What basic advice would you give to foreign companies bringing valuable IP to China?
It is important to have IP protection. Foreign companies should file their patent applications with the State IP Office in China and their trademark applications with the China Trademark Office. Once they get IP protection, they can then talk about enforcement. Historically, foreign companies aren’t comfortable with the IP enforcement system in China so they ask “why bother?” It’s critical for them to file patent applications in China and gain patent protection at the same time as they are exploring market opportunities in China.
Foreign companies have historically been the strongest champions of IPR law reform in China. But is demand for patent protection from Chinese companies and entrepreneurs driving changes to IPR protection laws in China?
Yes, especially in the last five years. The Chinese government is now promoting innovation and aims to provide stronger IP protection for Chinese companies. Many domestic Chinese companies are asking the government for stronger IP protection and enforcement in China. For example, Huawei, Alibaba and ZTE are leaders in the high-tech industry. With these Chinese companies leading the way in worldwide competition, more and more domestic Chinese companies realize the importance of having strong IP enforcement in China, so they can use this system to protect their business. This is a good trend and promotes more rules and regulations to make sure the environment is good for both business and innovation.
What is the most significant legislation the Chinese government has passed to strengthen IPR protection in China?
It’s hard to tell which one is the most significant, but the patent law plays an important role in strengthening IPR protection in China. It will be revised soon. Last year, the Chinese government published a draft of the Fourth Amendment of the Patent Law for public comments. The draft includes, for example, some provisions regarding monetary damages. The low amount of compensation has been the weakest link in patent infringement cases, because normally in China, when you file a patent infringement case, you might not get a very high monetary damage award. The government realizes that’s probably the reason why people think the IP/patent system is not that strong. So the government has included provisions in the draft to increase monetary damages especially for willful infringement (meaning you know there’s a patent, yet you still infringe the patent).
What is the most interesting case you’ve had to deal with in regards to patent litigation/IP/licensing?
The most interesting one is when we helped a foreign client implement IP enforcement in China. It’s interesting because the product is a luxury baby stroller. It’s a very famous brand outside of China, and it has become popular in China for those who can afford it. And we found a lot of counterfeit products. It’s not a traditional counterfeiting case—some copycats use the same trademarks as our clients, some of them use their own brands. In addition to trademark infringement, we also dealt with patent litigation. We further worked with customs to seize certain counterfeit products leaving China. The infringed products were being exported to foreign countries, and that’s how our client found out about the infringement. In fact, the counterfeit products were manufactured in China whereas the real products’ key parts were manufactured outside of China.
How do you view the recent merger between Australian law firm Mallesons and China’s King & Wood?
It’s a very interesting joint venture. And actually, there’s a more recent one with Dacheng and Dentons. But, they’re different. For King and Wood, it’s more of an international merger because they now work together closely as one firm, and they also changed the firm’s name. This might be a trend — Chinese law firms seeking collaboration with international law firms. With Dacheng and Dentons, the joint venture is looser. They formed an alliance but they’re still operating separately.
Foreign law attorneys cannot practice in the courts in China. I think if the Chinese government opens up its doors more, that may be a welcoming change. In the economic zone in Shenzhen, attorneys from Hong Kong can practice law and foreign law firms can form joint ventures with local law firms. The national regulation right now is still pretty restrictive, but you never know what will happen in the next five years.
What is the best business decision you’ve ever made?
Establishing Finnegan’s Shanghai Office. The firm decided to open a representative office in China in 2008, and I moved to Shanghai from headquarters based in Washington DC. It’s been an interesting journey for me, and it’s been eight years. There have been lots of opportunities and exciting cases, interesting experiences and challenges in China. It’s not easy but it’s been exciting.
Why did you transition from a chemical engineering background to law? Did you know you wanted to be a lawyer?
Having a technical background is a unique perspective of being a patent attorney. At Finnegan, an IP-specialized law firm, we have about 380 attorneys – 90% of our attorneys have technical backgrounds. We went to undergraduate schools majoring in science and engineering, and then we went to law school before we joined Finnegan.
In China, getting a law degree starts with undergraduate studies, but I was in a “science and technology” undergraduate degree and did not think of becoming an attorney. After I graduated from college, I was looking for a job. At that time, China’s job market had just started to become more open and job fairs were a new phenomenon. I went to a job fair near where I lived for fun. And at the fair, there was an IP specialized law firm hiring graduate students who had master degrees in science and engineering. I was very lucky to be accepted, although I just had a bachelor’s degree. That law firm where I got my first job is Liu, Shen & Associates, which is now the top IP specialized law firm in China. I worked there for a year, but then I still wanted to do research, so I went to the U.S. for a PhD program in chemical engineering at Virginia Tech. Later, I realized it would be better for me to do IP law. I ended up getting a JD degree after three years in graduate school.
If you were not a lawyer, what would you like to be?
When I was young, I wanted to be a medical doctor. But now, I would want to be a professor. I’m currently teaching patent law courses for various law schools in China, and I enjoy interacting with young students.
Have you encountered any hurdles in the legal industry as a woman?
Personally, I didn’t have any hurdles. In other words, Finnegan is pretty good in terms of diversity. The firm has good policies to encourage female attorneys to grow with the firm. For example, the firm provides generous maternity leave benefits. It’s also important for female attorneys to have mentors. I personally benefited from the mentor program at Finnegan. I am grateful to Finnegan for its promotion of diversity. When I came to China, sometimes I felt there were some stereotypical views against women attorneys. And attorneys in general as a profession are not well respected in China. But I hope, with our efforts, China can become a better country.