Zhong Lun Law Firm
What led you to pursue a career in IP law?
I studied computer science when I was in college and I know how easily and inexpensively a rights holder’s technology can be misappropriated. I feel the pain of those rights holders and want to protect their inventions. My summer internship at Morgan Finnegan opened my eyes to the world of intellectual property and strengthened my determination to become an IP lawyer. Through this role, I have the privilege of working at the crossroads of innovation and law in order to best assist clients with cutting-edge technology. Becoming an IP lawyer is a dream come true.
What are some of the biggest enforcement challenges facing your clients at present?
Most of my clients are US and European multinationals. One of the biggest enforcement challenges for them is the lack of discovery in China, which makes it difficult to obtain evidence. Pre-filing investigations and evidence collections can be time consuming and burdensome, if not insurmountable, particularly in trade secret cases. The relatively low damage awards are also a challenge, as they are neither enough to mitigate the loss nor enough to deter infringement. Another challenge, especially when the infringer is a small shop, is enforcing the court order when the losing defendant has changed its name and opened another business across the street. Usually, the client needs to file another infringement case against the new infringing activities. As a result, companies need to retain experienced counsel to enforce their IP rights more effectively in China.
How do you manage cross-border issues when a Chinese patent dispute has parallel US or EU litigations?
China has become a hot venue for global patent disputes. Many of the cases that we handle involve parallel US and/or EU proceedings. We communicate with the US or EU counsel regularly to exchange case notes and make concerted moves. We are mindful of both Chinese and foreign laws. For example, we must study the foreign court order, inter partes review decision or Markman briefs to make consistent arguments and avoid estoppel problems. If the Chinese case proceeds faster, we always translate our briefs, court rulings and inter partes review filings, among other things, and forward these to our co-counsel. We sometimes divide prior art searches into English and Chinese languages, which has yielded productive results. In China, patent inter partes review and patent administrative infringement cases usually complete within six months and three to four months, respectively. We file cases before these rocket dockets to exert more pressure on the opposing parties in order to obtain favourable global settlements for our clients.
What are the main differences between the US and Chinese courts for patent owners to be aware of?
First, there is no discovery in China. Unlike in the United States, a plaintiff must collect and notarise all the evidence before filing a case or sending a cease and desist letter. This is because, if the infringer is alerted, it may destroy all infringing evidence.
Second, there is no jury trial. Cases are usually tried by three tribunal members comprising two judges and one people’s assessor. The accessor is usually a patent examiner, professor or engineer with a technical background – the Beijing IP Court has a pool of 265 accessors to choose from.
Third, the bifurcated system means that patent invalidation and patent infringement are decided separately. The courts do not have jurisdiction on patent validity. Invalidity claims must be filed before the China National IP Administration Patent Re-examination Board. Unlike a utility model and design patent case, where infringement is usually stayed pending an invalidation decision, filing of an invalidation claim against an invention patent does not stay the infringement case.
How do you see the Chinese IP enforcement landscape developing in the next five years?
Chinese IP law has made remarkable progress towards greater protection for rights holders in the past decade. In the next five years, I believe that China will become one of the most important venues for IP enforcement. Damages awards will increase significantly, tailored discovery on infringement and damages will be permitted, in order to give parties the opportunity to prepare and try the case more fairly, case law and precedent will become established to ensure the uniformity of adjudication standards, and a greater number of technical and economic experts will be employed in IP cases to make infringement analysis and damage calculations more complete and thorough.
Ping Gu is a partner in the IP department at Zhong Lun Law Firm. She obtained her JD from Washington University in St Louis School of Law and practised in the United States for eight years, successively engaging in IP business at US law firms Morgan & Finnegan and Milbank Tweed. Her practice covers patent, trademark and copyright litigation, International Trade Commission 337 investigations, patent prosecution and patent licensing in both China and the United States.