SHARING AND COMPARING VIEWS: PHILIPPE CONAN AND THIERRY DUFRESNE, OUR EXPERTS FROM THE BUSINESS WORLD
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Almost a year ago, Thierry Dufresne and Philippe Conan joined our team after working for many years in the private industry. With a unique vision of intellectual property and its challenges, they agreed to share their views on their career paths, their consulting vision and their projects.
You spent most of your IP career in a large industrial group. How did you get there?
With an engineering background, I spent the first 20 years of my career in non-IP activities, notably as head of a department specialising in automation and electrical engineering.
It’s important to understand that some large companies recruit either patent engineers with experience in IP firms or at the European Patent Office (EPO) for their IP departments, or employees who have been trained internally. In the latter case, these employees generally have a strong technical background which they complement with external IP training. I worked in an industrial group which believed in the training of its employees.
Thus, this how I joined the CEIPI (Centre for International Intellectual Property Studies), a fully accredited training course, supplemented by the French and European qualification examinations. I therefore spent my entire career in a large industrial group, first working in the technical field, then in the IP field.
My career path is similar to Thierry, except that my career was spent within two companies.
Large companies offered a lot of training opportunities, and it was important to make the most out of it. After graduating in chemistry, I worked for six years in research and development for a large pharmaceutical company, until I also had the opportunity to join the patent department.
I already had some patent knowledge, but mainly as a source for research and therefore less on the legal side.
I started by leading a group of patent examiners and reviewing draft application texts. At the same time, I studied the various laws and regulations governing the procedures for acquiring and protecting patents, especially in France. After three years during which I learnt an enormous amount, I wanted to take a step forward by completing a qualifying program to become a patent engineer.
I then moved to a new company where I was able to work as a patent engineer. My mission was to manage the entire portfolio of several subsidiaries and to lead the group of patent engineers of the Paris site.
You both had field experience as engineers before moving into IP. What added value did this first experience bring to your career?
My engineering and management roles during the first 20 years of my career have given me an in-depth knowledge of how the various sectors of a large company operate, both the technical, industrial and logistical aspects, and the financial and commercial aspects.
I started my career in intellectual property in the same company. I was already familiar with all the company’s products and services, as well as their different markets and competitors. This proved very useful, for example, to identify the market and potential competitors.
More generally, my knowledge of the business world came in handy in my role as a patent engineer, particularly in terms of understanding the different strategies that could be put in place. This knowledge is essential when attacking to protect a patent or during a negotiation. It is good to know what are the legal, technical, and commercial aspects.
For example, the competitor we want to attack may be a partner in another project or with a subsidiary of our company. Thus, to negotiate, you must be truly integrated into the company in its entirety and know the stakeholders. This is undeniable asset that may prevent certain pitfalls and enables you to consider all possible options. It’s important to remember that within a group, one person’s competitors can be another person’s partners.
This overview is not something that an external firm can easily grasp.
My first experience allowed me to acquire technical knowledge that was very useful to practice in industrial property. It also allowed me to discover that most technical innovations were in fact published in patent texts.
What were your company’s main objectives in relation to intellectual property?
For the company, the main purpose of IP was to protect its investments in research and development (patents, designs) and marketing (trademarks), to ensure freedom to operate its own products and services, and of course to defend its IP interests in relation to third parties, particularly in the event of infringements.
It depends on the company. For the first company I worked for, the aim was to protect its inventions. For the second company, it was to increase its credibility vis-à-vis its competitors and to acquire negotiating tools to ensure its freedom to operate.
Conversely, what is the point of using an external service provider? Is it compulsory for a company?
Thierry Dufresne: While an in-house patent engineer is more familiar with the facets of the business, an IP firm has a better knowledge of developments in IP legislation, case law and the practices of the judicial authorities.
An IP legal adviser also has more experience than an in-house patent engineer in litigation matters due to the diversity of their clients.
For example, an infringement seizure is a prerogative of external IP firmssince they must remain neutral. They are more specialized in their knowledge and therefore can better support the in-house counsel.
Finally, large companies do not always have enough staff to process all the patents they want to file. By using external firms, you are ableto better manage the workload.
The neutrality of an external firm is a really important point. Since you are not part of the staff, a firm provides an objective viewpoint and can deliver messages that would not necessarily be accepted if they came from within the company.
In my company, the principle was to use an industrial property law firm for inventions that were co-owned with the outside world, to avoid any conflict of interest. This obviously depends on the budget that the company allocates to this type of service. The difficulty in our line of work, both externally and internally, is to show that we are not just a cost centre, but that we also help to bring in revenue, as well as help to control operating risks.
In the event of a budget cut, the use of an external firm becomes rarer, or for a reduced number of services. For my part, we always tried to maintain outsourced services while keeping only certain key aspects in-house.
Moreover, outsourcing some areas is essential as law firms have legal experience that companies do not have in-house.
What are the highlights of your professional life that influence the way you now practice your profession?
In an in-house IP department, we have to bridge the gap between employees who want simple, even Manichaean answers (e.g. whether a case will be won or lost, or whether a patent is definitively valid or not), and lawyers for whom everything is more nuanced and isn’t always so clean cut.
This was an exciting aspect of the profession and one that has stucked with meas we were talking with external attorneys on the one hand, and with technicians or sales personnel on the other. We therefore had to explain the ins and outs clearly to both sides, using their respective languages.
I also remember the differences of opinion internally between different departments, with some preferring litigation against a competitor and others preferring negotiation.
“We have to bridge the gap between employees who want simple or even Manichaean answers (…), and lawyers for whom everything is more nuanced and isn’t always so clean cut”.
I remember the preparation of an infringement case early in my career as a patent engineer, because a subsidiary had decided to attack a competitor. This experience got me into the thick of things pretty quickly.
What is specific to large companies is working in an international environment. This enables you to adapt to the person you are talking to. For example, I remember working with American, German, Japanese and Chinese colleagues, who had different approaches to a given problem.
Another aspect that I appreciated was the IP training that I provided within the company. The aim was not to go into legal detail, but rather to ensure that concepts that may seem obvious to some are understood by all.
For example, the perceived view of an invention is not shared in the same manner by an R&D researcher and a patent engineer. On several occasions this has helped us unearth inventions that were considered obvious by the inventor, but which in the end turned out to be eligible for protection under patent law.
As a member of the company’s IP management, we were seen as the specialists who assisted stakeholders in assessing risks (including financial risks) and providing sound advice, without systematically blocking any operational project.
What is new since you joined the Alatis team?
Being on the other side of the fence! This enables me to bring my experience as a patent engineer to the team and to our customers.
It is also an opportunity to develop training activity with small businesses.
Throughout my career, I have noticed that the level of industrial property knowledge within companies is not always sufficient, especially when it comes to patents.
Many inventions have been plundered because of this.
New employees decide to manage an entire patent portfolio without any prior in-house training.
I was given the opportunity to train these new recruits in industrial property.
I am therefore convinced that there is a need for training managers of small companies that our network could oversee. This will enable some small businesses to develop their intellectual property portfolio in line with their strategy. Some more specific training can also be envisioned depending on companies areas of expertise, such as software protection or design protection, among others.
“I am therefore convinced that there is a need for training managers of small companies that our network could oversee”.
With our background in the industry, we tend to use concrete terms for customers rather than legal terms. This goes hand in hand with our ability to file and manage patents.
So, like Philippe, my aim is to provide customer training, especially since we’ve done much of it within our companies, and even beyond.
We are therefore particularly well placed in this network to provide this training.
Interview by Jean FILLIOUX, law student, under the supervision of Anne DESMOUSSEAUX, founding partner of Alta Alatis Patent
Do you want to register a trademark, a patent or more generally an Intellectual Property right? Our advisers and lawyers are available to provide you with information and to assist you in your efforts. You can contact us at the following address: firstname.lastname@example.org
This post is also available in: French
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