What inspired you to pursue a career in intellectual property – and what advice would you give to others considering a similar path?
IP protection and enforcement is quite challenging, especially for multinational companies. It requires an in-depth understanding of relevant technologies, judicial systems in different countries and business development of different types of companies in order to build a comprehensive strategy.
At the end of 2008, I went back to China after I obtained my PhD in physics from the University of North Carolina. At that time, China was reforming and further refining its IP protection system and issued new amendments to IP-related laws and regulations to encourage scientific and technological innovation. There was an urgent need for IP lawyers with both technical and legal backgrounds who were familiar with different judicial systems and experienced in handling cross-border IP matters. It was perfect timing and a perfect match for me, so I decided to become an IP lawyer.
If you also have a technical background and are interested in the legal issues that arise in those fields and passionate about learning about state-of-the-art technologies, then becoming an IP lawyer could be a good option.
As a licensed attorney in China and the United States, what are the key differences between the two jurisdictions with regard to protection and enforcement of rights?
In terms of IP rights protection, there are indeed many differences between China and the United States when it comes to substantive and procedural laws. For example, patent infringement cases in the United States have a discovery procedure where both parties are required to produce evidence. In this way, both parties have an opportunity to discover sufficient evidence to prove infringing activities and calculation of damages. However, it may take longer and be more expensive.
In China, there is no discovery, and previously the burden of proof was mainly placed on patentees to investigate and collect sufficient evidence by themselves. It was therefore very hard for patentees to collect evidence and win cases since the infringing activities generally happened on the infringers’ premises. Now, in order to ease this, the courts have adopted the rule of shifting the burden of proof; a patentee must produce preliminary evidence and if it is able to show a high possibility of infringement by the accused defendant, the burden of proof will be shifted to the defendant to prove that the technology is different from that protected in the patent.
There is increasing talk about how arbitration might be used to settled SEP/FRAND disputes. As you specialise in dispute resolution as part of your practice, what are some of the pros and cons of using alternative dispute resolution in this space?
It is widely accepted that arbitration has many advantages compared to litigation, such as confidentiality, lower cost and high efficiency, its wide scope (ie, both patent and FRAND-related disputes can be settled in one case) and arbitral tribunals, which can resolve disputes on a global scale.
However, currently, most SEP/FRAND cases are tried before the courts, probably because arbitration itself has intrinsic disadvantages. First, it requires both parties to reach a consensus on whether to solve the dispute by arbitration, and the scope of matters to be arbitrated (eg, whether to issue an injunction). Second, arbitrators often have no technical background at all and less experience than judges when it comes to hearing patent and other technology-related cases. Finally, arbitration has no compulsory enforcement power. If a party does not voluntarily enforce the arbitral decision (eg, a permanent injunction) the other party has to get the decision affirmed by a court for compulsory enforcement.
How would you characterise the IP transactions space in China right now?
According to our practice experience, IP transactions increase rapidly as more and more enterprises realise that intellectual property plays a critical role in market competition. Previously, IP transactions were a small part of an M&A project. Now, IP assets are increasingly crucial and sometimes are the main target in business transactions. There is a clear trend that a greater diversity of IP-related materials (eg, documents, devices and services) and IP types (ie, patents, copyrights, trademarks and know-how) are involved in such transactions.
Further, IP transactions are becoming more specialised and need to be tailored in accordance with the characteristics of different industries upstream or downstream of the supply chain, and the technical areas. This poses more challenges and requirements for IP lawyers for large deals involving cross-border IP transactions.
What is your take on NPE-initiated patent litigation?
In recent years, NPEs have been more active in China due to the relatively low costs and short litigation cycle. A common litigation strategy that NPEs use is to file multiple infringement lawsuits in a short period of time – in different courts or local patent offices and based on different patents – against a well-known high-tech company to mount pressure on it in exchange for high licence fees. Even though the accused high-tech company has an opportunity to defend itself or raise patent invalidation as a way to fight back, this may still waste a lot of time and expenses. In many cases, these businesses choose to settle with NPEs by paying royalty fees rather than going through litigation.
In order to free high-tech companies from such a predicament, we are actively exploring fast and effective measures to save our clients from spending huge amounts of time and money. In a recent patent infringement case, we got the case dismissed before going into trial, based on the ground that the plaintiff had no eligible standing since the formality documents that authorised it to initiate a suit failed to meet the requirements of the relevant laws in China. Further, we are also trying to push back harder with other counteractions against NPEs – for example, by raising counterclaims of abuse of rights.
As a partner at Haiwen, what does inspiring leadership look like to you?
In my opinion, inspiring leadership should always stay positive, creative, pursue excellence and welcome challenges. We try our best to have an in-depth understanding of our clients’ technology and their business needs, and provide a tailored, comprehensive strategy that is down to earth, reasonable and practical.
Some of our cases involve many emerging technologies (eg, AIGC and open-source software) and raise many new types of legal issues, for which there are no specialised legal provisions or precedents in China. In one such situation, we did an intensive search for the related technical and legal information, including official statements, forums Q&As and professional articles, in China and other jurisdictions. By combining, screening and analysing this information from various sources, we were able to provide our client with a comprehensive analysis, assess the potential risks and suggest response strategies, which played a great role in the client's business decisions.
If you could change anything about the IP enforcement landscape in China, what would it be and do you think it is likely to happen?
I hope there will be more development on the granting of preliminary injunctions for invention patents. In China, preliminary injunctions are very rare, especially for invention patents involving complex technology, such as semiconductors, telecommunications, pharmaceuticals and chemistry. In some cases, patentees may need to wait one to two years at first instance and another couple of years at second instance to get an enforceable permanent injunction, which can cause them irreparable harm.
As an alternative, if a patentee wishes to expedite these proceedings, patent infringement administrative enforcement may be a good choice, as these cases are heard by local IP offices, adopt similar infringement determination standards and evidence rules like in the courts, and are required to be finalised within four months.
How have client demands evolved over the past 10 years, and how have you had to adapt your practice to take account of these?
China's IP legal system is continuously improving and the market has developed rapidly. As a result, clients now demand more comprehensive legal services and IP lawyers are required to not only have experience in technology, law and cross-border transactions or litigation, but also to have a good understanding of the companies’ business operations and stay abreast of new legal and policy developments and the international economic situation. This kind of project is not something that can be accomplished by a single person but requires teamwork – coordination of lawyers from different departments and cooperation with clients’ legal and technical staff. As a partner at Haiwen, it has been a pleasant journey to work with and learn from my colleagues from other departments, as this makes us a stronger and more capable team to handle large and complex projects.
As an experienced IP litigator, what are the most critical aspects of a successful litigation strategy before the Chinese courts?
I believe that the most critical aspects of a litigation strategy include:
- developing a comprehensive overall strategy and coordinating different proceedings (eg, infringement litigation and parallel invalidation);
- taking multiple approaches when it comes to evidence collection, including online searches (ie, official websites, social media and third-party websites), phone contact, PI investigations, notarised purchases and obtaining brochures or taking photos at trade fairs;
- presenting the technology using visualisation tools – converting obscure technology into simple drawings, charts or animations to help the judge understand it better; and
- imagining the proceedings from an external point of view – in order to predict the opposing party’s strategy, evaluate the possible outcome and build a litigation strategy accordingly, consider the case from the judge’s perspective.
What has been your career highlight to date, and why?
My career highlight is being recognised by my clients for providing legal advice to their satisfaction when it comes to patent litigation and invalidation cases in China, the United States and other countries. Thanks to the trust and recommendation of my clients, I have been recognised by a number of professional legal ranking organisations, including the Legal 500, Asian Legal Business and Business Law, among others. Some of my cases have also been recognised by the Supreme People’s Court and other local Chinese courts as exemplary cases. It makes me feel very proud to be an IP lawyer and I will do my best to get even better results for my clients!
Yolanda Jia is a partner in Haiwen’s IP department. She is registered before the Chinese Patent Office and is licensed to practise law in both China and California in the United States. Ms Jia has about 15 years of experience handling cross-border IP litigation and transactions, and covers technical areas such as telecommunications, semiconductors, computer software/hardware, internet, automobile, energy and medical devices. She has a PhD in physics from University of North Carolina.