What has been your most memorable case to date and why?
I acted recently as a plaintiff in litigation against a patent owner for the bad-faith filing of a lawsuit. It began as a standard case, in which one of our clients was being sued for design patent infringement. We successfully defended our client by collecting prior design evidence and invalidating the design patent. But the story does not end there. During the case we discovered that the patentee had filed the design application with pictures of our client’s product. We fought back against the patentee with a new litigation against the patent infringement lawsuit. It was a memorable litigation – the rules were very strict and it was very difficult to prove, but with hard work and concrete evidence, we successfully got the patentee to pay for his bad-faith behaviour.
How do you envisage your IP practice evolving over the next five years as we adapt to the post-pandemic world?
IP practice will continue to change due to the pandemic. There are two aspects that must be addressed in the post-pandemic world. The first is the manner in which IP services are provided, as communication with clients and the way in which cases are handled have changed dramatically (eg, video conferences with a virtual background and video hearings before the patent office and the courts). Second, the object of IP services is changing – IP rights are now valuable not only in the real world, but also in the virtual world.
As a general manager, what directives do you give your team with regard to maintaining client relationships and/or adding value for clients?
With the changes in IP practice in the post-pandemic world, our IP service now not only handles cases, but also is a comprehensive IP solution provider that supports clients through a rapidly changing landscape.
What common mistakes do you see from foreign rights holders enforcing their patents in China – and what advice do you have for them?
Foreign rights holders should understand that validity issues in the Chinese patent system must be handled with care. The process is different from the common law system – for example, in the United States both validity and infringement can be considered in the same litigation. China has a bifurcated system for validity and infringement issues – which is also different from the German system. Anyone can file a patent invalidation request after grant as long as the official fee has been paid. Theoretically, a patent could be challenged by a persistent petitioner every day with a different invalidation request, whether there is a pending invalidation case or not. In addition, the risk of losing as a petitioner is very low, especially compared to the German system.
Which emerging technologies are currently having the biggest impact on your clients – and how is this shaping your practice?
Software technology, including artificial intelligence, blockchain and Big Data, is developing very fast in China. This has affected not only the traditional electrical and electronics field, but also other fields such as the mechanical and chemical sectors. Inventions in this area do not necessarily cover traditional types of technology. This means that our patent attorneys must expand their knowledge of mixed technology fields to better understand the clients’ inventions, as well as their businesses and operations. We must therefore understand our patrons’ business needs as a whole in order to provide a tailored IP service.
Managing Partner [email protected]
Xiaolin Dang is managing partner at Beijing Sanyou Intellectual Property Agency. He specialises in patents, with a focus on litigation, and has expertise in drafting, applications, re-examination, invalidation, assignment and licence negotiation, as well as matters involving trademarks, domain names, copyright and unfair competition. Mr Dang obtained a bachelors in engineering from Beijing University of Technology, an LLB from Peking University, an LLM from Chicago-Kent College of Law and an LLD from China University of Political Science and Law.