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Q&A with Lexology Index

Otto Licks is a founding partner at Licks Attorneys with a 30-year track record of representing international clients in different sectors. He specialises in complex litigation, patent enforcement, and policy making. Otto has led landmark cases in life sciences and advised on international treaty compliance. Recognised globally, he is praised for setting precedents on strategic litigation and is considered one of Brazil’s top intellectual property lawyers.

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What motivated you to specialise in life science patents?

Our specialisation in life sciences began with our inception in 1995. Initially, our motivation stemmed from the need to support the reintroduction of life sciences as patentable subject matter within the Brazilian patent system. We understood that patients and the medical community required up-to-date, modern therapeutic options that are life-saving. Prior to the reintroduction of life sciences in 1995, Brazil had very few medicines, many generations behind global standards. Subsequently, we focused on assisting innovators and companies seeking to invest in the Brazilian market. A third motivation has been the pleasure of supporting Brazilian innovators. Looking back, we are very proud of our work on behalf of innovators, research-based pharmaceutical companies, and, most importantly, we are proud of the positive impact on physicians and patients

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What qualities make for a successful patent litigator?

Specialisation, investment in people and resources, focus, and extensive volume/experience are crucial. The era when a single attorney handled both soft IP and pharmaceutical patent litigation, or when a case could be managed by a single lawyer working shorthanded, is long past. We are not a trademark agency staffed by individuals with mere bar registrations. Our focus is not on marketing potential capabilities; rather, we demonstrate what we have already achieved. We deliver results—consistently and substantially.

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You have a highly international practice, with a presence in Brazil, Japan, and Germany. How are you seeing demand from different jurisdictions change?

Now, more than ever, practitioners in any jurisdiction need to understand both the client's legal culture and the opponent's legal culture. Furthermore, to achieve success, communication with clients and their teams of attorneys in other jurisdictions must be nothing short of perfect. We cannot achieve the required interface and ability to communicate without people dedicated to and expert in comparative law, which we refer to as "desks," strategically located both abroad and in Brazil.

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In 2021, the Supremo Tribunal Federal declared the provision for patents to last a minimum of ten years from their granting to be unconstitutional, leading to a rise in lawsuits requesting patent term adjustment. How has this impacted your work in the life sciences field?

This decision represents the only patent case addressed by the Brazilian Supreme Court since the implementation of the current patent system in the mid-90s. The case was decided during the hardships of the COVID pandemic. Countries with leading medical practices universally incorporate Patent Term Adjustment (PTA) and/or Patent Term Extension (PTE). Companies investing in Brazil, physicians, and patients have been adversely impacted by this decision. We trust Brazil will work to establish a world-class patent system. Indeed, without the contributions of the research-based industry, we would likely still be facing the challenges of mask-wearing and remote work.

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What difficulties might a practitioner encounter when addressing patent infringements for global life science companies? How might they address them?

We observe in global media a trend of criticism directed at research-based pharmaceutical industries, where innovation inherently demands substantial investment and time. When addressing patent infringement, it is not solely about validity, claim construction, and infringement. Issues such as access to drugs, media perception, and relations with patient groups and physicians are equally important.

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In what ways has the US Supreme Court's decision in the Amgen v. Sanofi case impacted subsequent international patent cases within the life sciences sector?

Written description, support in the specifications, and enablement have become key issues.

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How do you bridge the gap between technical and non-technical stakeholders when advising on patents within the life sciences?

Successful projects necessitate robust teamwork and coordination, not only from the attorneys but also from the client. Patent professionals within client organisations have long recognised the critical importance of coordinating with local subsidiaries, government relations teams, and other relevant stakeholders.

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As the founding partner of Licks Attorneys, what are the firm's primary challenges, and how do you plan to tackle them?

The firm's primary challenges are to hire and retain the very best talent. The imperative for specialisation demands innovative approaches. Among our most valuable proprietary insights are our strategies for identifying, recruiting, and retaining top talent. Artificial Intelligence serves as a valuable tool, but it is never a replacement for human expertise.