What common errors do international rights holders make when prosecuting patents in China – and how can they avoid them?
The understanding of ‘high-quality patents’ is crucial when it comes to the enforceability of patents in China. For example, there is a very rigid requirement to amend the claims after a patent is granted, so it is important to ensure that the appropriate claims are prosecuted. This requires taking precise actions at critical points during the prosecution process, in order to obtain enforceable claims.
What aspect of your work do you enjoy
most – and why?
I like Han Kun’s slogan ‘legal mind, business sense’ and apply it in my daily work. IP strategy should serve business strategy. One of the most important aspects of my work is to study the business development or technology evolution of clients, review what we have done and are doing, and then work with the team to come up with the most suitable IP strategy to strengthen clients’ IP assets. For example, there have been a lot of legal developments with regards to patents in 2021. I have enjoyed working with the team to study both legal and technical developments and then use this to provide valuable IP advice to clients.
Which of your cases has been the
My most memorable case was a patent infringement retrial at the Supreme People’s Court 10 years ago. The key issue was how to interpret the claim scope of software inventions – at the time there were no precedents to follow on this issue. I worked with the team to study cases in other jurisdictions, the history of the software-related invention examination guidelines and the patent infringement rules, and then organised arguments to explain the special character of software inventions and, especially, the difference that functional features make. The retrial helped me a lot in understanding claim scope construction and I have applied this since, both when prosecuting applications and when litigating patent infringement cases.
What skills do litigators need to succeed before the Chinese courts?
China’s legal environment has changed a lot in recent years. For example, IP laws – including the Patent Law, the Trademark Law, the Anti-Unfair Competition Law and the Copyright Law - have all been amended in the past three years. Further, to enhance protection for rights holders, courts at different levels issue many judgments and set up new rules on how to make claim constructions, how to calculate damages and how to decide preliminary injunctions. So litigators may need to make more of an effort to follow up the most recent regulations and typical cases, and apply these in any litigation in which they are involved. In addition, understanding the national policy is also important. For example, Chinese courts have the ambition to establish rules in certain areas, such as global royalties for SEPs, and therefore litigators need to understand current trends and think about how to take the advantage of these to successfully help potential licensees obtain the most favourable results.
How have client demands changed over the last five years and how has your practice developed to meet these?
We have seen both start-ups and multinationals becoming more serious about IP protection in the Chinese market. Start-ups usually need to rely on innovation in a niche technical field in order to develop their business, so their needs cover both patent strategy with regard to the need to build up a strong global patent portfolio and other legal issues, such as licensing in or IP due diligence. Most multinationals have put China in tier 1 when it comes to global portfolio management and always choose it as a first priority for filing patent applications. In addition, data compliance and cross-border technology control have become more prominent issues. To adapt to the changing demands of clients, I worked with the team and organise study groups to learn new knowledge and then draft memos regarding common legal issues so that I can advise clients.
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Lili Wu has extensive experience in strategically managing patent portfolios for full-size clients to help increase the value of their IP assets. Her expertise spans various technology industries, including electronic devices, the Internet, telecoms, IT, automobile, medical devices, 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 recognised as typical cases by the Supreme People’s Court.