CCBJ: You earned your Ph.D. in Chemistry from Purdue and worked as a senior R&D scientist before becoming an IP attorney. How does your deep scientific background shape your patent counsel for biotechnology and pharma clients?
Malaika Tyson: As a Senior R&D scientist, I collaborated with groups including legal and business development. At Sigma-Aldrich Biotechnology, I assisted corporate acquisitions by reviewing patents and helping the legal team evaluate invention disclosures for patentability. I enjoyed seeing the corporate perspective and took law classes at Washington University. My academic lab training, combined with corporate experience interacting with business teams, enables me to provide practical, real-world advice. I understand both the science and business concerns behind patent decisions.
What initially attracted you to Lathrop GPM, and how does this move help you better serve biotech and pharma innovators facing today’s IP challenges?
Lathrop GPM’s strong reputation for attorneys with exceptional scientific knowledge and sophisticated legal strategies drew me in. The team deeply understands complex legal and scientific challenges biotech and pharma companies face. The collaborative and strategic focus at Lathrop GPM goes beyond patent drafting, assisting clients throughout the entire patent lifecycle. Working alongside attorneys experienced with diverse clients—from startups to global leaders—allows me to build on my practice effectively.
Given your expertise in European Patent Office opposition and global patent enforcement, what key trends should biotech companies track closely to protect their IP internationally?
Companies should closely track evolving patent laws, which differ significantly between jurisdictions despite efforts at harmonization through treaties like the PCT. For example, the Amgen vs. Sanofi case clarified antibody patent enablement rules in the U.S., significantly limiting functional claims. However, some jurisdictions offer more flexibility. Companies should ensure their patent drafting considers these international differences.
Additionally, biotech firms should closely monitor how AI impacts IP law. With AI increasingly identifying drug candidates, defining inventorship and claim structure internationally will be crucial.
How do eligibility rules differ significantly across markets, particularly for biotech and pharma innovations? What strategic advice do you offer companies navigating these global IP complexities?
Start planning early. Companies—especially smaller ones—often focus heavily on securing U.S. patents first. However, strategies effective in the U.S. may not align with other jurisdictions' patent eligibility requirements. Early planning around commercialization, regulatory pathways, and target markets is essential.
Understanding your budget and the markets where you'll sell or manufacture helps prioritize jurisdictions. For instance, obtaining a patent in Indonesia is straightforward, but enforcement involves criminal rather than civil courts, limiting practicality. IP strategy must align closely with broader business goals.
What, if any, reciprocity opportunities are there to consider in terms of patent eligibility cross-marketing?
Companies can strategically file priority applications in jurisdictions like Germany, allowing early searches and retooling before broader filing. The Patent Prosecution Highway (PPH) provides expedited processes when patents issued in one jurisdiction help accelerate examination elsewhere. However, nuances in claim structure and eligibility criteria differ across markets. Attorneys knowledgeable about these differences can strategically draft claims, leveraging pathways like the PPH for efficient international protection.
As AI reshapes R&D in biotechnology, how do you see the role of attorneys with scientific backgrounds evolving to meet clients’ IP strategy needs?
With AI increasingly involved in drug discovery, attorneys with scientific backgrounds need to expand their knowledge into areas like machine learning and bioinformatics. Scientifically trained IP attorneys can effectively translate complex AI-generated data to patent examiners, ensuring strong protection for hybrid AI-biotech innovations.
The conversations around AI-biotech hybrid inventions are fairly nuanced and failure to bridge these two fields may result in under protecting an important innovation. Attorneys also need to monitor how different jurisdictions are approaching the patentability of these discoveries.
Scientifically trained IP attorneys are translators—turning complex discoveries into actionable IP strategies.
Published April 25, 2025.
