really the father of polymer electrolyte batteries, and he was teaching at University of Montreal, and he also had a position in Grenoble, France, and then Meilin Liu, who's a professor at Georgia Tech. So we were the four originals. Since then, we've obviously brought in other people, but that was the founding group.

Jon - 00:04:42: Very cool. And if you're like, remembering back to when you first started this, what was the battery landscape like, battery technology? Were you guys like, in a brave new world?

 Steve - 00:04:53: No. Absolutely. So here's the thing that was really unusual, is that, like I said, the competing systems, at least in rechargeable batteries, were lead acid, it's 150 year old technology, and nickel cadmium that's probably 100 years old. Right. And there were primer throwaway batteries, obviously. And so we start the company, we get the funding, we open the doors in 1991, and out of the blue, Sony in Japan introduces lithium-ion. Everything changes.

 Jon – 00:05:26: Oh, my God.

 Steve – 00:05:27: Crazy time, in a way, to start a battery company. The bar just went way up. Right? So what we thought we were competing with was now wildly different. And so in some ways, we had to kind of reorient very quickly because we were working on a technology that at best compete with lithium-ion. But lithium-ion was already commercial. Right. And they were scaling, so didn't make any sense at all. So we started immediately looking for much higher energy density, battery couples like new chemistries, new approaches. And so what we did, in a way, is for the first ten years of the company's life, we became kind of a licensing company. So we did a lot of really fundamental advances in different approaches to battery chemistry, where you could get these large jumps in performance, but we wouldn't do the engineering. It was mostly like early testing, filing fundamental patents, and then we licensed those patents, and then we started doing basically joint development agreements with large companies because at that point, there were chemical companies like DuPont, Dow, and a company Hoechst Celanese that were not battery companies that wanted to get into the battery space. So they had some expertise. It could be polymers or thin film processing that they thought could make an impact in the battery space. So they were diversifying, looking to get in. In the early days of lithium-ion, it was Japan, right? It was Panasonic and Sony and Japan storage. There were a number of these Japanese battery companies, and actually, for a number of years, all the big battery meetings were in Japan because that's where all the activity was. Everybody wanted to meet with these Japanese companies. And you can imagine, like, the companies in the US at that time, even the big guys were Duracell, Eveready, Rayovac, you know, mostly selling batteries in supermarkets, right, and drug stores. And then Johnson Controls was selling lead acid batteries for ignition batteries for cars. So those companies, this was a threat to them too, right. All of a sudden, you have these rechargeable batteries that are starting to increase in performance and possibly displace their technologies. So all of those companies started lithium-ion programs internal to those companies, right. But the idea that they would catch up and compete, and every one of them failed. Like, they all failed miserably. And the explanation for their failure was that, well, the Japanese were just so far ahead, there's just no way to catch up. Right. They were just too far ahead. They had made a lot of money in the early years of lithium-ion because they could charge a lot for it. And as it was scaling, the price was coming down. So the American companies couldn't get in because they'd be losing money or breaking even. So they all kind of threw up their hands in defeat. But one of the claims at that time was that, but it's only the Japanese. Nobody else is getting in. Right. Nobody's going to be able to. And then, yeah, a year later, it's Korea, Samsung, LG, SK. So all of a sudden, you've got three big lithium-ion companies producing and competing from Korea. And again, the response is like, okay, maybe the Koreans can get in, but like China, they'll never get in. You'll never see lithium-ion in China. And now China is the major player. So it's just Europe and the US. That screwed up, right, that couldn't get in. And so now you have the situation where it's going to be a big part of the global economy. Like battery production is kind of like becoming the new oil. So from the time we started to this point in time, nobody, I think, would have predicted that this landscape would have changed like that, right? Where you cannot pick up a newspaper without reading about battery tech, without reading about what's happening with respect to building gigafactories and who's going to lead in not just in battery tech, but also in EVs. It's wildly different than when we first started.

Jon - 00:09:30: So when you first started, it sounded like you were doing a ton of intellectual property work.

Steve - 00:09:34: We were.

Jon - 00:09:35: And I'm, like, super interested to learn. Was that also just like, I'm going to just learn how to do this really well on the fly?

Steve - 00:09:41: Yeah, it's funny. That's certainly another story. So the way it happened is kind of subtle. Shortly after we started the company, this is like barely two years in, right? And we're still tiny. We're kind of learning how to almost set up the Lab. We're doing some kind of early experiments, trying to map out some strategies for new battery technologies. We were approached by a company in Silicon Valley that was making lead acid batteries for Apple. So this is lithium-ion. They hadn't actually propagated least in the US. Into laptops yet, so it was a little bit early for that. So this company was selling these obviously heavy lead acid packs that would strap onto the back of, like, an Apple laptop. And they wanted to go public. When they went out and talked to analysts, analysts said, lead acid is old school. No one's going to get excited about that. You're not going to be able to go public on that. They said, but you do have revenue, which is good. So they were making money. So the analyst said, you need to find a small company that's doing really exciting work in the battery space and then do like, a merger, like merge them in and go public together. So they found us, they came to us and they asked us, are you interested? And so they had a very smart CEO. We talked for a while. We said, yeah, okay, we'll do this. Let's give it a try. So here we are, two years in, we don't have anything approaching a product, and we're going to go public, right. That actually still have the red herring somewhere in my office that was written up right, for the public offering. Anyway, there's a whole diligence process that has to happen for that, right? So our value to that company that was going to merge us in was our patents. We had three patents from Lawrence Berkeley Lab. And so the underwriters hired a patent group, an IP intellectual property group, to look at our patents and then probably assess some kind of value, make sure that they'll probably stand up in court. They're well written. And in the process of doing that, they find out that Lawrence Berkeley Lab forgot to pay the maintenance fees and then the patents are abandoned. That's the truth, right?

Jon – 00:11:53: Oh, my God.

Steve – 00:11:54: It was like crazy town. Absolutely crazy town. So this could have been a huge lawsuit against the lab, actually. Right. It was a major fuck up. And we're freaked out. Like what? I mean, our patents are invalid now. They're in the public domain. So the lab is freaking out. And like I told you, in the early days of tech transfer, they were not hiring the best and the brightest. So these guys really screwed up. And so they had to petition the US Patent Office, right? And this is a pretty rare thing that you're going to go and say, hey, can you reinstate these patents? Most of the time they're going to say, yeah, no, you didn't pay the maintenance fee, they're gone. But they made a claim and I wasn't there, so I don't know. They made a claim that they had changed their mail stamp on the Hill and that they weren't getting the bills. But anybody who works with IP knows there are maintenance fees. So you would say like, where the hell are these bills? Right? They did get reinstated.

Jon – 00:12:52: God.

Steve – 00:12:53: And so that patent attorney that we used, that guy was clever. And that's how we ended up finding the company that we work with to write our patents. But with regards to the IPO, so we're getting ready to actually to go out, right, and to go public. And a competing company that had a technology that we were pretty damn sure would never work. Right. That would probably be dangerous. Had a conditional contract with Motorola to sell them $100 million worth of batteries. But the condition was they had to meet the Motorola specification. Now they had already gone public, right? And they had three public offerings. Their market cap was in excess of probably $3 billion. And two days before we're going public, their batteries are shipped to Motorola and they started exploding. And so they went from like $3 billion market cap to junk stock overnight. And the company that was leading our IPO, they were invested in that. So they lost a ton of money that day and they said no battery IPOs, it just shut down the whole thing. So that whole process stopped. Actually, it's probably good for us that it didn't happen because it was too early. I mean, for us it was definitely too early. But what we got out of that is basically a very clever patent attorney. And so we worked with them since then. But then one other thing happened to PolyPlus that was really kind of instrumental. Maybe ten years in, maybe twelve years in, I'd have to look up the exact date. There was another company, pretty shady company, that was following our intellectual property. So every time we filed a patent, and this was on a particular battery technology called lithium sulfur, every time we filed a patent, they would read our patents, which you can once they issue or publish, so they publish. You can look at the published application. They would read our patents and then write some little addendum, almost just some kind of non-sensical stuff and file. And so they were building up a patent portfolio on top of ours, in a sense, which you can do. It's basically that's patent trolling, right? You can patent troll people. So we were writing very fundamental, clever, well-written patents, and they were just running stuff through the patent office with maybe a few claims that made sense. Most of them, I don't think did. And then at one point, they made some claims that they were going to start producing batteries, selling batteries. They were going commercial. They were going into manufacturing. And obviously, they were going to be infringing our patents because we had all the fundamental rights to the technology. So they had a Director of technology at the time who knew our patent portfolio pretty well, and he told the CEO, we're going to be infringing PolyPlus. There's going to be litigation. So they preempted that by suing us, they sued PolyPlus. Yeah, it doesn't exist anymore. It's a type of lawsuit called an interference patent lawsuit, where they go into your patent, they copy your exact claims into their patent application, and then the patent office sees it as an exact duplicate, and then it launches this investigation. And then their claim is that we actually invented before them. So it's a way to kind of get the ball rolling. So they filed this interference lawsuit against us and their CEO. Now they were backed by a hedgefund guy named Jim Simons, is probably worth in excess of $20 billion. So they had a lot of money to come at us. And their CEO came to Berkeley and told us, we're going to burn your company to the ground. Literally, use those words. And he said, then we'll pick up the patents for a song because it's the end of your company. You'll have to sell. And so he left. And we had to make a decision like, do we fight because we had money in the bank, right? Do we fight or just kind of roll over and just take whatever deal they're going to give us? And we all made the decision like, fuck it, we're going to fight these guys. And that becomes well, in our case, it was going to become a technical argument. So first thing, this intellectual property law firm that we're working with did a very smart thing. They reached out to the guy who literally wrote the book on interference law. I mean, there's literally like a Bible and hired him, right? So this guy, everybody who studies interference law, it's his book, right? So we hire him as our attorney. And then I put one of my guys on the case. I said, okay, this is all you do. You just read their claims and look at our patents and then work with this law firm that's going to fight for us and then build a case. And that took us a good year, and it was expensive. We spent a lot of money, so we definitely were on the edge, like, we can't do this much longer. So then the case was held in DC. Right. As the USPTO Apple at court. And we destroyed them. We, like, literally destroyed them to the point where the judges started yelling at the opposition, their lawyers saying, this case should never have seen the light of day.

Jon - 00:17:46: Wow.

Steve - 00:17:47: And you wasted all of our time and you wasted this company's time. And then they took it on appeal to the Federal Circuit, and we beat them again. Then we had them, so they paid us some money.

Jon - 00:17:58: Oh, my God.

Steve - 00:18:00: So that was a pretty scary process. Not something anyone wants to go through, but as we went through that, the scientist that we assigned to the case, he learned a lot about patent law, and he writes our patents now.

Jon – 00:18:14: Wow.

Steve – 00:18:15: And he's part of the team, so that's a very strong position to be in. So now our patents are written by not just a patent attorney, but someone who's a scientist who works with the technology as part of the team. We still use the external law firm, right. For foreign filings and office actions. But our patents are really strong now and they're very detailed, and we can file provisional patent applications in a day or an hour if we have to. So that was certainly a learning process, a painful one, but in the end, it paid off.

Jon - 00:18:47: What a journey. I feel like this, especially whether it be in battery science, life science, anything that's like R&D heavy and requires intellectual property protection. This could happen to them.

Steve - 00:19:02: Yeah, for sure. And it happens all the time. But it's particularly scary for a small company. Right. So if you're Pfizer, if you're Pfizer and you get sued and I'm sure they sue everybody anyway, they're all suing each other. It's a whole different ballgame. That's just part of their budget. And in some cases, they'll go to mediation. We'll come to some agreement. But if you're a small company, that could easily be the end of the company.

Jon - 00:19:25: I have, like, two questions, because there's plenty of folks who are kind of it's now a thing to come from academia, like LBL.

Steve - 00:19:33: Yeah.

Jon - 00:19:33: It's more common now. They come out of tech transfer. They license some technology.

Steve - 00:19:37: Right.

Jon - 00:19:38: And they're starting the company. The first component that I'm kind of, like, interested in is it sounded like licensing patents is a good way to kind of bring in some cash. And is that something you would recommend?

Jon - 00:19:48: I think it probably depends on the discipline. For sure. You have to be very careful with licensing. Right. Because one, of course, it can be a complicated negotiation depending on the field in many fields you can get a royalty on sales, right? In some cases, like in the battery field, that's become increasingly difficult to do because the margins, at least in, say, something like lithium-ion, are razor thin, margins are really tight. So if you try to negotiate a 5% royalty, they're going to say no, they're going to walk away. But there are ways to maybe have a royalty in the early part of sales, and that is the technology starts to grow. Obviously with volume, you start to cut back on the royalty. But in any case, these negotiations can be quite tricky. And if you license all of your technology out, you're going to have a hard time doing an IPO or getting acquired. Right? Because what's the point? You don't own the technology anymore. You basically license it. But there are other ways to license. You can license by geography, by application. So I would say it certainly worked for us. We were very careful how we did that. So when we did these licenses, they were usually very restrictive to either a geographic region of the world or a particular market or device or size of the market. So yes, it definitely helped us. There were licenses that I would say kept us going too. And in retrospect, it was absolutely the right deal because it turns out that it was kind of a hot area when we licensed it, but it would have been very difficult to commercialize. And so there were some big companies, I think they clearly were doing some of this work internally and their thinking was, if it does go commercial, let's get the license now before it's wildly expensive. So they're all those kind of things to think about with regards to licensing. But you have to be careful if you do license, unless you're kind of naturally adept at these types of things, you're going to want someone who has some experience who can at least give you some advice. And there are companies out there that can definitely do that. There are plenty of companies that work on IP licensing.

Jon - 00:21:55: I think that's like great advice for everyone listening. It's not like a binary thing where it's like license it all or don't license it. Like zero licensing all licensing. It sounds like you be very strategic or else it really will pigeonhole you.

Steve - 00:22:09: Right, exactly. You effectively be selling your company out underneath you. Right. I mean, it might seem like a lot at the time, but if it's really an important technological advance, then you have to be very careful how you license it.

Jon – 00:22:19: Yeah, absolutely.

Steve – 00:22:20: It certainly teaches you a lot about deal structure too, when you're going through this kind of licensing process. So it's a learning process, but I would say be careful and don't be afraid to walk away from a deal. And we had some negotiations with Korean companies where we literally kicked them out of our conference room, told them to go back to Korea.

Jon – 00:22:29: Wow.

Steve – 00:22:09: They're tough negotiators. So you have to be willing to basically said, no, we're not doing this deal.

 Jon - 00:22:44: Yeah, that must have been intense. I was like thinking back to when you were mentioning that growing up, you're an avid reader and writer and it's like patents, it comes back the ability, I'm sure the quality of the patent is how well you write the thing.

Steve - 00:22:59: Yeah, that's right. And how you create the claim set and the specification. So that's a thing unto itself. Right. So at some point, hopefully you're not in litigation, but at some point probably someone's going to challenge your patent. Right. And actually that's the other thing about patenting. You certainly would not want to rely on one patent. Virtually anybody who's working in any area where a big advance is going to mean big business. You're trying to create a picket fence around the invention to make sure there's no daylight. She's got to close up all those holes. So yeah, writing the first good patent is kind of step one, but there's a lot of strategy on how you write these patents and how you write the specification so that you can in later continuations, you can pull out more of that spec and then create claims that cover what you're really doing inside the company. Because sometimes when you make these discoveries, there are certain aspects of the discovery, you're not sure how it's going to end up in a product. And as you take the technology forward, you say, oh wow, this is really important, let's get better coverage around that. So it's definitely kind of evolving. It's rare that you're going to go to market with a single patent. And anytime there's a litigation, a patent litigation, you almost always see both sets of attorneys are going to walk into that courtroom with a stack of patents, right? And that's kind of like saying like, yeah, we got a lot of patents, so don't fuck with us. And then the other guy's going to have if he doesn't have a stack that's got to equally large, he's in probably in trouble. That's just kind of the way it goes. So they got to be well-written and you kind of have to have a bunch of them. And then you get into a whole different issue, which is where do you patent? It's relatively inexpensive to patent in the United States. It's quite expensive to patent overseas because you have to have it translated. So there's something called PCT, which is like kind of holds the European countries for you for a certain period of time, but then you have to make a decision after that period of time is over. Okay, which countries? Germany, France, Spain. So every one of those countries that patent is going to have to be translated. And they'll have their own office actions and the EU, the European Union, they can see your patent claims in a different light than the way the USPTO will see them. So you have your patent just sail through the USPTO and then get stopped in the EU. It just means you're going to have to go through multiple iterations. So it's a very complicated process, actually. 

Jon - 00:25:31: Did you learn this just the hard way?

Steve - 00:25:34: All of it was the hard way, absolutely.

Jon- 00:25:38: It doesn't seem like there's like a playbook for this.

Steve - 00:25:41: I'm sure that obviously they teach this in law school, but a lot of it should be taught in graduate school in the sciences. Because first of all, even if you have an academic position right, and you are inclined to file patents, it helps, right, knowing a bit about how all this works. But certainly for those students that are going to go out as entrepreneurs and launch companies, IP is going to be, for sure, a big part of their protection against large companies just kind of taking it, walking away with the technology.

Jon- 00:26:14: I realize you're in the battery industry, but the first thing I think about is like the CRISPR dispute right now.

Steve - 00:26:19: Yeah, that's right.

Jon - 00:26:20: Which is like a patent dispute all over the world.

Steve - 00:26:24: That's right. And that's going to involve billions and billions of dollars in revenue. That's a huge discovery. Yeah. Well, that's the other thing, too, is that and this gets back probably more to the academic environment, but when you see something right, it's like you get very excited if you're on a couple of tests and it looks like you're right about discovery. It's real. And the mistake people oftentimes make is they give a presentation at a conference where they give something away. Hopefully, they're not so stupid they're going to present on it, then it's over. That's a public disclosure. It's over. But quite often, people will make the mistake of saying something at a conference that will later come back to haunt them, or in some cases, they just forget to file overseas within the time frame. So they'll get the US patent, but that's it. Right. And that happened in the battery space with lithium-ion phosphate, which is used as a positive electrode in lithium ion batteries. And it's starting to get increasingly important because, say, in a typical, say, Tesla battery, there's obviously a fair amount of cobalt in the positive electrode. Cobalt largely comes from the Congo. One, it's expensive. Two, it's mostly like child labor, probably verging on the edge of outright slavery. So there are a lot of ethical issues around cobalt right now. And so there's this move to lithium-ion phosphate. Well, that was invented. Probably the most important patent was John Goodenough, which he got the Nobel Prize for some of that, but he didn't file overseas. So China, which of course is a huge producer yeah, they pay no royalties at all. Oh, my goodness. The rest of the world, it's all public domain.

Jon - 00:27:59: Does this mean for a startup that they have to have a global IP strategy out the gate.

 Steve - 00:28:06: Yeah, absolutely. For sure. In some cases, companies will be a bit too aggressive, and there's just like, patent everywhere, all around the world. That's quite expensive. Most companies will be much more strategic than that. So in the battery space, right, obviously you're going to grab the US. Japan, Korea, China and Europe. Those would be the obvious places to file patents. There are other places you could think about Brazil and Australia that starts to get pretty expensive. You can probably not file in those countries, but again, it's an economic decision, but there are certain places you would absolutely want to file, and those are probably going to be pretty similar for patenting and Pharma. Obviously, India becomes important. They're big producers, so change it. Like India wouldn't be so important for the battery space, at least not yet. It may well be one day, but not yet. So, yeah, those are economic strategic decisions that can be a bit tricky. But patenting is not cheap. It adds up.

Jon - 00:29:07: And I was going to say, it's super cool that you're able to bring it in house and you yourself, you're able to do it, and you have someone who's now well versed on both sides.

Steve - 00:29:17: Yeah. And the other thing about that, if you can do that, if you can bring it in house, there's a huge benefit there with regards to how the patent gets structured. Right. Because typically, as a scientist, you have an idea, okay, you think it's patentable, then you're going to call in a patent agent who will sit with you, and you're going to describe what you've done and then the last questions. But you're educating them on what your discovery is. And it's hard to be jack of all trades, which IP attorneys kind of have to be. Right. So they do specialize quite often you'll have patent attorneys that specialize in kind of materials science, like batteries and maybe semiconductors. There might be some overlap between the two. And pharma is usually totally different. Right. That's a separate group of people. But in any case, you're trying to educate someone about your particular invention, and they're not experts in that. So they can miss something or they may not see some claims that could be quite important because they don't quite understand the reach of the technology. When it's your team member, they live and die by that stuff, so they really know it. And then they get excited in the sense like, oh, wow, if we file these claims and we do XYZ, then that'll generate some additional claims that we can cover. And so it's just a different way to evolve your patent portfolio. So I think it's good to have someone inside.

Jon - 00:30:39: Yeah. I'm trying to think about what an early stage company founders think about, like, early hires. Is this something where it might be an early hire that you may want to consider?

Steve - 00:30:48: So we didn't do it that way. Right. We started with an IP firm. I think it's a little tricky. That would be probably an expensive hire for a company that's just starting. And you may not have generated a whole lot of IP yet, but it's something. The question is, like, what size of company do you do that? It's certainly a good hire, and in some cases, like any company that starts to grow, it does matter what your degree is. But at the same token, not everybody who has a PhD or a Master's degree is really good in the lab. And so you start to see what talents people have as they do different jobs, and sometimes you just find that person like, wow, they really seem to love working with a patent agent or the patent attorneys. Right. And they really seem to have a feel for this. And that may just be the way that person evolves within your company or you hire one. Obviously all big companies have their own patent attorneys and usually have external counsel as well. But for us, it certainly worked out well.

Jon - 00:31:47: Interesting. So it kind of seems like maybe, that was like two steps. You first start with an IP focused firm or a big law firm that might have a strong IP practice, and then you have someone on your team who is maybe pure science at first because obviously, like you said, they have to communicate about what is the technology and then the IP.

Steve - 00:32:05: Yeah. And as you get further down that path, there are companies now that do IP strategy. It gets pretty complex as you generate a larger and larger portfolio. But that's a whole discipline into itself. Actually, Joe Siino, his dad was also Joe Siino, right, yeah, that's exactly what he did was intellectual property strategy, like how to monetize patents and just how to grow your portfolio strategically. So that's a specialty within intellectual property. And there are special firms that do just that IP strategy. So if you look at a big company like Wilson Sonsini, I mean, they're really quite big, right? They'll have all of that. They'll have classic IP attorneys who write patents. They'll typically have some level of IP strategy litigation. Not cheap, but they'll have it, right? Yes. In our case, we're lucky to have it inside.

Outro - 00:33:00: That's all for today's episode of The Biotech Startups Podcast. We hope you enjoyed our insightful conversation with Steven Visco covering his experience with tech transfer, global intellectual property, and patent litigation. To learn more about Steve's journey, be sure to tune into our next episode. If you enjoyed this episode, please subscribe. Leave us a review and share it with your friends. Thanks for listening and we look forward to having you join us again on The Biotech Startups podcast for part three of Steve's Journey, where we will discuss tips on applying for grants, the ins and outs of strategic corporate financing, and talent acquisition and retention. 

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