Read the summary and watch or listen to the interview here: https://www.crowleylawllc.com/podcasts/protecting-startups-innovations-with-dr-anne-marie-yvon
Introduction to the Podcast
Voice-Over: Welcome to From Lab to Patient, Garage to Market, the podcast with your host, Phil Crowley. In each episode, we discuss professionals serving the tech startup market and the key issues facing these companies. You can find this show on major platforms, including YouTube, LinkedIn, Facebook, Apple Podcasts, Spotify, and on our website, CrowleyLawLLC.com. Now, here’s your host, Phil Crowley.
Phil Crowley: Welcome, and thank you for joining our podcast today. In these episodes, I aim to bring experts and participants from the startup and technology worlds to share their experiences. This way, you can learn about the opportunities and risks, helping you feel more prepared to take the leap of starting your own company.
Meet Anne-Marie Yvon: A Journey from Science to Law
Phil Crowley: I’m delighted to welcome Anne-Marie Yvon, a registered patent attorney with extensive experience in filing, management, and strategic planning for patents. Patents are critical to the value proposition of life sciences and technology companies. Anne-Marie, welcome!
Anne-Marie Yvon: Thank you for that kind introduction and for having me today.
Phil Crowley: You have an impressive academic background—a PhD in Molecular and Cell Biology from the University of Massachusetts at Amherst—and a fascinating career trajectory. You’ve worked as a scientific consultant, transitioned into patent law, and even joined a prestigious firm, WilmerHale, before starting your own law firm. How did you decide to apply your scientific expertise to the legal field?
Anne-Marie Yvon: It’s an interesting story. When I was finishing my PhD, I originally planned to become a college professor. But as I neared the end of my program, I started exploring other career paths. I considered academic postdoctoral work or industry roles as a scientist, but I wanted to see what else was possible. Through networking—an essential tool for any career transition—I met someone at a party who had also transitioned from a PhD to patent law. That conversation set me on this path to explore what was, at the time, considered an alternative career.
Navigating the Patent World
Phil Crowley: How did you end up attending law school while working full-time?
Anne-Marie Yvon: After moving to New York, I got a job at an intellectual property boutique firm. They hired PhD scientists and trained them as patent practitioners. With a scientific or technical background, you can take a specialized bar exam to practice before the U.S. Patent and Trademark Office without a law degree, working as a patent agent. I started my career that way but decided to attend law school at night to advance further. Many of my colleagues followed a similar path, moving from patent agent to patent attorney after earning their law degrees.
Strategic Career Moves
Phil Crowley: What motivated you to leave the boutique firm and join WilmerHale, a large and prestigious firm?
Anne-Marie Yvon: I spent about seven and a half years at the boutique firm, gaining invaluable experience in writing patent applications, working with the patent office, and conducting analyses like patentability and freedom-to-operate assessments. However, I wanted broader experience and exposure. At WilmerHale, I had the opportunity to work on patent litigation, which allowed me to see what happens years after patents are granted—whether they’re challenged or enforced. This perspective made me more strategic in advising clients, helping them anticipate and minimize risks during the patenting process.
Litigation Insights and Challenges
Phil Crowley: You’ve worked with a small biotech company involved in litigation against a large corporation. Can you share insights from that experience?
Anne-Marie Yvon: Often, patent litigation involves large companies. However, in this case, we represented a startup doing exciting science. They were sued by a large competitor for patent infringement, which can be daunting for a smaller company. Our role extended beyond legal strategy; we educated the client on the process, breaking it into manageable steps and ensuring they felt supported. From discovery to expert witness preparation, we guided them through every phase.
Litigation is expensive, and large companies often have significantly more resources. For startups, this can feel like an existential threat. Our job was to mitigate that stress and empower them with a clear understanding of the process and confidence in our approach.
Phil Crowley: That must have been invaluable, especially given how high the stakes are for smaller companies. Litigation can determine whether they survive to continue their innovation.
Advice for Startups and Innovators
Phil Crowley: You work with many startup companies and smaller businesses. What are some key elements you emphasize to help them protect themselves effectively, especially as they grow and face potential legal challenges down the road?
Anne-Marie Yvon: I love working with startups. They’re my favorite type of client because I enjoy being deeply involved in the business. With large companies, you’re often just a cog in the machine, but with startups, I get to interact directly with founders, scientists, and the people driving the company forward.
One essential aspect for startups is intellectual property (IP). As a small company, your ideas, vision, and intellectual property are your most valuable assets. It’s critical to consult with patent practitioners early in the process. Even if you’re not ready to file a patent application, having early discussions can help you and your patent attorney develop short-, medium-, and long-term strategies for building your IP portfolio. It’s easier to plan proactively than to try to adjust a year or two into the process.
Many startups, especially those spun out of academic institutions, are built on foundational work that may already have associated patents or licenses. Early consultation ensures you’re on the right track. You’ll have more flexibility to make strategic decisions, rather than finding yourself limited by earlier missteps.
Another crucial aspect is freedom to operate. Before investing heavily in product development, ensure that existing patents won’t block your ability to bring your product to market. Identifying potential issues early saves time and resources.
Phil Crowley: That’s great advice. Now, could you elaborate on protecting the patentability of information during the development process? How do startups “keep the genie in the bottle” before they’re ready?
Anne-Marie Yvon: Keeping the genie in the bottle can be challenging, especially for startups with academic ties. Academic scientists need to publish their research, which can conflict with corporate objectives. Patent terms start from the filing date, so filing too early might sacrifice term length on the backend, while filing too late risks public disclosures jeopardizing patentability.
Communication is key. Before presenting to investors, submitting an abstract, publishing a paper, or making any external disclosures, consult with your patent practitioner. We can help determine what needs to be disclosed and what should remain confidential. If details must be disclosed, filing a patent application beforehand ensures protection.
It’s also vital to educate your team about this process. Any external disclosures should go through your patent attorney first. If something inadvertently gets disclosed, inform your attorney immediately so they can mitigate potential damage. Effective communication and planning safeguard your IP without stifling your business operations.
Phil Crowley: That’s excellent insight. Many people aren’t familiar with how public disclosures affect patentability or the role of provisional patent applications. Could you explain their importance?
Anne-Marie Yvon: The patent process is straightforward at a high level. You file an application with the patent office, which marks your official invention date. This application can be provisional or non-provisional. A provisional application establishes your filing date but isn’t examined. You have one year to decide whether to file a non-provisional application in the U.S., an international application, or let the provisional lapse if your research changes direction.
Filing a provisional application protects your invention from becoming part of the public domain. If you publicly disclose your invention without a filing, it could be considered prior art, which may prevent you from obtaining a patent. While the U.S. offers a one-year grace period for inventor disclosures, many countries, including those in Europe, do not. Filing before any public disclosure ensures your invention remains patentable worldwide.
Phil Crowley: It sounds like developing a relationship with your patent attorney is essential, not just for filing patents but for creating a robust IP strategy that aligns with your business goals.
Anne-Marie Yvon: Absolutely. A strong relationship with your patent attorney helps ensure your strategy protects your intellectual property while supporting your business objectives. Patent attorneys aren’t just scribes; they’re strategic partners who help you navigate complex decisions that balance legal and business considerations.
Phil Crowley: Shifting gears, what has your experience been like setting up your own business? What do you enjoy, and what were some surprises?
Anne-Marie Yvon: I never envisioned myself as an entrepreneur, but my partner, Julia Grimes, encouraged me to take the leap. She started her practice first, and two years later, I joined her to expand the business.
Working in big law was rewarding, but as I advanced, I spent more time managing and less time in the technical details I love. Running my own practice allows me to stay deeply involved in the work while applying my years of experience.
Starting a business involved learning new skills—setting up QuickBooks, managing case systems, and handling state registrations. It’s manageable, especially with the help of resources and advice from colleagues. Networking has been invaluable; people are generous with their time and guidance when you ask for help.
Phil Crowley: That’s inspiring. Thank you for sharing your journey and insights. Your work with startups is invaluable, and I’m sure our audience will benefit from your advice. Thank you for joining us today.
Anne-Marie Yvon: Thank you, Phil. It’s been a pleasure.
Voice-Over: Thank you for tuning into the From Lab to Patient, Garage to Market podcast with Phil Crowley. You can find this show on all major platforms, including YouTube, LinkedIn, Facebook, Apple Podcasts, Spotify, and our website, CrowleyLawLLC.com. If you found this information helpful, please subscribe, like, leave a positive review, and share with others.
