Susie in Shanghai

One of the people I spoke with in Shanghai was a lawyer for Bryan Cave, an international law firm with twenty-five offices worldwide.  I spoke with someone who is heavily involved in intellectual property law, which is very interesting to me because I was an intern in the IP department of a law firm. Additionally, with a booming biotech industry in Shanghai and the myriad of innovations I had discussed with the companies I visited, I wanted to know more about the current state of protection in China. Although the lawyer I spoke with was not solely focused on IP work, he did give me some insight on the subject.

Before I could post the interview though, I had to do a fair amount of background research on the legal system in China.  After some investigating, I learned that like in the U.S., only people who have passed that country’s bar exam may practice law; however, in China you may only take the Chinese bar exam if you are also a Chinese citizen.  Therefore, the only way that an American lawyer could practice Chinese law would be if they gained Chinese citizenship and possessed the fluency required to pass the bar exam in mandarin.  I also learned that foreign firms are prohibited from actually practicing Chinese law, which means that even if you engage a foreign law firm, it is likely that a Chinese law firm will eventually need to be involved.  Since Bryan Cave is indeed a foreign firm, I was confused as to how they operate in China.  Then I discovered that foreign firms may perform legal services that do not involve Chinese law. For instance, an American firm office could handle a Chinese company’s legal affairs in America, provide consulting services regarding American or international law, and entrust matters of Chinese law to Chinese law firms on behalf of foreign clients.

Hope that short summary helps a bit! Below is my interview:

Q: Can you tell me a little bit about your background that led you to work for Bryan Cave in Shanghai?

A: I knew I wanted to practice law because I really liked problem solving–using analytical thinking and resolving legal issues was extremely intriguing to me. I liked the idea of defining a clients problem, working out the problem, and then getting the clients appreciation. I went to Washington University in St. Louis for law school and worked for a law firm called Simmons & Simmons for a few years before coming to Bryan Cave.  I’ve been with Bryan Cave since 2008, but only recently came back to Shanghai. The booming economy was definitively part of my decision to move back to China, but to be honest, I also just really missed the country, the people, and especially, the food.

Q: How long has Bryan Cave had an office in Shanghai?

A: Over ten years now.

Q: So what kind of work do you do for the firm?

A: I focus on international trade and intellectual property protection.  I also assist foreign consumer product manufacturers with brand protection and IP strategy as well as advising Chinese companies defending patent validity and royal collection claims.  Since I have passed the U.S. bar exam [and not the Chinese bar], when I work with domestic clients I can only advise, I cannot represent them in Chinese court.

Q: Do you work much IP protection for biotechnology and pharma industries?

A: A little bit. I have worked with a few companies to help set up R&D facilities in the Zhong-guan-cun area [Chinese Silicon Valley] and assist with their commercial assets, but usually I work with lawyers in China who specialize in biotech and other life sciences. My focus is more on representing companies in investigating alleged breach of confidentiality, trade secrets misappropriation and infringement as well as customs IP registration and enforcement. I’m also involved with advising on anti-counterfeiting enforcement actions against domestic manufacturers and distributors selling counterfeit shoes, clothing and unauthorized copies of education materials.

Q: What about patent filing?

A: My primary focus is not in patent filing, but it has become very prevalent in China. Twenty years ago, many people here did not understand how important this was in aiding technology transfer. Now the patents are becoming more sophisticated as Chinese companies are coming up with their own innovations.  There are three different types of patents in China: invention patents, utility model patents, and design patents.

Q: Can you tell me a little bit about  the differences between these type of patents? 

A: Both the utility patent and the invention patent get the same infringement protection under Chinese law, but there are enforcement differences.  Utility model patents may only be obtained on physical products, are granted and issued faster, and typically cost less than an invention patent. Invention patents are substantially examined for novelty, industrial applicability, etc. but utility patents only undergo a preliminary examination to comply with formal requirements. Depending upon the type of invention, the utility model patent might allow the company filing to receive better protection in China at a significantly lower cost.

[To clarify a bit further, I included this excerpt from an article entitled “Patents in China–Is There Any Real Protection?” by Thomas S. Babel, Ward and Smith, P.A]

An invention patent in China protects “any new technical solution relating to a product, a process or improvement” for a period of 20 years from the date of filing the patent application. The application for an invention patent in China requires the submission of information by the applicant and the SIPO conducts a thorough investigation as to the novelty, inventiveness, and usefulness of the innovation before issuing the patent.

A utility model patent in China protects “any new technical solution relating to the shape, the structure, or their combination, of a product which is fit for practical use.” From a practical standpoint, the information provided to SIPO related to the innovation, and the investigation conducted by SIPO, is very limited as compared to an invention patent. More likely than not, if the proper paperwork has been completed as part of the utility model patent application, SIPO will issue a utility model patent to the applicant. A utility model patent can be granted as quickly as one year after the filing date. As a result, the majority of patent applications in China are for utility model patents. A utility model patent provides protection for ten years.

A design patent in China protects “any new design of the shape, pattern, color, or their combination, of a product, which creates an aesthetic feeling and is fit for industrial application.” Just as in the United States, the realistic protection afforded by a Chinese design patent is limited. As in the utility model patent process, SIPO undertakes a limited investigation before granting a design patent and, if the proper paperwork has been completed as part of the application, will likely issue the design patent. A design patent in China provides protection for ten years.

Q: Speaking of patent filing, do you see a lot of actual innovations coming from China?

A: There is definitely a lot more innovation than in the past. Previously, China had a reputation for copying western IP instead of coming up with their own.  Now, because of the government’s enormous investment in R&D and because multinational corporations have seen the benefits of using the country’s plethora of academics, engineers, and scientists, there have been many more innovations coming from China.  I think increased innovation will mean an increased awareness of the importance of IP protection.

Q: You mentioned previously that you do some advising on anti-counterfeiting enforcement actions and I know that China had a reputation in the past for manufacturing and selling counterfeit goods. Has this improved significantly?

A: Unfortunately, the sad reality is that Chinese IP still has a bad reputation in many markets.  Many of the local governments are not serious about IP protection because the counterfeiters provide significant value to the local economies.  There are so many small factories and companies that keep popping up, that it is also extremely hard to stop the counterfeiting from happening. There is such a high demand for these products–even entire online markets selling the goods. On the other hand, the central government is much more worried about the counterfeiting and wants to wipe out the production of goods.  They have much more incentive to crack down because they need to protect their reputation internationally and their relationship with the WTO.

Q: What do you think needs to happen before Chinese IP is up to Western standards? How long do you think this will take? 

A: I’m not sure exactly how long it will take. And I’m not sure the answer is in law, it is more dependent on reform of the political system. However, it is unrealistic to ask the Chinese government to solve numerous IP problems overnight in a large dynamic economy. There have been major advances in IP protection, but it is true, China is not quite up to Western standards yet. I think the government and the companies in China need to fully grasp the importance of IP and what it can do for them first. This will become more obvious as the developing economy goes from copying to creating their own IP.

Q: So what do you think are some important things that a country that is doing research in China needs to think about in terms of IP protection?

A: It is increasingly important for clients doing business in China to protect their own intellectual property from possible infringement. A firm needs to have a good understanding of what its own IP is in order to develop a plan to protect it . An inventory should include a list of all patented and patentable technology, trademarks, copyrights, and business plans.  From there, companies need to work with a highly skilled and experienced legal team in order to ensure that protection. By taking appropriate precautions in the short run, they may be able to avoid IP theft with the potential to cause tremendous financial damage in the long run.

Q: On a more personal note — I’ve definitely considered law school, do you have any advice for me with regards to a career in law?

A: You can go a lot of ways with a law degree; you don’t necessarily have to become a lawyer. You have to realize that law is very detail oriented, there is a lot of negotiation, document preparation, and you are always closely monitoring your cases.  There are definitely exciting moments, especially if you go into litigation, but there are a lot of tedious aspects too.  You just really have to consider if you are comfortable with that.  I had a friend who went to law school but had trouble finding a job right out of school so he became an extremely successful entrepreneur. He isn’t practicing law, but he says it is a major help in his business that he can communicate effectively with other lawyers.

Q: What about choosing a law firm to work with? What do you think makes a difference between firms?

A:  When I was choosing I looked at the attitude of the firm. You have to ask yourself some really important questions. Is there a team atmosphere? Is there room to grow? Can I work in my own way or am I expected to work like a robot? Will I be able to communicate closely with my clients? How are employees treated? These are all things you have to consider in order to enjoy your work.  I think enjoying the place you work is a major factor in how successful you can become.