Constant Clark

UK vacuum pump innovator and manufacturer Edwards has been through a significant period of change in recent times. Through it all, ensuring that its IP portfolio remains strong, has been global head of IP Charles Clark

“Transformative”, is how global head of IP Charles Clark would describe the past eight years at UK vacuum pump manufacturer Edwards. During this period the company was divested from industrial gas behemoth BOC, entered into private equity ownership and floated on NASDAQ, before finally being acquired by Swedish giant Atlas Copco in 2014. Throughout these metamorphoses, Clark has kept a steady hand on the tiller, guiding IP strategy and preserving the company’s core intellectual assets through what at times have been rough waters.

“I joined Edwards in 2008, a matter of months after the company had been divested from the BOC Group and acquired by two private equity companies,” says Clark. “There was a good IP team within BOC and many of them stayed with the parent company. Some of the others who went with Edwards struggled to adjust to the new culture and subsequently moved on, so there was an opportunity to restructure the IP team. They decided to bring in a global head to cover the team across the US and Europe, and I was lucky enough to be offered the role. I’m very glad I took it!”

Back to school

Clark’s own path to Edwards began with a degree in physics, followed by a position in defence engineering research at QinetiQ. “Working in a research lab was an eye-opening experience,” he recalls. “I was working with lots of innovative people who were solving technical problems and I found their thought process fascinating.” His time in the lab led him to consider his career options and he was fortunate to seek wise counsel about the next step he should take: “A good friend of mine happened to be a partner in a patent attorney firm and he gave me some great advice about how I could move my career on from pure engineering. So I took the plunge and managed to secure a place at a private practice firm in London, where I qualified as a patent attorney.” A little older and wiser than many of his cohort, Clark devoted himself to his studies and qualified as a European patent attorney before then entering private practice: “It was a really good move, and I still find myself interested in talking to the business and engineering communities about problems they are trying to solve and how IP can help them with that.”

Despite this enthusiasm, however, Clark realised that, just as pure engineering had not been for him, neither was pure law; it was rather the interplay between law and business that inspired him. “Learning how to draft and prosecute patent applications was interesting and useful,” he acknowledges, “but putting intellectual property into its business context and ensuring that IP is there to facilitate and support the business strategy as a whole is my real interest.”

As well as the opportunities it afforded to work at the intersection between law and business, Clark’s move in-house was prompted by a desire for closer collaboration with engineers and greater participation in the innovation process. “In private practice you are always only a service provider, and some clients don’t approach you as openly and frequently as perhaps they could, because there is always a cost involved in doing so,” he explains. “In-house, you are part of the team and can be more proactive in the service you provide.”

 A firm understanding of how patents work – and how litigation around those patents works and fits into the business context – gives you a very strong foundation on which to build 

Despite himself having qualified as an attorney, Clark is adamant that a legal background is merely an added bonus for a person in his position, not a must-have. “I don’t see it as vital for my role or for the way in which I hope my career can develop,” he asserts. “However, a firm understanding of how patents work - and how litigation around those patents works and fits into the business context – gives you a very strong foundation on which to build”.

Competition and collaboration

Edwards’ global head of IP Charles Clark

However, litigation is not something that need concern Edwards – or the wider vacuum pump industry – on a regular basis. “It is an industry in which people are generally very respectful of each other’s IP and in which litigation is a rarity,” explains Clark. “We’re certainly not in the telecoms arena: there are no vacuum pump wars!” Competition is nonetheless intense; there is little in the way of cross-licensing or collaboration, which means that players such as Edwards need to innovate – and protect their innovations – in order to keep ahead of the pack.

Edwards has carved a particularly solid niche in the semiconductor industry since its development in the 1980s of innovative new dry pumps, which contained none of the oils that previously could leak and contaminate the process. The patents on these pumps expired approximately 10 years ago, but during their lifetime they allowed Edwards to position itself as a preferred supplier to the semiconductor industry. The company has also developed an abatement business, in which innovative chemical engineering is used to modify the toxic by-products of semiconductor production, allowing the gases to be safely released into the atmosphere.

Much of these advancements are the fruits of close collaboration with major clients. Such alliances can prove risky for companies without savvy IP professionals on board; fortunately, Edwards is not one of them. “As an IP team, we have had to ensure that we have the right protection in place and the necessary rights to that protection and the development work that we have done,” explains Clark. “There have been some interesting and challenging negotiations over joint development agreements with our customers. Our leadership team appreciates the importance of having these negotiations and wants us to ensure that what we develop with one client, we are able to use with others.” A keen eye for the contractual fine print has proved crucial in this regard: “One of the most important intangible assets for a company is its contracts, because if a contract doesn’t stand, then the deal collapses and you lose money. So ensuring that deals we do involving IP are watertight is very important.”

Hunkering down

During Clark’s tenure at Edwards, the leadership team has had several incarnations, each of which has presented its own unique challenges and experiences. “It was extremely interesting observing the strategy of our private equity owners,” Clark recalls. “They took what was a traditional British manufacturing company and enabled us to invest in factories in Korea and the Czech Republic and move our manufacturing there, while redeveloping our sites in the UK into centres of excellence for R&D.”

Like all private equity investors, the new owners were keen to maximise profits and streamline operating costs. However, the timing could not have been tougher, as the divestment coincided with the global economic crash, which hit Edwards – as so many others – hard. So, as well as relocating manufacturing, the new owners sold off assets in a bid to tighten their belts. “One of my first tasks at Edwards was to ascertain what portfolio we had and what we wanted to do with it, and then put strategies and policies in place around it,” explains Clark of his role in helping to keep the company afloat during these straitened times. “This meant developing a cost structure for maintaining that portfolio. So some of the patents were divested; some stayed with us and were core to the business; and then there were some that were not essential to our business and were dropped altogether in order to keep close control on costs.”

Clark not only had to review the company’s IP strategy to prevent any unnecessary spending, but also had to sacrifice more than patents, as his own team ended up being downsized. “The cutbacks that we had to make were disruptive and did lead to a further loss of talent – a key guy in the US left as a result,” he laments. “We had to make the cuts because of a combination of factors: our private equity owners were close to an exit, the business was facing some headwinds and we had to maintain EBITDA at a given level to remain an attractive prospect to potential new owners. As a result, all departments had to make cutbacks – we made a salami across all functions and I was not immune, rightly.”

But those sacrifices ultimately paid off, enabling the company to emerge from the darkest days of the economic downturn with a streamlined – but solid – patent portfolio. “IP is always a long-term investment and private equity investors always take a shorter-term view - it’s their business model,” says Clark. “But Edwards’ investors recognised the value of the IP we held when they purchased us, so they recognised the importance of maintaining that value for when it came to developing an exit strategy.”

Edwards’ main manufacturing facility in South Korea

Edwards’ global technology centre in Sussex, England

Atlas ownership

Looking forward to the UPC

After a wait which at times has felt never-ending, it finally looks as though Europe’s unitary patent and Unified Patent Court (UPC) could be implemented in a matter of months. Here, Edwards’ global head of IP Charles Clark gives his opinion on what it will mean for Europe and those that operate in its patent market.

What effect do you think the unitary patent will have on your business and the wider patent community?

I think ultimately the unified patent is a good thing, but we are at the start of a long road and there will naturally be teething troubles. What I want to know more about before I can form a conclusion are the costs, and let the case law from the central courts develop so that we get a body of case law and a better understanding of how the litigation aspects go and what impact that has.

And what about in the short term: are you planning to opt in to the unitary patent from the outset?

The immediate impact on us is looking at what elements of our portfolio – if any – we will opt out or remain in. Added into that mix is whether there are elements of our portfolio that we may consider taking through the national route rather than the central European patent office route. There are several touchstones to consider in making those decisions: the relevance of the patent to our strategy and what we are trying to achieve with the business.

How effective do you think the UPC will be?

I think there will be a number of cases referred through the appeals processes right up to the European Court of Justice – just as there were when the Community trademark came in – and we will have to see how that settles down.

Some people suggest that the unified system will make Europe a more appealing prospect for trolls. Do you agree?

I think trolls may give Europe more of a go once the unified system comes into force, but I think they will have their fingers burnt when it comes to the validity challenge, where Europe differs greatly from the United States. In the States, there is a strong assumption of validity and a higher barrier to overcome in terms of invalidating a patent. In Europe, however, you basically get a second stab at examination. I think there will be some initial troll activity, but I suspect that it is likely to decrease when they see a lot of their patents successfully challenged.

The first phase of this exit strategy was to take the company public. There were two attempts at an initial public offering (IPO). The first was planned for the London Stock Exchange, but fell through at the eleventh hour the day before listing; Edwards eventually floated successfully on NASDAQ in 2012. “My role during the IPOs was writing the IP section in the prospectus and briefing the executives – if they required it – on any IP issues,” explains Clark. “On both occasions I wrote a piece around what our IP was and how it fit into the business and what our goals were within the strategy and goals of the business. That went to the lawyers and bankers, who told me it was all very interesting, but all that investors were really interested in was numbers – that is, how many patents we had. You can imagine how that made me feel!”

Edwards was listed for a little over a year, during which it was courted by several potential purchasers; the investors eventually accepted an offer from Atlas Copco. The Swedish player has four divisions: gas compressors, industrial equipment, construction equipment and mining. It is the market leader in the compressor market; having decided to move into the vacuum space, Edwards was targeted as the cornerstone of its expansion strategy. Clark’s role in the deal was to work with the M&A team to ensure that the prospective buyers got the answers they needed to any questions concerning Edwards’ intellectual assets. Post-closing, a new vacuum division - sitting within Atlas Copco’s compressor technique business - was set up and built around Edwards, which accounts for approximately 90% of the division.

Atlas Copco has now owned the company for almost two years and its touch thus far has been light. “Atlas is a very large organisation, but each operating company within it pretty much runs itself,” Clark confirms. “We have a slightly different management structure in place, and I’m sure there may be some further organisational changes to fit us better into the Atlas Copco culture.”

The nEXT pump for which Edwards won the Queen’s Award for Innovation

Strategic education

In the meantime, Atlas Copco’s hands-off approach has afforded some much-needed stability during this period of flux; this time round, Clark’s team survived the transition unscathed. It comprises two direct reports – one European patent attorney, one US qualified patent attorney – in the United Kingdom, and three indirect reports based in Japan, where there is a standalone specialist business unit.

Edwards’ chemical abatement technology

Atlas Copco: facts and figures

  • 142-year-old firm.
  • World’s leading industrial equipment maker.
  • Customers in more than 180 countries.
  • More than 44,000 employees around the world.
  • Increased R&D spending by 30% in 2014.
  • More than 2,500 people conducting R&D around the world.
  • Headquartered in Stockholm, Sweden.

The Atlas Copco executive board has likewise taken a non-interventionist attitude towards the creation and implementation of Edwards’ IP strategy, leaving it in the capable hands of Clark. This strategy is devised to dovetail with the overall business strategy delivered through the top team, which Clark keeps front and centre of his thinking at all times. “I consider IP strategy to be something that sits right within the business strategy as a whole, and that should support and enable it,” Clark asserts. “I ask myself, ‘What is the economic logic of what we’re doing?’ ‘How are we going to get from A to B?’ Many traditional manufacturing companies such as ours may not share the view that intellectual property is central to the business, but that’s my challenge: to convince the top team that IP is there to enable them to do their business.”

Clark explains that his team members are currently regarded as subject-matter experts: the people whom the rest of the company turn to when an intellectual asset requires protection. He hopes that, through systematic education, this will evolve into an appreciation that their capabilities stretch much further than that. “I think the integration of IP across the company could be better,” he suggests. “During the economic downturn – and when I was concentrating on different matters during the private equity ownership – there were some things I would have loved to have been able to do that I couldn’t, due to cost and capability constraints. Now that we are in a different situation and ownership structure, I am expanding our training environment and raising the profile of IP across the company, helping people to understand that it is not just an R&D thing or a trademark thing for marketing; that IP sits across the whole business.”

This training has so far taken two forms. The first is a compulsory online annual training course for all staff which covers all aspects of Edwards’ business, including intellectual property. “The IP modules are broken into subject matter such as patents, trade secrets, third-party confidential information, copyright and designs, and trademarks,” explains Clark. “The modules are broadly targeted according to job function – the executives have to pass all of them.” The second training method is more social, involving quarterly face-to-face training sessions across Edwards’ various sites. “We call this ‘Lunch-n-Learn’,” states Clark. “We provide attendees with a free lunch and they give us an hour of their time as we touch on relevant IP issues depending on the audience and based on real-life lessons learnt within our business.”

Edwards: facts and figures

  • 4,200 employees operating in approximately 30 countries around the world.
  • Products integral to manufacturing processes for semiconductors, solar cells, flat panel displays and LEDs.
  • manufacturing facilities, five service centres, hundreds of field service locations.
  • 94-year-old firm established by physicist FD Edwards in south London, England.
  • Headquartered in West Sussex, England.
  • Serves a $6 billion-plus market.

From GC to R&D

This ongoing educational campaign is not the only change to how the IP team interfaces with the wider company since it came under the stewardship of Atlas. Before the acquisition, Clark’s role sat under the management of the general counsel (GC) in the legal team. It now resides under the leadership of the technology director, who in turn reports to the chief technology and marketing officer (CTMO). The reason for the change was structural: Edwards no longer has its own GC and the legal team now sits within the corporate structure of Atlas. This means that the lawyers have been separated from the different business units, which they serve as and when required. “Working like this has meant that the lawyers are more reactive rather than proactive, which isn’t for everyone, and some of the team has since moved on,” Clark acknowledges. However, the legal team still physically sits in the same office as Clark, so his interaction with them is regular – as it is with the CTMO, who will come to him directly with IP issues.

“There are of course differences in how the general counsel saw my job role, compared to how the technology director views it, but those differences are subtle,” says Clark. “The previous GC was extremely hands-off: he was a great guy who empowered me to work with the people I needed to work with and do what I had to do. Likewise, the technology director recognises that IP is not just about what’s happening in the R&D lab tomorrow.” That said, there is now more of a commercial focus to his work, which Clark rather enjoys and considers imperative for anybody in his shoes: “I think it’s essential for any IP team within a business to have commercial relevance. For us at Edwards, that means being selective about what we patent and what patents we maintain – it doesn’t make commercial sense for us to patent everything we possibly can. Ensuring that what I’m doing on a daily basis helps to support the business strategy is a thread running through everything I do.”

No cash cow

Clark’s passion for supporting and advancing Edwards’ business is palpable, but it is often difficult to communicate up the chain of command. “Our strategy is largely defensive: we want to ensure our investment in R&D is protected, and that we can differentiate ourselves from our competition with our product range through the innovation we provide, and that we have free access to the components we need to build our pumps,” he explains. Saving the company from a patent infringement suit and obtaining patents that block competitors are crucial accomplishments, but they can nonetheless be challenging to convey. Clark’s IP team is not a profit centre and thus - unlike some of his contemporaries - he cannot put a monetary value on his work. However, he has lately received a somewhat unexpected helping hand from the UK government in doing so: “We do partake in the Patent Box and therefore have been able to demonstrate the value of our IP in terms of the tax break we receive - which is, in fact, more than my budget!”

How best to communicate value is a perennial issue for IP executives, and Clark knows he is not alone: “I speak to my peers in the UK and overseas, and if you don’t have a licensing programme where you can demonstrate how much revenue you’re creating, it’s very difficult to express your value.” Yet he is conscious that the ability to put a definitive price on your intellectual property can be a double-edged sword. “I think there are downsides to being able to demonstrate value in this way, because IP is so much more than revenue,” he muses. “A CEO can get a sugar rush from seeing all that money rolling in and before you know it, the IP team is being used as purely a licensing business.” Rather than dazzling the CEO, Clark’s focus remains on supporting Edwards’ bigger goals as it goes from strength to strength under new ownership, and ensuring that the IP portfolio remains at the core of this seasoned innovator’s business. 

Meet Charles Clark

Who is your IP hero?

Clark and family on holiday

 

I’m not sure I could name one person in IP who I would single out as a hero above everyone else, but there are some fantastic advisers out there helping the underdog to enforce their rights when everything else has failed.

Outside of IP, who or what has been the biggest inspiration in your life so far?

My family: my dad has been with me through thick and thin and always with good, sound advice (not always followed by me); my wife, Nicky, who always supports me; and my two fabulous daughters who keep me smiling.

Do you have any hobbies?

I enjoy cycling to try to keep fit – and it’s a hobby that requires I spend lots of money on tech gadgets… I also enjoy being outside with nature and fly fishing allows me access to some of the most beautiful scenery in the world. I love that, even if I don’t catch anything!

Where is your favourite place to holiday?

I enjoy travelling and there are so many more places I’m yet to discover - Patagonia and the Western US mountain ranges are high on the list. At my present time of life, though, I enjoy being with my wife and kids on holiday, exploring the real Spain and its true culture.

What’s your favourite season of the year and why?

Late spring – warmth and light as we emerge from the wintery darkness and start afresh!

If you could invite any five people (living or deceased, real or fictional) to a dinner party who would they be?

First on any list would be my mum, who we lost to cancer when I was a boy – I’ve got so much I want to share with her. My wife, of course; and some quick-witted, intelligent people like Richard Burton, Sir Winston Churchill and Richard Feynman.

And what would you eat?

Something delicious, simple and hearty, with lots of good red wine to wash it all down. Perhaps a beautiful steak with a good French Pomerol or Malbec from Mendoza.

As a child what did you want to be when you grew up?

An engineer, like my dad.

If you could live anywhere else in the world where would it be and why?

San Francisco because it’s a great city, with a good temperate climate, close to some beautiful scenic places and not too far from the ski resorts…

Looking back at your 18-year-old self what advice would you give him?

Work hard at school, be yourself and grasp every opportunity you can with both hands – don’t be scared to fail and learn from your mistakes.

And how do you think your 18-year-old self would respond?

“Yeah, OK, whatever. Shall we go to the pub for a pint?”

Action plan

The past eight years have seen seismic changes at UK vacuum pump innovator and manufacturer Edwards. As it has moved from one owner to the next - and through a tough economic climate - global head of IP Charles Clark has been ensuring that the intellectual assets on which the company has been built have not been compromised:

  • Clark was recruited as global head of IP shortly after Edwards was acquired by private equity investors keen to streamline the business. One of his first tasks was to identify which patents were core to the business, which could be divested and which should not be renewed.
  • Litigation is rare in the vacuum pump industry, as is collaboration between competitors. However, Edwards does work with some of its key customers to develop and improve products; it is therefore essential that Clark and his team create watertight agreements to protect their intellectual property and ensure they can use their innovations with other customers.
  • Clark advised prospective buyers and investors on IP-related matters throughout the company’s flotation and subsequent sale to Atlas. He was advised during the IPO, however, that all investors really wanted to know was how many patents the company held.
  • The IP team of Edwards is not a profit centre, so although Clark is not expected to bring revenue in, he also has the difficult task of demonstrating his value without hard numbers.
  • Prior to ownership by Atlas, Clark’s position came under the remit of Edwards’ general counsel. He now reports to the technology director, which means that his work has a more commercial slant.
  • Clark is working hard to inform colleagues that the IP team has capabilities far beyond the ability to protect innovations. Education and training are key to shifting this mind-set; with the company now in a period of greater stability, Clark has the resources to commit to changing perceptions.

Sara-Jayne Clover is a senior reporter for IAM, based in London

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