There is a growing consensus in the legal industry that a good lawyer should have specialized legal expertise and profound knowledge of industries. With the development of niche markets, lawyers specialising in certain areas are called expert lawyers in those industries, and there have been discussions about industry-based market segmentations for law firms.
But in the field of intellectual property, it is not common to divide lawyers into different groups by industries. Looking at 15 lawyers who have made the list this year, we find that almost all of them are active in a variety of industries. Zhang Tao, an intellectual property expert at Han Kun Law Firm, has a PhD in engineering (mechanical design) from Tsinghua University. In addition to mechanical design, he also specializes in other industries such as machinery, automobiles, semiconductors, TMT (technology, media, and Telecommunications), life sciences and health. "From the perspective of the entire market of intellectual property legal services, I don't think that the industry-based division of lawyers has been a common phenomenon. Maybe in some hot industries or industries with high technical thresholds, such as biomedicine, communications, and audio and video, a group of skilled and well-known IP lawyers have been handling most of the cases; but in most other industries, there is no obvious market segmentation," he says.
Zhang Jie, senior partner and copyright expert at Tiantai Law Firm, echoes this opinion. Zhang and his team have extensive experience in digital publishing, integrated publishing, film and television, entertainment, Internet copyright, animation, games, education and training, network platform and App development and operation. "The degree of legal service market segmentation for IP lawyers is directly related to the practice regions and the development stages of the related industries. In regions with developed cultural and creative industries and technological industries, there is a relatively high demand for the industry-based legal service market segmentation, which determines whether IP lawyers can be divided into industry-based groups. But in regions where the economy is relatively backward or the cultural and technological industries are not quite developed, there are far from enough conditions to divide IP lawyers into industry-based groups," Zhang says.
Zhu Zhigang, partner at Wanhuida Intellectual Property, is an expert in the areas of trademark, copyright and unfair competition. He handles cases involving fast-moving consumer goods (FMCG), fashion and beauty, chemicals, gaming, entertainment, food and beverages and other related industries. According to his observations, the specialization of IP lawyers is more reflected in business areas. "For example, some lawyers specialize in entertainment law, some lawyers with technical background specialize in patent litigation, some lawyers are good at handling Section 337 investigation cases, and some lawyers are in particular good at handling cases involving trade secrets," he says.
In the patent area where legal services are categorized based on different industries, it is quite common, and necessary, too, for IP lawyers to handle cases involving different industries. Tina Tai, partner at King & Wood Mallesons (KWM), mainly handles patent cases involving chemical engineering, pharmaceuticals and biology. Taking the International Patent Classification (IPC) as an example, she says: "Each IPC number represents an extremely detailed and specific field of technology. However, a patent often does not have only one IPC number, which means one patent not only contains the most detailed technology in a certain field, but also is a result that involves multiple fields of technology. That is to say, the IP sector gradually becomes more segmented and specific in terms of industries, and meanwhile shows a trend of intersection of multiple industries. For example, in the pharmaceutical sector, the model for monitoring drug resistance and side effects might include algorithms used in the telecommunications field. These scenarios pose higher requirements for lawyers, and meanwhile, give us more opportunities to learn."
"The patent system is intended to promote the development of science and technology. With the rapid development of technology in certain sectors, we see a huge number of patents in those sectors. For example, when we talk about standard-essential patents (SEP), the first thing comes to our mind is the telecommunications sector. Given the global attribute, technological exclusivity, extreme technical difficulty, and high market value of the telecommunications sector, SEPs widely exist in this sector. But it doesn't mean that you don't need to know about SEPs if you don't handle cases involving the telecommunications sector. I've handled some cases in the pharmaceutical sector which involved disputes over SEPs. For example, in the case of Beijing Sihuan Pharmaceutical Co., Ltd. ("Sihuan Pharm") v. Qilu Pharmaceutical Co., Ltd. ("Qilu Pharmaceutical"), which involved a dispute over cinepazide maleate injection, the IP litigation team of KWM represented Sihuan Pharm, and succeeded in the patent infringement trial. It is the first infringement case involving SEP in the pharmaceutical sector in China," Tai adds.
Tai believes that it is the industry's requirement that IP lawyers should work vigorously to build solid and strong expertise, which is also the necessary accumulation of experience for all legal professionals; at the same time, it's necessary to pay attention to the technological progress in other directions.
The newly revised Patent Examination Guidelines took effect in January this year, and the newly amended Patent Law came into force in June. Zhang of Han Kun tells ALB that the new Patent Law and the revised Patent Examination Guidelines have brought many changes to China's patent system, resulting in an increase in the enterprises' demands for services related to patent filing and exercise of patent rights.
First of all, the design-related provisions in the system have undergone fundamental changes. The introduction of (the concept) of partial design not only expands the scope of objects of the design protection, but also has a substantial impact on the judgment methods for the patentability and infringements concerning designs. The extension of the design protection period to 15 years and the prospect of China's accession to the Hague Agreement have given enterprises more choices and stronger motivation in terms of the layout of designs. Han Kun's design team has extensive experience in design patent application, invalidation and infringement, and has been actively learning and exploring to provide clients with the best layout plans under the new system, to help clients obtain design patent rights with the stable and suitable protection scope, so as to provide the best protection for the design results.
Secondly, the introduction of punitive damages and the inversion of the burden of proof for compensatory evidence in patent infringement have further strengthened the policy orientation of patent protection, enabling enterprises to be more motivated to actively exercise rights and innovate, and enhancing the value of high-quality patents. On the one hand, IP lawyers should improve their ability to handle infringement lawsuits to meet the needs of clients to actively exercise their rights. On the other hand, they should help clients carry out preparation work carefully, such preliminary stability analysis and evidence collection, so as to avoid unfavourable results such as failure to exercise their patent rights and invalidation of their patents.
And finally, the establishment of the drug patent linkage system also provides the legal basis and operational guidelines for resolving disputes involving possible patent infringements with the patentees of the drugs of original research before the relevant generic drugs are marketed. Lawyers who are good at handling patent applications and litigations in the pharmaceutical industry need to familiar themselves with all the related stipulations of laws and specific practical requirements as soon as possible, and make full use of the new system to provide clients with quality services.
Tai of KWM shares with ALB an example to demonstrate the new needs of enterprises. "According to the prevailing new rules, when filing an application for the marketing license for a chemical generic drug, the applicant must make a statement on the drug patent related to the generic drug, among which, the Statement of Category IV, which is the drug patent in question should be declared invalid, or the generic drug thereof does not fall within the scope of protection of the relevant patent rights, is the clause that will cause disputes. After being notified of the aforesaid statement, the pharmaceutical enterprise of the drug of original research may bring a lawsuit to the people's court or apply with the patent administration department under the State Council for an administrative ruling on whether the relevant technical scheme of the generic drug to be marketed falls within the scope of protection of the relevant patent rights. Although there were already many patent disputes between pharmaceutical enterprises of drugs of original research and generic drug companies before the implementation of the provisions on compensation during the drug patent validity period and the introduction of the drug patent linkage system, after the introduction of these new rules and new systems, there are new game rules for drug patents. These rules and systems will force domestic and foreign pharmaceutical companies to rearrange their next strategic planning based on their own interests; therefore, IP lawyers will see demand increase in terms of consulting services and helping clients formulate response strategies. I think this is the direction for IP lawyers," Tai says.
In addition, the Supreme People's Court issued the Interpretations of the Supreme People's Court on the Application of Punitive Damages in the Hearing of Civil Cases Involving Intellectual Property Rights Infringement (hereinafter referred to as the "Interpretations on Punitive Damages") this year. The Interpretations on Punitive Damages clearly stipulates that the people's court may preliminarily determine that the defendant has the intention to infringe on IPRs if the defendant continues to commit the infringement after being notified or warned by the plaintiff or the interested party. "In terms of the services we provide to clients, the patent novelty search and freedom to operate (FTO) are to check the existing patent risks. If potential infringement risks can be discovered through the professional legal opinions we issued to our clients, it can help the clients to avoid the relevant patents in the technical solutions for their later-on work, so as to reduce the risk of infringement. According to an announcement of Beijing Intellectual Property Court, nearly 70% of the chemical drug patent cases heard by the Court involved foreign entities, and foreign-related drug patent cases often involve huge amounts of money. It is in particular necessary for companies with overseas market demand to establish effective risk response mechanism. At the same time, as IP lawyers, we should strengthen systematic study, understand the relevant legislative background, and understand the actual needs of enterprises, so as to provide enterprises with more targeted services," Tai adds.
The new Copyright Law also takes effect in June 2021. Zhang of Tiantai observes that the new Copyright Law has impact on all industries, although the degree of impact varies. "The characteristics of the copyright sector determine that it needs the Copyright Law to protect intellectual achievements in a timely manner, to stop infringements in time, and to carry out various licensing or transfers of copyrights in a timely manner. Each step of the development of the copyright sector is closely related to the Copyright Law. Enterprises need lawyers who have profound knowledge of copyright, know their industries, and have extensive law practice experiences to provide them with multi-level and all-round legal support such as special training, day-to-day guidance in projects involving copyrights, contract risk prevention, special problem solving, and dispute resolution. In this context, lawyers should not only have a deep understanding of the spirit of legislation, but also be familiar with how these legal systems are implemented and operated in the relevant industries, so that they can provide practical legal solutions for advancing the specific projects, instead of the principled legal opinions only," he says.
Zhu of Wanhuida believes that revision and amendment of IP-related laws and regulations provide more efficient and convenient remedies for some difficult problems. "With legislative protection, enterprises can put these difficult problems on their agendas," Zhu says.
Take the live-streaming industry, which has seen extremely rapid growth in recent years, as an example. Zhu tells ALB that the live-streaming industry was once a mixed bag with plenty of cases involving counterfeits, copyright infringements, and unfair competition; moreover, with law lagging in the sector, many infringement-related problems were very difficult to deal with. In April 2021, the Cyberspace Administration of China and six other departments and ministries jointly promulgated the Administrative Measures for Live streaming Marketing (For Trial Implementation), clearly referring operators engaged in live steaming marketing activities as the E-commerce platform operators or operators doing online businesses over e-commerce platforms which are stipulated in the Electronic Commerce Law of the People's Republic of China. Therefore, the E-commerce Law shall be applicable to live streaming marketing activities, as well as the related legal actions such as online complaints, which will surely make enterprises more motivated to protect their rights and interests through legal means.
ADVICE TO YOUNGER LAWYERS
As noted above, IP lawyers need to be both knowledgeable and up to date with legislation, so keeping up with learning naturally became a common tip for the younger generation among the lawyers interviewed. Tai says: “The patent law is updated at a very fast pace, and there are constantly new regulations on the standards of patent right confirmation and infringement identification. Only by maintaining a state of constant learning can we improve our professional ability and better serve our customers.” She also suggests young lawyers to develop good practice habits, “For example, the habit of case evaluation and analysis, the habit of writing legal documents, the habit of recording case work, the habit of timely reporting with the team or customers, the habit of being good at summarizing, independent thinking and writing articles, etc., these good habits will benefit you for life.”
Zhang Jie also adds: “Copyright legal affairs often need to be detail-oriented, to make sure all details are covered. Details determine a lawyer's professional level and others' evaluation of the lawyer. Meanwhile, we should also develop the overall control ability or strategic thinking for litigation cases or projects. Do a good job in time management, work planning, and effective accumulation in daily work.”
Zhang Tao gives his advice from three aspects. “As a young lawyer, you must keep learning in your work and keep up with the forefront of technology, law and business development. First , enrich your knowledge to better understand the technology. Try to be a good liaison between the technical personnel and the judge or examiner, try to understand the technology from the perspective of technician, but also peel the technical shell of the case to see the legal core in it. Secondly, read a lot of relevant cases and academic works, and have a thorough and comprehensive understanding of legal principles, similar rules and related cases. Additionally, it is also necessary to understand the business logic of the industry in which the customer is working, develop keen business sense, and take the initiative to provide customers with litigation strategies and services that are more in line with business interests.”
Zhu Zhigang encourages young lawyers to actively embrace the changes. He says: “Keep up with the pace of the times, and keep knowledge updated to meet customer needs and business development. At the same time, the legal profession is largely about knowledge accumulation, summary, and refinement. Just like the old saying goes, ‘He who knows cause and effect knows truth’. Personally, I really appreciate Zeng Guofan's war tactics, which was to fight with a solid base. I think it is a tactic particularly suitable for the legal profession, and I want to give such wisdom to young lawyers in the field of intellectual property. I hope that the young lawyers can stay curious, steadily move forward, and build a successful career.”
LOOKING TO THE FUTURE
For the future, Tina Tai tells ALB that she and her team will strive to build “the most trustworthy patent team in the biomedical industry.” She says: “We have represented some of the most influential cases in the biomedical industry, and have accumulated some results based on this, which is inseparable from the solid expertise of the team's lawyers, selfless dedication, and close collaboration among the members. In the future, my team and I will continue to consolidate our professional knowledge, treat every client and case with the same spirit as before, provide professional, high-quality and efficient legal services for clients, and live up to our team's good reputation in the market.”
Zhang Jie tells ALB that in the future, he and his team will further give play to the team's practice advantage of being familiar with all upstream and downstream ends of the copyright industry, and dig deeper and wider in the macro copyright industry, including integrated publishing, film and television entertainment, internet, knowledge services, gaming, animation and other subdivisions. While providing legal advice for clients, they will also provide high-value legal solutions to help clients' development. One of their strategic goals for the next stage is to extend copyright services to countries with developed cultural and creative industries while expanding their domestic services.
"What makes me proud is that our team is a professional team with faith, action, ability to work hard and fulfill our responsibility, which is an important condition for us to achieve the next goal." Zhang Jie says.
Zhang Tao's expectation, as he tells ALB, is that in the near future, the intellectual property team of Han Kun could be expanded and improve its professional services to a higher level, which means introducing and training more young lawyers and patent agents, and meeting the needs of clients in various aspects such as intellectual property rights acquisition, exercise and transaction. On the one hand, they will provide more considerate and customized services based on the specific needs of clients and improve the quality of services. On the other hand, they will also adjust the modularization and standardization of routine practices to improve the efficiency.
Last but not least, Zhu Zhigang tells ALB: "We will continue to adhere to the concept of 'customer first', adopting a business interests-oriented approach to solve practical business issues with legal advice that maximize value for our clients."
2021 ALB China Top 15 IP Lawyers
Cui Jun 崔军
Guo Shizhan 郭世栈
Li Zhengning 李正宁
Ma Dongxiao 马东晓
Ethan Ma 马宇峰
Clement Ngai 魏永强
Qiao Ping 乔平
Rong Chao 戎朝
Tina Tai 邰红
Allen Tao 陶凤波
Jessica Xu 徐初萌
Yu Haidong 于海东
Zhang Jie 张杰
Zhang Tao 张涛
Zhu Zhigang 朱志刚