The Hirsch International IP Law group: Ahead of the curve

What comes to mind when you think of the year 1968? No doubt the burgeoning civil rights movements and the assassination of Martin Luther King Jr. in the United States, or the protests and revolutions in France and the rest of Europe. Today people still remember these events because of the seismic social and political changes they wrought.

Other significant breakthroughs in innovation were made the same year. Boeing introduced the world’s first jumbo jet, the 747, then the largest passenger aircraft, a milestone in the global aviation industry. The first manned spacecraft to orbit the moon, Apollo 8 carried three human beings to our closest celestial neighbor.

When young Marc-Roger Hirsch became a French intellectual property attorney, in French a Conseil en Propriété Industrielle, and founded his IP firm in 1968, he probably didn’t realize that it would go on to become an industry game changer.

Since then, the firm has undergone tremendous development in the spirit of its founding values – delivering uncompromising quality in comprehensive IP services and anticipating clients’ needs – and has always stood alone in the French market as a unique leader, strong in both prosecution and litigation.  

A pioneer that is still innovating

To understand an organization’s present, we must go back in time and trace its origins.

Marc-Roger Hirsch is probably viewed by many as having a peculiar existence in the IP industry. With the rapid growth of IP prosecution activities, in order to satisfy clients’ needs, he qualified in 1977, to join the profession known in French as Conseil juridique (legal advisors or non-pleading lawyers), in addition, obviously, of his IP attorney status. He was at his beginning an Examiner at the International Patent Institute (ancestor of the European Patent Office) and an Examiner at the Dutch Patent Office during three years.

French Law No° 90-1259 of 31 December 1990, which amended an earlier 1971 Law, with its implementing orders, introduced significant changes to the profession of barrister (avocat) consisting in amalgamating the existing professions of barrister and legal adviser. Hirsch thus continued to keep his IP attorney status, while now being able to plead before the Paris Bar, incidentally, this was achieved by referring to the Décret d’Allarde of 1791 that guarantieed the continuation of his previous activity. He eventually became a barrister in 1997, continuing the activities of IP attorney with the authorization of the Paris Bar of Attorneys at Law (Avocats).

In contrast to other European jurisdictions, in France the IP litigation and prosecution professions are separate, therefore firms that excel at both activities are rare. As early as in 1985, Hirsch predicted that the profession of IP attorney would converge eventually with the profession of lawyer. A passionate reader of history, he drew this conclusion from his observation of history: the first European patent applications were filed in 1978, and a few years later, firms began litigating in Munich before the EPO and other national courts, engaging judicial procedures. He keenly sensed an increasing demand for expertise in judicial issues.

In 1997, by dividing his patent attorney’s firm in two firms, for the reasons explained above, i.e. Hirsch & Associés, specializing in IP litigation and maintaining an IP firm Hirsch & Partners specializing in IP prosecution, he was the first person to bring together two complementary organizations in terms of skills and activities, offering clients a comprehensive, efficient and cost effective service through the entire value chain of IP, from acquisition of rights through to their protection and defense. The firm has had such a profound influence that many people in France who have dual qualification were trained here: later on either they founded their own firms or created the IP branch at large law firms.

The close collaboration in Hirsch IP Law group between the teams of multidisciplinary IP attorneys of Hirsch & Partners and the teams of lawyers and barristers of Hirsch & Associés, all highly specialized and qualified in IP, is the origin of a powerful synergy and a key element in both firms’ success when it comes to complex technical questions arising in the assertion and defense of IP rights – which nowadays embrace much more than just patent rights.

Today the IP Law group has a highly-qualified team of around 60 employees, including approximately 20 engineers and lawyers. This medium scale allows the firms to have the advantages of critical mass and high quality of services, while avoiding the disadvantages of some larger organizations, and remain flexible, reactive and rapid when it comes to internal decision-making. With a clear focus on patents, the group is also active in trademark and designs, copyright, domain names and unfair competition.

Innovation is also an integral part of daily work. The group has launched several modernization projects: within several months, it has gone paperless; a huge effort at standardization has been done on the most time consuming part of each procedure, task and activity, so as to increase efficiency and dynamism in the market. Other projects are also underway. In order to better serve clients’ evolving needs, the group constantly proposes new services such as the mapping of patents and technologies. In line with its collaborative approach, the group encourages each team member, not just the partners, to participate in brainstorming for new ideas and projects.

Strong individuals united by the same vision

The success of an organization depends not only upon having the right vision, product or service, but also the right people to carry out the vision and build the product or service day in and day out.

United around visionary founding partner Marc-Roger Hirsch, partners, lawyers and attorneys at the firm have impressive backgrounds and expertise, and work in unison.

Christophe Andral is the partner heading the chemistry and life sciences department. He is fully qualified in the IP field and benefits from a long and solid IP practice of more than 25 years within two major international companies. He started his career in 1985 as a patent attorney at Rhone-Poulenc Chimie and then moved to L’Oréal in 1993 where he became worldwide chief patent counsel from 1995 to 2013. He is fully familiar with drafting, filing and prosecuting patent at national, European (EPO) and international (PCT) proceeding levels. Besides managing an important patent department and the team of patent attorneys attached thereto, Andral’s skills also include opposition, validity study and right-to-market (freedom-to-operate) study, litigation, managing and valuing patent portfolios, defining and implementing industrial property policies, including employee’s inventions reward systems, and providing strategic and global IP advices to clients. In his previous position, he had frequent interactions and contributions with corporate and local legal departments, the R&D legal department (contracts, licences) and the business development (collaborations, merge and acquisitions, due diligences). As a result of his background, he has acquired a special and significant expertise in the field of disputes and litigations attached to patent law (infringement and employee’s invention), and also in the field of US patent law. Having spent significant time in the United States, he speaks perfect English and has a good understanding of the IP laws of different jurisdictions around the world.

Guangtao Bu is the partner in charge of the mechanics and electro-mechanics department. After having worked over five years in transport and logistics as a naval engineer in China, he chose to come to France, attracted by the deep and diverse cultures, traditions and history of the country and the European continent. After working in the industry, then at a large Parisian IP law firm and having been trained in the patent law of the United States at a Virginian law firm, Guangtao joined Hirsch IP group in 2014. Convinced that IP is just a specialization while the common part of law, is just as important, he wanted to strengthen this aspect and therefore started attending classes in law at Strasbourg and Paris universities during his free time. After graduating with Masters in law, he is currently in the process of writing a law thesis. In addition, he is the only person in France to have the multiple IP qualifications, of being a European patent attorney with French and Chinese patent attorney qualifications. He is currently members of the European Qualifying Examination Committee and of an ISO-AFNOR Standardization Committee. He speaks Chinese (native language) as well as English and French.

Olivier Cochonneau, promoted to partner on January 1st 2017, leads the electronics, IT and telecoms department and works closely with Guangtao Bu on several trans-disciplinary subjects. Convinced of the importance of the practical use of science, he studied applied mathematics at INSA (National Institute of Applied Sciences), and then computer science, statistics and probabilities at Rouen University. He started his career in R&D in computer science, signal and image processing in the industry in the UK and then in France. He went on to work as an examiner for the European Patent Office (EPO) for six years in different technical fields related to computers and telecoms. Spurred on by the aspiration of having a comprehensive view of the whole innovation chain instead of just evaluating technical application, from 2013 on, he worked for a number of large IP law firms in France and Belgium, and ran one secondary office for one of these firms. He acquired through these positions sound experience in patent prosecution and litigation, and also in running and managing an IP law firm, before joining Hirsch. He is currently a member of the Board of Examiners for the French IP qualification exam in the patents section. He speaks English, German and Dutch.

Frederic Nguyen, French and European patent attorney, PhD in Analytical Chemistry of the Pierre et Marie Curie University in Paris with a major in Electrochemistry. Graduated on patents from the CEIPI (European Center for Intellectual Property of the Law Faculty of Strasbourg University). Former research fellow at the California Institute of Technology in the field of ion-exchange polymer membranes for fuel cells, he then worked at the battery division of PSA and at the Compagnie Française d’Electrochimie, and joined Hirsch in 2004. He has an excellent experience in battery technology: lead-acid, nickel-metal hydride alkaline and lithium ion batteries, and speaks English.

A team of three IP attorneys and three lawyers work on the trademark side, among whom:

Jean-Marc Lefrançois, Master in public law, graduated in E.E.C Law, doctor (D.E.S.S) of the Panthéon-Sorbonne University. He is an authorized representative of European trademark office in Alicante. Barrister since 1985, he joined Hirsch in 1997 as a litigator. A seasoned expert in advising and pleading before courts on competition, advertising, contracts, consumer rights and protection, as well as labor law, he is particularly specialized in design and copyright laws, and the number of actions he won in this field is very high. He speaks English.

Emmanuelle Tevenin worked as a lawyer in the General Directorate of the French Patent and Trademark Office for more than four years, where she was closely associated with the preparation of the comprehensive overhaul of trademark law which occurred in France in line with Act of parliament No. 91-7 of January 4, 1991, including implementation of the first European directive on trademarks and the codification of all French IP law. These missions included her being designated as Commissioner of the Government on several occasions. She also worked in a solicitor’s office in the UK during several months. At Hirsch since 1992, she deals in particular with issues of trademark protection and litigation for major US and European companies. She speaks English.

Georgia Devos graduated from French and Berkley University, has lived several years in the US. She advises clients on a wide range of IP matters relating to trademarks, designs, copyright, internet and unfair competition, with a focus on assisting in the protection, monitoring, management, defense and enforcement of worldwide trademark and design portfolios, negotiation and conclusion of worldwide coexistence and assignment agreements. Beginning her career in the IP litigation department of Courtois Lebel where she started to practice court procedure relative to IP matters, she then worked at Cabinet Lepeudry from 2003 to 2008, advising clients on their IP projects and responsible notably for worldwide trademark and design portfolios. She joined Hirsch IP group in 2008 and speaks English.

Rooted in France yet operating internationally

Agility, flexibility and open-mindedness are quite often the watch-words of a successful organization in today’s ever-changing environment.

Nowadays, IP subjects can no longer be treated with our attention limited to the technical and/or juridical facets. There is a need for multidisciplinary treatment, and IP professionals need to have a broader knowledge regarding the regulatory part, finance, even business management. The profession is also undergoing internationalization and standardization of work. IP attorneys are one of the professions that have felt the most impact from globalization and are among the most international.

Therefore, at Hirsch, people believe that the IP attorney profession will need a combination of competences, for delivering their services in other European countries. Not only was it the first firm to have two teams working together in IP litigation and IP prosecution, but it was also the first to operate beyond national borders, with international clients representing nearly 50% of the firm’s activities. Thanks to the international training or work experience and diverse origins of the partners and associates and thanks to the European patent and trademark attorney qualifications held by most of its members, as well as to their language skills, the group is able to directly file and handle IP portfolios for clients in a certain number of European countries, in Germany, UK, Ireland, Belgium, Austria, the Netherlands and Luxembourg, and in trademark matters, Benelux, which allows highly appreciated cost and time savings for clients.

In a world where regulation changes fast and new technologies and business models emerge even faster, traditional professions such as IP attorney need to be rethought.  IP attorneys need to act and react faster. Much more will happen over the next ten years than in the past thirty. With one eye on the future, the Hirsch people are determined to be agile, flexible and intelligent.

Insights from Hirsch IP Group

• Marc-Roger Hirsch (Founder & Senior Partner)

The economic situation is different to that ten years ago. In the past we discussed with the legal department, but today we discuss with the purchasing department who make their choice of external counsel primarily on the basis of pricing. We have to cope with this new situation and explore an appropriate position in the market.

During a period of crisis, in order to beat the competition, companies are fiercer than ever in defending their IP rights. Because of this and other reasons, we have more judicial issues than juridical ones.

The future of our profession would be limited if we didn’t change our mindset. The recent evolution of the French law will impact our activities, which means that we have to be able to accompany clients along the whole value chain, from prosecution to defense. We have already achieved this and will continue to accompany these evolutions. Few other firms are able to do this, but it is extremely important for the future.

• Christophe Andral (Partner)

Client needs and expectations have significantly changed over the decades, and companies are now reversing the trend and re-internalizing everything. We need to modernize the profession of IP attorneys and introduce new services expected by the client. The classic expertise of writing-prosecuting-defending will still exist, but meanwhile a number of new services will be required by clients.

After having worked for decades at companies, notably L’Oréal, I have gained important business savvy and I want to put this at service of our clients to best serve their interests.

• Guangtao Bu (Partner)

I’m always an outsider. There is an old Chinese saying: “You cannot tell the true shape of a mountain when you are in the mountain; in order to see it well, you need to go outside.” Originating in China, I’ve always observed France from a different angle and compare it with other countries. With my studies in technology, law, economy and business management, I also try to view the profession of IP attorney and my firm from the outside.

There is a trend toward harmonization within Europe and the global IP system is also converging. My ultimate purpose is to have a comprehensive view of different jurisdictions and industries so as to propose the optimal solution for our clients.

• Olivier Cochonneau (Partner)

In the last 10 years, the IP market has opened-up, which brought opportunities and challenges for IP law firms. But not every firm necessarily has the experience and team to handle this new situation.

Some firms are adopting a wait-and-see attitude, observing the continuous evolution of the law; among those taking action, some still hold on to the culture of IP attorney firms, with a colossal prosecuting framework and only a small team of lawyers; in these firms, there is not a synergy nor a culture of litigation yet. Others, a few French law firms, offer marginal prosecution services but have the culture of big full-service litigation firms, with a prosecuting team and activity which is not valued.

It is rare to see firms like ours that create true synergies among litigation and prosecution teams, not for marketing purposes or opportunism, but for real. Our clients recognize this.

J. Y.