Corbel, P., Rapport intermédiaire sur l’utilisation stratégique du brevet dans les entreprises françaises, rapport de recherche remis à l’ASPI (Association des Spécialistes en Propriété industrielle de l’Industrie), décembre 2009, 40 p.
This report presents the intermediate results of a study on patent strategies implemented in French companies. Contrary to the majority of work carried out in this field, the approach adopted combines a strong anchoring in practice and a strategic management perspective.
The starting point is the multitude of possible uses of the patent. The role of protection against imitation remains the most important, but its effectiveness in this area is limited by the possibilities of inventing around and the obstacles to infringement actions. Nevertheless, there are many other uses. The increasing need to justify the profitability of all actions taken in the company may have encouraged the development of licensing out, but this remains a rather secondary role in most companies. The holding of patents can also help to preserve one's freedom of exploitation through a triple effect of demining, dissuasion and cross-licensing opportunities. The patent thus becomes a negotiating tool. It is also perceived as conveying an image of innovator and is increasingly recognised as an asset with a financial value. Finally, even if these roles are less unanimously recognised, the patent can be considered as a tool for knowledge management, performance measurement and even motivation.
To fully exploit some of these roles, the filing of a fairly large number of patents is necessary. The two main obstacles are the cost and the need to master specialised skills. These functions of the patent can be further enhanced by the use of other IP rights, notably by using trademark/patent or trademark/copyright bundles.
Most of the companies interviewed have set up IP departments (nevertheless, the particularities of the samples used must be borne in mind). These units have a variety of tasks, going beyond the mere management of rights: freedom of exploitation studies, awareness of IP issues, technology watch, etc. Even if recourse to intellectual property attorneys is frequent, an internal department makes it possible to react more quickly in the event of a major IP problem (e.g. a dispute). One of the difficulties is to manage a budget where the main items are usually extensions and annuities, which means that the budgetary consequences are shifted in time compared to the initial filing decisions. Another crucial point is the articulation with the other functions of the company. The various hierarchical connections (R&D department, legal affairs department, etc.) all have their advantages but also their limitations. However, this is not the only means of coordination: other formal (patent committees) or informal means also play an important role. It is also about developing a mindset that makes the IP department a provider of sound advice and solutions and not just a constraint on R&D projects. It is also through these channels that the link with the company's strategy will be established, which is sometimes difficult in large firms, even if it is facilitated by a fairly high level of awareness of these issues among executives. There is undoubtedly some progress to be made here, particularly in informing the IP specialists of the major decisions setting the company's strategic direction - if not in involving them in the decision process.