Han Kun’s IP team
Q: Can you tell us about your team (eg, size, practice focuses and key individuals)?
A: Han Kun’s IP team has more than 80 professionals who specialise in handling all types of IP matters, including patent, trademark, copyright, unfair competition and antitrust. Our lawyers have diverse backgrounds and include litigators with multinational expertise, experienced patent attorneys, senior patent examiners and IP judges, most of whom hold advanced degrees in science and technology. Our key partners include Yan Wang, Lili Wu, Rong Chen, Rui Luo, Peng Lei, Tao Zhang and Xiaowei Wei. Over the years, Han Kun has brought substantial value to clients in many fields, especially the Internet, electronic devices and automobiles.
Q: From a firm perspective what were your highlights of 2019?
A: Han Kun assisted clients in defending against complicated patent infringements involving both SEPs and implementation patents. We did so by taking comprehensive measures that have yielded positive results, including through patent litigation, antitrust counterclaims and invalidations. Further, Han Kun helped clients to enforce their IP rights in China by taking action against cosmetics counterfeiting, printer cartridge patent infringement claims and large international patent dispute battles, among other things. In non-contentious matters, Han Kun has successfully brought in patent and trademark prosecution work from world-famous multinational clients and has helped to advise Chinese domestic clients on managing their international IP filings. Further, the IP team assisted the firm’s transactions team in many important cross-border transactions and acquisitions.
Q: In your opinion, what are some of the key steps to prosecuting high-quality patents in China?
A: First, it is extremely important to understand the business objectives of clients in order to design appropriate China IP strategies that conform to their overall strategy. Second, internal quality standards tailored for specific clients are necessary to standardise the work products of all team members and to maintain consistent quality and reliability. Third, regular training and case studies are crucial for helping team members to continue to develop their skills. Last but not the least, it is vital to communicate closely with clients to continue learning about their technologies, to better understand their requests and to keep improving the relationship.
Left to right: Lili Wu and Yan Wang, partners
Q: IP litigation in China has gone through some very significant changes in recent years, including the creation of specialist courts – how has that affected your firm?
A: Han Kun has established stable relationships with strategic clients from both foreign countries and China. These share the need to find strategic litigation partners in China to help them in offensive and defensive IP litigation now that the country has become a significant battleground for rights holders to enforce patents and due to the increased risk of litigation.
In addition, the cases that Han Kun has handled have become increasingly complicated, primarily because of the growing sophistication of technologies and economic activities. For example, it is essential to have insights on the development of Internet of Things (IoT) technologies and the balance between rights holders and potential licensees when handling SEP licence disputes and injunction enforcement risk in this field. As a result, we continually strive to seek out new learning opportunities that enhance our capabilities.
Q: How much interest have you seen from overseas IP owners in filing more patents and bringing lawsuits in China?
A: We see overseas IP owners continuously adding to their patent filings in China. For many applicants, the United States and China are the top two jurisdictions for filing patent applications. Reasons for choosing China include that it is a large market for consumption and manufacturing, and because IP protection has become markedly more patentee friendly.
Han Kun often receives requests for asserting patents from overseas IP owners, particularly those interested in litigating cases in China, as they have realised that the country has established a strong protection environment for patentees (eg, by consolidating all appeal cases to the IP Tribunal of the Supreme People’s Court and legally establishing a punitive damages system). These developments have sent a strong signal to patentees that China is a good place to enforce patents and have prompted increased interest in litigating there.
Q: How are client demands changing, and what impact has that had on your practice?
A: When it comes to patent prosecution, clients have started to pay more attention to the quality of their granted patents, because they foresee that they might need to rely on them to litigate in China going forward. Therefore, clients need to find the right partners who can help to obtain patents through proactive and effective professional services. Han Kun is often cited for its superior professional and responsive attitude and we take this mindset to heart when tailoring services to our clients. This approach is essential for complicated litigation that challenges existing understandings of the law and calls for creative problem solving, especially when it involves cross-border matters, or new areas such as IoT SEPs and open source infringement issues. We have professionals with a diversity of backgrounds – we believe that this positions us well to provide optimal solutions for our clients.
Q: How has technology affected the way that you practise?
A: New technologies such as AI and Big Data analysis have started to influence day-to-day work at Han Kun. For example, some commercial software has been able to use AI to improve searches – if a user simply inputs some key words, the software can return search results with an expanded scope. In addition, commercial analysis tools can provide new insights into the performance of firms and lawyers, based on large volumes of court case decisions data. Further, AI translation tools have become more mature and have replaced many forms of manual work. All these changes not only bring efficiency and convenience to us but also challenge our normal business (eg, by reducing the time spent performing searches and translations). Han Kun has started to consider other potential new legal services that can bring value to clients with these innovative technologies.
Q: If you could make one change to the patent world, what would it be?
A: If possible, I would like to see global patent prosecution procedures unified among different jurisdictions. Nowadays, when managing global client portfolios, it requires substantial effort for both IP owners and firms to manage deadlines and docket documents. If all jurisdictions were to share the same deadlines and rules, and disclose all up-to-date documents to the public, it would greatly reduce the burden on applicants and firms. Further, if third parties could publicly review up-to-date documents, it would help them better manage their risks.
Q: What advice would you give to younger practitioners looking to pursue a career in patents?
A: The most important thing is for them to clearly understand the advantages and disadvantages. For those who are not sharp enough or cannot bear the rigours of litigation, it is better to consider non-contentious work. Further, it is advisable to dig deeply into cases and legal provisions to learn precisely how legal frameworks function and what approaches are available to solve a given legal issue. They should think critically for themselves, rather than merely listening to the opinions of others. In addition, younger practitioners should be prepared to work hard for a long time before gaining the recognition of clients and colleagues.
Q: How do you expect the Chinese patent market to change over the next five years?
A: First, influential litigation cases will likely be consolidated in several big firms that have built solid reputations and track records for handling complicated matters. Practitioners are likely to move to these firms in order to gain exposure to these important cases. Second, with the quality of patents becoming more important, IP owners will tend to seek out more reliable partners to manage their patent portfolios. Further, some traditional patent work might disappear or change with the development of new technologies such as AI. In addition, it will likely become more difficult to attract graduates to join patent agencies because the industry has such good starting salaries and appealing work.