Ewan Bewley

You have worked in many areas of IP law in senior roles, both in private practice and as corporate in-house counsel. What skills or experiences did you gain in-house that have helped you in private practice, and vice versa?

Working in-house requires a business mindset. It is not just about getting patents granted with the broadest claims possible, but more about determining what the value of a particular piece of intellectual property or portfolio is to the company’s commercial objectives.

Working in private practice benefits attorneys, as they will typically have wider exposure to the different technical and patent IP practice issues that can arise from a diverse clientele.

What has been your most memorable case and why?

I have been involved in a number of successful High Court cases in both the United Kingdom and Hong Kong. I have also been part of a considerable number of cases in China to recover misappropriated rights.

The case that is perhaps most memorable to me was the restoration of a UK design application seven years after it had been deemed abandoned – a seemingly impossible task. When I was appointed director of IP law, Europe, for a global telecommunications company, I wanted to demonstrate to younger attorneys that if you do not ask, you may not achieve your objective. During an IP audit, we had discovered that one of the company’s UK design applications was still pending in our records seven years after filing, but we knew that this would not be the position of the Designs Registry. On first contact, we were informed that it was held to be abandoned. We asked for a copy of the official notice of abandonment, but it appeared to not exist – or at least could not be located. We subsequently argued that the case should be considered to be still pending. The arguments we filed required a deep dive into the scope of the discretionary powers of the UK Designs Registrar and a comparison of the scope of those powers to those of the Comptroller of Patents. After much debate with the Designs Registry, our application for restoration was permitted. We then faced an onslaught of objections to the subject matter of the design, which we also eventually prevailed over.

This case demonstrated the possibility to recover a seemingly impossible situation through diligence, thorough research and persuasive arguments. This is my approach to other difficult IP issues.

What are the biggest enforcement challenges facing patent owners in Hong Kong at present?

Local clients in Hong Kong tend to prefer short-term patents. However, to enforce the rights conferred by the short-term patent, the owner must first establish the validity of the patent as the grant itself is not conclusive evidence that the invention covered is patentable, which the party being sued usually challenges. If the owner fails to prove the validity, or the party being sued proves that the short-term patent is invalid, the patent will be revoked and the court will dismiss the infringement claim. International clients prefer the Hong Kong standard patent registration system, which provides rights presumed to be valid.

Your expertise covers a range of technologies, from fibre optics to integrated circuit design and manufacture. How do you remain at the forefront of industry developments with such a broad practice?

The Internet is a remarkable tool for self-teaching. Further, I am grateful to many colleagues around the world who share their expertise through journals, papers and seminars. Being a member of the Hong Kong Government Commerce and Economic Development Commission’s Advisory Committee and a member of the Innovation and Technology Commission’s steering committee on review of IP issues in the innovation and technology sectors in Hong Kong gives me access to networks of knowledgeable people. I am also a member of various professional bodies, which provide valuable resources through networks of research institutes and IP professionals.

How are client demands driving use of more sophisticated analytics?

Nowadays, clients are generally much more knowledgeable about IP issues than when I started out as a patent attorney. They have access to online resources, such as patent databases, which enable them to self-search prior literature and check on competitors’ IP activities. This has led to many service users requesting assistance in understanding the value of their IP assets, how to pool their IP rights, the relevance of their IP assets (eg, through citations) to others and similar IP audit-type processes.