Throughout your career you have practised across several jurisdictions, including Australia, Hong Kong, the United Kingdom and China. How has this global experience shaped your approach to IP strategy? 

Practising in such disparate jurisdictions has brought home to me that clients in different countries have slightly different approaches to and emphases on intellectual property. Some clients in Australia have a more regional IP focus (eg, on the Asia-Pacific region), while those operating in Hong Kong may have a more international approach – the same can be said for global-facing UK clients. However, my greatest lessons came from working in China for the last 20 years, where clients have moved away from what could be described as a reactive IP approach towards a more proactive stance. 

If you could change one thing about litigating before the Chinese courts, what would it be, and do you think it is likely to happen? 

I would petition to reduce formality requirements for admissibility of evidence. The mandatory notarisation (and legalisation if evidence has been secured outside of China) requirements make it challenging to determine certain infringements – this is often the case when it comes to process-patent infringement. It is sometimes simply not practical for a notary to attend the evidence-gathering process (eg, where the alleged infringing act takes place in a clean space within the target factory), but without their involvement, the court might not accept the evidence.

Having represented many Fortune 500 companies and other multinationals in patent litigation, how do you tailor your approach to best fit each client’s needs? 

There is no one-size-fits-all IP solution for our clients. This means that we tailor our solutions to their individual circumstances. For one client, this may involve a very comprehensive and far-reaching IP strategy; for another, it could mean honing in on the specific IP issue at hand and providing a laser-focused solution. This means that we offer a range of options when it comes to litigation – from complex ‘bet-the-house’ litigation to simple administrative enforcement when that is what the client’s circumstances and cost-benefit balance require.

How are you incorporating AI into your daily practice, and what is the most crucial lesson that you have learned so far?

This is a very timely question. I have just completed an advanced diploma on AI and intellectual property at the University of Strasbourg’s Centre for International Intellectual Property Studies, during which the full extent of AI’s potential – as well as the risks – became apparent. I expect that we will see tremendous changes in the way that certain prosecution and advisory tasks will be handled in future – some may be entirely automated, others will, at least, be AI-assisted. Having had the opportunity to glance behind the AI curtain, my initial revelation – while it is too early to assess whether it is a crucial lesson – is that intellectual property may already offer us a decent toolkit to protect AI without having to invent or reinvent the proverbial wheel. It has always been the case that some IP concepts will need to be adjusted or stretched, but the existing framework for protection, ranging from copyright to patents and trade secrets, should serve us well to protect AI-enabled innovation. At the same time, AI will have a tremendous impact on the skills that IP professionals will have to bring to the table. Volume work is likely to become even more cost-sensitive, while value-added skills and work will continue to be rewarded with a price premium.

What key pieces of advice would you give to foreign rights holders that are considering commencing patent litigation in China?

China is making huge efforts to show that it is back to business as usual post-covid-19. This ranges from entry and travel privileges for foreigners, to court access and other routes of IP enforcement. In short, it is as good time as any to bring appropriate patent litigation cases in China – especially if the business case for protecting commercial interests there is also aligned. Having said that, it is more important than ever to do one’s homework and not underestimate one’s adversaries. While patent prosecution and litigation have progressed over the last 20 years, so have local counterparties. Sun Tzu’s stratagem, “attack him where he is unprepared; appear where you are not expected”, is more apposite today than ever.