What led you to a career in intellectual property and what advice would you offer anyone considering a similar route?
After completing my bachelor’s at the National University of Singapore, I stumbled upon intellectual property when I applied for a role at the Legal Service Commission. I was assigned the only newly created position for entry-level legal officers at the Registry of Trademarks and Patents, now the IP Office of Singapore.
As an assistant registrar I examined trademark applications and heard oppositions and cancellation cases. I also helped to organise a conference held jointly with WIPO in connection with Singapore’s compliance with the Agreement on Trade-Related Aspects of Intellectual Property Rights.
This was in 1996 and the rest is history as I am still working in intellectual property. For the past 23 years I have been in private practice advising clients on IP portfolio management. Since 2000 I have focused mainly on China and Hong Kong, with a special focus on brand management and IP strategy.
The best advice for a career in intellectual property is to realise from the outset that you need to go beyond the law and understand your client’s business, needs, strategy and future plans. Armed with this knowledge you can offer the best possible advice and formulate solution-based approaches.
Another piece of advice is to find a mentor early on. Throughout my professional journey and my personal life, I have been fortunate to have role models at important milestones and candid, robust conversations that have challenged me to dig deep and stay focused on my goals, regardless of the failures or disappointments along the way.
I increasingly dedicate more of my time to acting as a mentor, as I hope to build up younger generations from diverse backgrounds and help them to catapult themselves into the IP industry and beyond. Hopefully, I can help them rise to their fullest potential, both within themselves and professionally. I often learn and gain much from my interactions with mentees too.
Throughout my career I have stuck to various pieces of advice. First, when starting out, believe in yourself and be patient. Take things one step at a time and do not be afraid to share your ideas or ask questions. Even if your suggestions are not implemented, it demonstrates initiative.
Second, if you are in mid-management or a senior-level position, be willing to take some risks and deal with change constructively. Evaluate your situation, including whether you have learned all the skills your job has to offer.
Finally, if you are trying to get back into the workforce, it pays to be creative. Get some experience under your belt through whatever means available. It is often worthwhile taking a well-placed entry-level job to get your foot in the door. Be willing to do what it takes to prove your value.
Which aspect of your work do you enjoy most and why?
I enjoy helping multinationals navigate China’s complex and ever-changing legal regime. China is a special jurisdiction that warrants particular attention when it comes to intellectual property. The great strides that it is making in modernising its IP laws, particularly over the past 10 years – including the vast improvements in the outputs of the IP office and its success with the IP court system – make this task much more fulfilling than it was 20 years ago. This is especially the case when it comes to protecting and enforcing our clients’ intellectual property on the ground.
A really satisfying aspect of my job is breaking down cultural and language barriers in order to create a customised and tailored approach that helps our clients to understand and succeed. There is no need to get lost in translation with a bilingual and bicultural team of IP experts.
What does effective leadership look like to you and how has your management style changed over the past year in light of the pandemic?
I would like to inspire and motivate my team to work towards common goals. I believe in an enabling style of management, meaning that people are encouraged to embrace autonomy – although this comes with a corresponding level of accountability and responsibility.
We partner with Great Place to Work - an organisation that assesses AWA Asia’s management and organisational practices and carries out a comprehensive examination of employees’ experiences of trust and pride in the workplace every year. Through this collaboration we can better understand the employee experience and foster an environment that is receptive to, and actions, feedback.
Over the past three years we have achieved exceptional results in the Trust Index for both our Beijing and Hong Kong offices (as well as firm-wide, including in Europe). I am proud of the fact that we have created a pro-diversity workplace where colleagues feel that they can thrive and have the ability to do so, regardless of gender or background.
I have not been able to visit our team in Beijing during the pandemic but I have spent time with them virtually as much as possible to check in on how they are dealing with the situation. We are all looking forward to a time when team-building activities and firm trips are possible once again.
How does your firm remain cutting-edge in its offerings?
We seek to always be on top of the latest developments in Chinese law and practice concerning all types of IP rights: trademarks, patents (including designs and utility models), copyright and domain names. We share this intelligence with our clients so that they can act and make informed decisions at the earliest opportunity.
For example, the upcoming amendments to the Patent Law in June 2021 will have significant ramifications for patentees as partial designs become patentable, patent-term extensions are introduced alongside higher damages and changes are made with regard to evidence. With actionable insight we remain innovative to our clients and adjust our offerings accordingly. We are also active listeners – we see ourselves as partners, not simply advisers, and want to ensure that we meet our clients’ needs at all times.
For instance, we have tailored our freedom-to-operate offering to support clients’ in-house teams that are struggling with Chinese-language patents so that they can get an overview of the technology that has already been protected and how it might affect their inventions or future business plans.
What are the most important nuances for international rights holders to be aware of before pursuing litigation in China?
Given the ease of pursuing litigation in China (relatively inexpensive and quick decisions), foreign companies should view the country as an attractive destination when seeking to litigate against foreign counterparts, as well as domestic companies.
Canada-based WiLAN Inc, which earns revenue by licensing its patents, filed a suit against Sony in 2016 before a court in Nanjing, alleging that Sony’s smartphones violated its wireless-communication technology patent. This was one of the first indications of how China is becoming an attractive destination for litigation where both parties are foreign businesses. We expect to see more of these cases in the future.
The Chinese authorities have made clear their intentions to continue strengthening IP protection in the region. How is the IP regime improving and what still needs to be done?
President Xi Jinping has reiterated the country’s commitment to strengthening IP protection through higher damages and criminalisation. We are consistently seeing higher damage awards from the courts, increased sentences and fines during criminal cases, and overall stronger enforcement from the authorities.
Over the past decade, China has transformed from an importer of intellectual property to a leading producer of intellectual property. The changing regime provides a heightened enforcement environment for foreign companies, which therefore enjoy the collateral benefits when they look to assert their IP rights through litigation.
All in all, China is to be commended for its unwavering commitment to enhancing IP rights. Perhaps the most important contributing factor is that it is in China’s own interest to have a strong IP regime, given its push to derive economic growth from technology-based and IP rich sectors, as is evident from the current (14th) five-year plan spanning 2021 to 2025. Under this, China has announced that it will increase its spending on research and development by 7%.
From the perspective of those of us on the ground, an increasingly sophisticated and transparent IP regime is emerging, which will benefit both Chinese and foreign companies alike.
How hopeful are you that recent amendments to the Criminal Law will help to deter IP infringement in China?
We were already seeing a tougher stance on IP infringement before the law’s implementation. On 2 September 2020 the Shanghai Third Intermediate Court announced sentences of up to six years’ imprisonment and fines of Rmb90 million ($13 million) for nine individuals found guilty of copyright infringement for imitating Lego’s toys. The group had sold over Rmb300 million-worth of infringing products under the LEPIN (乐拼) brand and had over Rmb30 million-worth of infringing products stored for future sale. Although this happened before the Criminal Law took effect on 1 March 2021, the tough sentences show the attitude and trends that we are seeing from the courts. We can expect this to continue now that the law is in place.
What are the biggest challenges facing clients when it comes to protecting their brands online and how can these be overcome?
I think the volume of infringement is one of the biggest challenges as China is the world’s largest market for consumer goods. We are also talking about China-specific platforms such as Weibo and WeChat, and e-commerce and m-commerce platforms such as Taobao, Tmall and JD.com.
It is essential to monitor the market for counterfeit goods and infringing behaviour and activity that adversely affect an owner’s trademark rights. Monitoring provides a company with an idea of how its brand is being used and helps to identify infringement or unauthorised use.
Besides utilising providers that perform searches through AI in key markets such as China, we also recommend an extra layer of non-electronic (manual) monitoring for key house marks that searches through platforms and trademark registers for any misuse.
We also create a triage system as instances of infringement arise to deal with the most damaging to brand reputation and revenue first, as these will have maximum impact. This sort of assessment system is the only way to effectively tackle online infringement in China.
Which recent decisions do you expect to have the biggest long-term impact on your clients’ IP strategies?
There have been a plethora of decisions lately that show how damages are increasing for IP infringement cases in China, including New Balance’s Rmb25 million victory before the Shanghai Court, while Lego’s damages were increased 10 times - from Rmb3 million to Rmb30 million – on appeal before the Guangdong Higher People’s Court.
Oil and gas giant Shell International also received the maximum amount of statutory damages – Rmb5 million - in a case before the Beijing IP Court.
In February 2021 the Supreme People’s Court awarded the largest ever damages in a trade secrets case. The case concerned the synthetically produced Vanillin, which is widely used in flavourings for foods, perfumes and pharmaceuticals. The award came in at Rmb159 million.
These decisions are already having an impact on Chinese IP strategies as litigation is becoming a more prominent and realistic feature.
How have clients’ IP strategies changed over the past five years – and how are they likely to change again?
Clients would previously shy away from litigation and focus more on administrative actions. There has been a reversal of this trend. More companies are targeted towards litigation now and many are focusing less on administrative actions, unless the facts are suitable for such action.
We will likely see a steady continuation of the litigation trend in China over the next few years. I do not expect this to taper down anytime soon; indeed, this aspect should be a key focus when putting together a Chinese IP strategy.
CEO and Principal Counsel
Ai-Leen Lim leads AWA Asia’s offices as CEO and principal counsel, managing its headquarters in Hong Kong and wholly owned Chinese IP consultancy in Beijing. She is admitted as an advocate and solicitor in Singapore and is qualified to practise in Hong Kong and the United Kingdom. For more than 23 years, Ms Lim has advised clients on IP portfolio management in China, Hong Kong and internationally, with a special focus on brand management and IP strategy.