Internal, external and global

By Meline Huang, Goldpac Limited

We asked intellectual property inhouse counsel about the challenges in their work and what they see as the most significant legal developments

The work of an intellectual property (IP) legal counsel is very challenging, according to not only requiring an understanding and grasp of the laws, but also requiring them to familiarize themselves with the technical points of patents, placing a relatively high demand on the overall skills of the practitioners.

From the past work, Meline Huang, the President Assistant and General Counsel of Goldpac Limited, would argue that the main challenges are as follows:

First, internally, while balancing costs and expenses within the enterprise, it is necessary to do one’s best to do the sound foundational work, including regular searches and comparisons of the patents of competitors in the enterprise’s industry, related industries and around the globe, and guiding the internal team in developing commercially valuable patents.

Additionally, it is necessary to have a sensitive understanding of market demand, understand the customer’s sore spots and guide the R&D team in researching and developing practical patents with commercial prospects.

Personally, I believe that, for small and medium-sized enterprises, how to realize commercial benefits as soon as possible should be the focus in IP work, as the overly early research and development of a patent will usually not allow a small or medium-sized enterprise to realize a commercial benefit from it, and can easily lead to a situation where the enterprise cannot survive.

The grasp of these balancing points requires a relatively high level of overall skill from intellectual property legal counsel, not just simple legal handling skills.

Secondly, externally, listed companies and reputable companies often become the target of IP cockroaches. Given the current state of the IP regime in China and the fact that utility model patents are a major disaster area, a patented product with good commercial prospects will often continuously be infested by IP cockroaches, requiring the enterprise to repeatedly commence patent invalidation procedures, not only resulting in high costs to protect its rights, but, more seriously, customers may refuse to deal with the enterprise due to the uncertainty of its rights, resulting in its losing good business opportunities.

Under such a circumstance, how the legal team rapidly responds, and how, for the purpose of sales, it duly carries out the work of communicating with customers become of utmost importance.

Finally, regarding the challenge of going global, all fine Chinese enterprises face the challenge of opening overseas markets and going global. In this process, how the Chinese legal counsel team supports the enterprise’s business development, how quickly it familiarizes itself with the IP laws of, and checks out the risks presented by, the country or region targeted for sale of the enterprise’s products are also some of the challenges.

Although the best approach may be to work with a large reputable international law firm, bearing the large expenditures that this entails is beyond the means of small and medium-sized enterprises. Accordingly, while reasonably controlling expenses, reducing the risks of infringement by the enterprise’s products in the course of going global is also one of the difficulties IP legal counsel face in their work.