With extensive experience in drafting trade agreements and a deep understanding of global compliance, Desiree Sainthrope operates at the intersection of law, technology, and business. As a recognized authority on intellectual property, she navigates the complex journey of transforming raw innovation into defensible commercial assets. In our conversation, we explore the strategic thinking behind her work, from the “living claim trees” she uses to map out patent prosecution to the “bilingual” fluency required to bridge the gap between inventors and patent examiners. She shares insights into commercializing R&D, the chess-like maneuvers of claim strategy, and the disciplined processes needed to handle the pressures of high-stakes filings.
You mentioned using a “living claim tree” to manage complex cases and switch gears quickly. Could you walk us through the step-by-step process of creating one for a new invention, explaining how its branches help you anticipate challenges from both examiners and competitors?
Of course. The claim tree is my strategic map for every case. The process begins with the broadest possible claim, which forms the trunk of the tree. This is our most ambitious reach. From there, I branch out. The first set of major branches represents key independent claims, each covering the invention from a slightly different angle—perhaps one focuses on the device itself, another on the method of using it. Then, off each of these, we grow smaller branches, which are the dependent claims. These add specific limitations and features, acting as strategic fallbacks. When an examiner challenges the broad trunk claim with prior art, I’m not scrambling; I can simply retreat to a pre-planned, narrower branch that I know is defensible. This structure also helps me think like a competitor, anticipating how they might try to design around the patent and ensuring we have branches that block those alternative paths. It’s a proactive, not reactive, way to prosecute a patent.
Describing a key skill as “bilingual thinking,” you highlighted the need for fluency in both lab and legal language. Could you share a specific, anonymized example of how you translated an inventor’s technical description into a precise legal claim that successfully overcame an examiner’s objection?
I recall a case involving a new pharmaceutical compound. The inventors were brilliant scientists, and they described their invention in terms of its chemical structure and the specific way it bound to a receptor. The examiner initially rejected it as obvious, citing a similar compound from a prior patent. The inventors were frustrated, saying, “But ours works so much better!” That’s where the translation comes in. “Better” isn’t a legal argument. I sat down with them and dug into the data. We discovered their compound had an unexpected secondary effect that dramatically reduced side effects—something the prior art didn’t even contemplate. I rewrote the claim to focus not just on the structure, but on this functional advantage. The claim became a “compound for use in a method of treatment, wherein said use results in reduced toxicity.” By translating their lab result into a legally recognized inventive step, we moved the conversation away from mere chemical similarity and secured the patent. It’s about finding the legal story within the scientific data.
You’re developing training to help Turkish SMEs and universities “productise” their R&D. Beyond simply filing a patent, what are the first three critical steps or metrics you advise them to use to determine if an idea can become a protected, money-making asset?
This is crucial because, as I always say, filing is just a timestamp; protection is a strategy. The first step I advise is to define the commercial endgame. Before you spend a single lira on a patent application, you must ask: “Who will pay for this, and why?” Is this a core technology for our own product, something we plan to license to a larger company, or a defensive asset to keep competitors out of our space? The second step is a thorough prior art and freedom-to-operate search. This isn’t just about patentability; it’s about business intelligence. It tells you what the competitive landscape looks like and whether you might be infringing on someone else’s patent, which could kill the project before it even starts. Finally, the third step is to assess the “data-to-claim” fit. Can you actually support the claims you want to make with solid, reproducible evidence? For an examiner at the EPO or Turkpatent, a bold claim without robust data is just an unsupported hypothesis. These three filters—commercial alignment, competitive clearance, and evidentiary support—help separate promising R&D from expensive hobbies.
Comparing claim strategy to chess, you noted the excitement of outmaneuvering competitors. Can you recall a specific strategic “move”—like a clever claim amendment or argument—you made in response to a tough search report, and explain the thought process that led to that successful outcome?
I remember a challenging case for a biotech client where the EPO search report felt like a checkmate. It cited several documents that, when combined, seemed to cover all aspects of our invention. The obvious move was to narrow the main claim significantly, but that would have gutted its commercial value. Instead of just reacting, I went back to our original application with a fine-toothed comb. Tucked away in one of the examples was a detail about the specific temperature range at which our process yielded optimal results—a detail the inventors had noted but didn’t consider the core invention. My “move” was to amend the claim by incorporating this seemingly minor temperature limitation. The thought process was that none of the prior art documents, even when combined, suggested that this specific range was critical for success. It was a feature that was fully supported by our application, so it wasn’t adding new matter, but it was just distinctive enough to create that inventive step. The examiner agreed, and we secured a patent that was both strong and commercially meaningful. It felt like finding a winning move that was on the board the whole time, just waiting to be seen.
You mentioned the stress of incorporating “late-breaking data” near a deadline. Can you recount a time this happened on a major case? Please detail how your issues list and escalation plan specifically helped you integrate the new data and ensure a strong, timely filing.
We were days away from a major European filing for a medical device, a culmination of months of work. The application was polished, the claims were tight, and we were ready. Then, an email lands in my inbox from the client’s lead engineer with a subject line: “URGENT NEW DATA.” They had just completed a final round of testing that showed the device performed exceptionally well under a specific, unforeseen condition. Panic could have set in, but our process kicked in. The issues list was my first tool. I immediately outlined the critical questions: Does this new data strengthen our primary claims? Does it enable an entirely new, independent claim? Does it contradict anything already in the application? I then triggered our escalation plan, which meant an immediate call with my team, the client’s in-house counsel, and the lead engineer. We walked through the issues list together. The new data was a game-changer, strong enough to warrant a new set of claims. We made the tough but correct call to work through the night to integrate the data, redrafting key sections and adding a new claim set. The structured process turned a moment of high stress into a focused, productive effort, resulting in a much stronger patent application being filed right on time.
Do you have any advice for our readers?
My advice is to stop thinking of a patent as a certificate you hang on the wall and start seeing it as a dynamic business tool. Real protection doesn’t come from just filing an application; it comes from a strategy that is deeply aligned with your commercial goals. Be relentlessly curious, not just about your own technology, but about the legal and competitive landscape you operate in. And most importantly, build a relationship with a patent attorney who thinks like a strategist, not just a scribe. The right partner won’t just file your invention; they will help you turn it into a protected asset that creates lasting value and keeps your competitors on their heels.
