What advice would you give to young professionals considering a career in patent law?
I have three suggestions. First, they should be interested in this profession and gradually cultivate a love for it, and they must understand they are going to engage in noble work, which helps to protect innovation and promote civilisation. Second, it is not an easy job. It requires devotion, diligence and persistence. They must keep learning as technology and law are changing quickly in modern world. Third, a career in patent law is not irrelevant to personal life or character building. To practise patent law well, people should consider problems and handle matters comprehensively, carefully and patiently, and be good team players. Personal character development can help them make significant achievements in this profession.
Since 1991, you have acted before more than 30 Chinese courts – which of your cases has been the most memorable, and why?
Patent infringement disputes and administrative cases represented by myself and my team have been selected in the list of typical cases published by the Supreme People’s Court of China (SPC) nine times. In particular, the new concept of ‘usage condition feature’ established in Shimano v Sunrun (2012) was included in the SPC Judicial Interpretation as a principle in patent infringement lawsuits, with deep and broad influence.
What are your top three tips for helping multinational clients successfully navigate the ever-evolving IP protection landscape in China?
First, it is always important to obtain patent and trademark registration in China as soon as possible. Second, it is very helpful to seek timely assistance from capable Chinese IP attorneys to provide comprehensive services in the IP field, namely, search, filing, response to Office Action, appeal, maintenance, investigation, enforcement and litigation. Third, it is crucial to keep a close watch on the developments of IP laws and practice in China, possibly also with the assistance of capable Chinese IP attorneys.
How would you characterise the Chinese IP transactions market right now?
I think there are two main characteristics of the Chinese IP transactions market right now – it is developing fast and the government is playing an important active role in promoting it.
The China National Intellectual Property Administration (CNIPA) has been building an IP rights operation system by establishing 33 IP operations platforms (centres) nationwide, which bring together IP buyers and sellers, and provide assistance in IP deals and transactions. The CNIPA has also partnered with the Ministry of Finance to build operations platforms, allocating funds and executing programmes in key cities.
In 2021, there were 420,000 registered patent assignment and licensing activities, a rise of 15% compared with the previous year. The total import/export value of IP royalties nationwide amounted to Rmb378.3 billion.
Financing through pledging patents and trademarks as collateral amounted to Rmb309.8 billion in 2021, a growth of 40% for the second consecutive year. In the first half of 2022, this figure amounted to Rmb162.65 billion, up 51.5% compared with the same period last year.
As we hopefully emerge from the pandemic, what changes to the industry and/or working practice do you think are here to stay?
The pandemic had a negative impact on every industry – except for pharmaceuticals. To meet the challenging situation, working modes have had to be adjusted not only inside practising firms but also when it comes to communications with the CNIPA, courts, customs, associations, clients or foreign associate firms. For example, our staff now take turns working at the office so that those working from home are supported by powerful software, while administrative rules have also been modified to safeguard working efficiency. In addition, communications with other individuals or organs are taking place online more and more. This way of working looks likely to continue and will continue to be improved, even when the pandemic fades away.
Some urgent measures to deal with major health events also look set to stay. For example, the CNIPA may speed up examination for patents of all types that might help to curb or stop future pandemics. At the same time it will likely reject applications for trademarks that have negative indications under any future health events and that copy the names or images of role models helping to combat problems resulting from future pandemics.
Dong Wei founded PC & Associates in 2008. He holds a BS degree in electronics and an LLM degree from Peking University. He is an attorney at law, patent attorney and trademark attorney with extensive experience in both IP prosecution and IP litigation, and is recognised as one of the most experienced and well-known patent litigators in China with deep involvement in some milestone patent lawsuits, which established some important new principles.