You are celebrated as being one of the world’s top IP strategists. What is the secret to your success?

The ability to provide unequivocal legal advice, take calculated risks and implement them to achieve business objectives is the secret to my success. While my legal training has been instrumental to the value that I bring, my successes would not have been possible if I was driven primarily by risk mitigation and getting the best possible deal. The best way for a lawyer to innovate is to stop thinking like a lawyer; thinking like a businessperson emphasises smart risk taking. Many business professionals seek to understand the true practical risk versus the theoretical risk of making a particular decision. We can provide high-value legal services to businesses when we help them to engage in smart risk taking. The overall risks – quantified as much as possible – should be weighed against the potential business reward. 

In a world where more assets are not patentable, how do you communicate the significance of trade secrets to your clients?

It is really about educating clients on the evolving landscape of trade secret protection in China and using successful cases to shatter misconceptions. For example, before 2020, it was uncommon to see multi-million-dollar damages awards for trade secret misappropriation in China; US$50,000 was considered to be average. However, since then, the courts have consistently applied an approach that is more favourable to trade secret owners, resulting in high damages awards. For example, in Sennics, the Supreme People’s Court handed down the first decision on punitive damages for IP infringement and issued the largest trade secret damages award in China of 201.5 million yuan. In Golden Elephant, the parties reached a settlement of 440 million yuan. In Geely, the Supreme People’s Court handed down a 640-million yuan judgment, overruling the Shanghai Higher People’s Court’s ruling.

These recent decisions are indicative of the Supreme People’s Court’s efforts to further strengthen trade secret protection. Taken together, they send a message that trade secret theft – whether by foreign or local companies – may be punished by skyrocketing damages awards.

As an expert litigator, if you could change anything about the patent enforcement process before the Chinese courts, what would it be, and do you think it is likely to happen?

Ideally, I would like to have limited disclosure, similar to that of the United Kingdom.  However, implementing a disclosure mechanism in a civil law legal system would be challenging, so it won’t happen in the foreseeable future, but it might become a reality one day.

You have worked with clients in a wide range of industries, from pharmaceuticals to fintech. How do you keep abreast of all the latest IP developments in such a broad array of fields?

Frankly, it is impossible to keep up with all the new developments in one industry, let alone several. I rely on subject-matter experts to educate me. For example, I watch a lot of YouTube videos or the Chinese equivalents. Quality videos and audio are an excellent source of educational information. I also turn to smart colleagues and friends who keep me updated on new developments of interest.

What are the biggest challenges that your clients in China are facing right now, and how are you helping them to overcome these?

I serve multinational corporations that do business in China, as well as Chinese clients going global. They have different sets of challenges. My multinational clients tend to have good IP portfolios in China. It is a matter of enforcement. However, some are still gun shy about IP enforcement in China because old perceptions are hard to shake – and once bitten, twice shy. Few of these clients make China an integral part of their global IP enforcement strategy. To change this mindset, I educate them by showing our successful cases and objective data.

With regard to Chinese clients that have a global business plan, their biggest challenge is navigating IP landmines in the countries in which they do business. The UPC is relatively new and Chinese companies are already being sued there. However, the United States continues to be the jurisdiction in which they are sued most. As a licensed lawyer in the United States, I can represent Chinese clients in court cases there. More importantly, I spend some of my time educating Chinese clients on how to nip litigation in the bud.

Benjamin Bai

Partner 
[email protected]

Benjamin Bai is a partner in King & Wood Mallesons’ IP department in Shanghai and a US-licensed patent litigator. He focuses on high-stakes disputes involving complex patents, trade secrets, trademarks and copyrights, as well as unfair competition and antitrust claims. Mr Bai received his BSc in chemistry from the University of Science and Technology of China, his PhD in chemistry from Rice University and his JD from the University of Texas School of Law.