LexField Law Offices
What aspect of your work do you enjoy most and why?
In many cases I get to go through the long lifespan of a client’s innovation and patent, from prosecution to monetisation and perhaps enforcement. I enjoy seeing my advice help clients to realise their business goals stage by stage by making the best use of their IP rights. The whole process brings great satisfaction and a deep sense of meaning.
How do you ensure top-level advice that is also cost effective?
It starts with a careful definition of the scope of work and setting a reasonable budget with the client. A budget should consist of a staged breakdown and, once set, should be stuck to faithfully throughout the process. It is necessary to maintain and regularly update a good knowledge database, which enhances both efficiency and quality. It is also important to inspire junior associates in order to harvest the potential of these young talents.
What key considerations should foreign innovators looking to enter the Chinese market bear in mind?
The first thing is to select capable IP counsel who have a broad vision and are business savvy.
With regard to prosecution, foreign innovators need to know that China essentially has no meaningful grace period and they must therefore file patents before any public disclosure. With regard to examination, China has an arguably higher non-obviousness standard than other major jurisdictions and foreign innovators need to prepare evidence to rebut ‘obvious to try’ assumptions, which are frequently issued by Chinese examiners.
If trade secrets are to be brought to China, careful legal, technical and administrative measures should be in place to track the flow and prevent unwanted dissemination.
Lastly, there should be no hesitation to enforce IP rights through China’s legal system when necessary. Positive results can be obtained from the system with a good strategy and assistance from skilled counsel.
How do you measure the success of a global IP strategy?
First, the budget should be proportionate to the company’s business plan, and management should have a good understanding of the desired results. Second, there should be no surprise leaking of trade secrets and quick measures should be invoked to contain any negative impact if a leak happens. Third, an organised plan should be in place to mine patentable innovations and decide when and where to file patents, with proportionate mapping to products in terms of commercial significance. Fourth, there should be effective communication with the business unit to decide when to enforce the company’s rights. Fifth, risk control should be proportionate to the company’s overall marketing plan.
What emerging trends or developments do you expect to see shaping the Chinese patent system in the coming years?
Punitive damages will come into play in 2021 as the level of damages is already rising. What is more, the Tengda case has shown that the Supreme People’s Court is willing to take an expansive approach to interpreting the scope of a patent. Both of these are clear indications that China will continue to take a pro-patentee position in the foreseeable future, which should attract more foreign patent owners to monetise their patent portfolios in China.
Meanwhile, China’s judiciary will continue to be assertive in order to achieve its stated goal of making China a top forum for companies worldwide to resolve their patent disputes. Litigants should have a global vision and should be increasingly sophisticated in preparing their arguments, both for the infringement analysis and for the damages calculation.
We also look forward to seeing the Supreme People’s Court become more assertive with regard to validity. It recently formally promulgated the country’s first judicial interpretation on validity. Although the final rules in this interpretation are narrower than earlier drafts (likely because of strong opposition from the patent office), the rule on inventiveness remains on the determination of the ‘actual problem’ solved by a distinguishing feature. This means that litigants should be more open to seeking judicial review if they are unsatisfied with a re-examination or invalidation decision issued by the patent office. This is particularly true for patent applicants or owners, as the new judicial interpretation gives them more flexibility to introduce new evidence in the judicial review than the patent office or validity challenger.
David Huang specialises in patent and technology laws with a technical background in computer science. He obtained an LLM from the University of Pennsylvania Law School and has practised at a top international law firm. He has rich experience helping clients from various industries build, exploit and enforce their IP rights inside and outside China. Clients value his insights about China, effective communication and thorough understanding of their business needs.