On December 10, Quality Brands Protection Committee of China Association of Enterprises with Foreign Investment (QBPC) Legal Committee held IP Litigation Management Webinar. Legal Committee Vice Chair Amy Wang shared her years’ experience in IP litigation management, including the selection of external lawyers, technical experts and economists, the protection of trade secrets in litigation, media PR strategies in litigation, and the experience and skills in communicating with the litigation team of foreign headquarters. QBPC Chair Michael Ding, Legal Committee Chair Michael Yu, Vice Chair Amanda Dong, Liu Miao, Patent and Innovation Committee Chair Alvin Deng and nearly 70 QBPC members attended this meeting.
As Senior Counsel of Intel China, Amy had rich experience in intellectual property litigation management. She believed that when companies, especially multinationals, faced lawsuits in China, a good team of lawyers played a prominent role in the process. The enterprises should prioritize various qualifications of external lawyers. The most important ones included the dedication of chief external lawyer, his expertise. management experience, strategic vision, team work within the lawyers’ team, and a long-term version instead of focusing on short-term profits. The visibility of the lawyer and his firm, the number of professional awards and honors received in their field, the success rate, the extent of their social resources/network, and attendance at professional conferences were only secondary considerations.
Regarding the selection of technical experts/economists, Amy put emphasis on the following five aspects, namely, expertise and skills, experience in court testimony and presentation skills, sense of teamwork, having ample time with relatively flexible schedule, and logical self-consistency meaning no conflict between current statement and previous statement.. She also shared some case studies as examples. With these qualities could experts better cooperate with the litigation team, form a more complete litigation opinion and display it skillfully from the most advantageous perspective for the client. These were quite challenging in practice.
In litigation, the protection of trade secrets is particularly important. How to prevent improper disclosure of trade secrets in litigation should be a huge concern for all enterprises, especially high-tech enterprises. In order to properly protect trade secrets in litigation, enterprises could use non-confidential information as much as possible, such as public information and relevant contents in reverse engineering analysis reports; when disclosing trade secrets to external lawyers or in the process of court hearing, enterprises shall sign confidentiality agreements with relevant personnel, and inform them that it should only be disclosed to those who need to know and only be read, not borrowed, copied or downloaded, etc., and encrypt and cover sensitive information; after the use of trade secrets, they should be properly handled, such as timely withdrawal of information sharing system permission, cutting up tangible materials, and requiring relevant parties to show proof for disposal.
For many foreign-funded enterprises in China, besides the courts, media PR is another battlefield for intellectual property litigation. The formulation of media PR strategies in intellectual property litigation was a tough test in terms of the professional level, communication ability and collaboration of the legal team. According to Amy, when considering media PR strategies, it was necessary to prepare the company’s basic position on the case and talking points for common media questions, monitor the dynamics of media reports, and correct inaccurate or misleading media reports. When necessary, rebuttal media reports had to be prepared. Amy also shared approaches on how to coordinate with other co-plaintiffs or co-defendants. In daily work, companies should maintain a good cooperative relationship with the media so that they could seek the cooperation of the media just in case.
Regarding the cooperation with the litigation department of the headquarters, Amy said that the cooperation could be enhanced through weekly meetings, the establishment of a frank and transparent communication mechanism, the appointment of domestic and foreign co-case leaders for the same case, and case study in oder to share key points of cases, experience, obstacles or difficulties, practical skills and best practice with colleagues in the headquarters.
During the Q&A session, the participants discussed the topic and asked some questions, including differences in the selection of external lawyers within and outside the region and system differences, how to balance the winning rate and dedication of external lawyers, and how to negotiate with the court on disclosure and how to maximize the cooperation with the co-plaintiff or co-defendant, etc. Amy responded one by one and invited all participants to think about the thorny issues in the management of intellectual property litigation. In the two-hour event, Amy shared plenty of practical experience which could benefit the participants a lot.