What key skills or characteristics do you need to be a leading IP lawyer?
As a leading IP lawyer, you always need to be sharp to the legal issues and markets. In addition, continuing to study and proactively providing input to both clients and your team brings value not only to yourself but everyone around you. In that way, you become a more reliable professional.
What would you say are the cornerstones of any successful IP strategy?
Understanding the client’s business and vision make a proposed IP strategy more feasible and ensures its long lifespan. In addition, understanding new developments and quickly reviewing and perfecting an existing IP strategy helps to increase the IP value of a company and reduce the risk of non-compliance. For example, with regard to trade secret issues, China’s Supreme People’s Court recently issued the Interpretations on Adjudicating Trade Secret Disputes, which provide useful guidance on how to adapt a company’s trade secret policy to safeguard its IP assets and reduce the risk of losing a possible trade secrets misappropriation dispute.
What judicial or legislative changes have had the biggest impact on your practice in recent years?
China has seen multiple new regulations, laws and cases arise in recent years. Many of these new matters relate to activities in fast-growing economies and should be monitored closely. For example, in SEP patent areas, a number of FRAND issues have been touched on in both legislative interpretations issued by the Supreme People’s Court and in cases decided at various court levels. These issues include what factors are regarded as FRAND – and what are not, in which situations injunctions can be granted against defendants, and how to calculate FRAND rates. These changes will have a significant influence on the advice provided to clients when handling SEP patent negotiations and when facing SEP patent disputes. In addition, the Patent Law is due to be finalised at the end of 2020, and the impact on punitive damages for wilful infringement and drug linkage, as well as partial designs, among other things, will be hot topics for practitioners to follow.
What are the main challenges that clients face when it comes to portfolio management?
The first challenge is to determine whether the IP strategy meets the client’s business strategy. This is especially challenging in the current climate, with covid-19 affecting so much of the work and lives of people around the world. When there is uncertainty in the economy, the IP policy of a company needs to change accordingly. For example, how do you balance portfolio management with a limited budget to maintain IP assets? It takes effort to identify the priorities of portfolio management and sometimes an incorrect decision may cause valuable assets to be abandoned in the long run.
The second challenge is to decide whether the portfolio can add value to the business. New technologies develop and upgrade very quickly. Companies face challenges on how to assign resources in managing portfolios to add value to the business.
What emerging trends or technologies are having the biggest impact on patent activity in China?
AI technology will certainly change patent activity. For example, AI searches will help IP lawyers to discover similar cases quickly and accurately. However, AI may also threaten some roles (eg, legal researchers). As to industries, it is always a tough job to decide whether to file patent applications regarding AI technologies used in the products of a company or to keep this information confidential.
Lili Wu has extensive experience in strategically managing patent portfolios for full-size clients to help increase the value of their IP assets. Her experience spans various technology industries, including electronic devices, internet, telecommunications, IT, automobile, medical device, manufacturing and green energy. Ms. Wu has also litigated many patent cases over the years, and has represented clients in several court cases which have been recognized as typical cases by the PRC Supreme People’s Court.
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