Call me IP Attorney
IP practice is hot in China. Qualified, experienced, patent attorneys are in demand. Law firms are moving to compete with patent firms for IP projects. MWE Law Offices＊ announcement of the granting of its patent license is a recent example of the trend. A total of 48 law firms in China have a patent license 每 23 law firms in Beijing, 8 in Shanghai and 4 in Guangdong. To learn more about this fast developing practice field in China, we talked to several experts in IP practice.
Work content 每 law firm / patent firm vs. in-house
IP practice with a patent or law firm involves a lawyer more deeply in a specific area. ※More litigation and large transaction in a firm,§ notes Sam Li, Senior Partner of Jincheng Tongda & Neal. This differs from usual in-house IP practice where, he says, the practitioner gets broader experience. Mr. Chen Jun, an IP Counsel with Schaeffler, agrees. "In-house IP practice is wider than in a law firm," he says.
The responsibilities of an in-house IP counsel cover various IP-related issues. "More advisory work, contract, compliance, management at in-house," says Mr. Li. When working in-house, "you will get more administrative and managerial experience," notes Joseph Zhou, IP partner with MWE China Law Offices.
IP rights always have some value to a company. For certain companies, IP rights are the "core" value. In such companies the work of in-house lawyers is highly important to maintaining the value of the business. Mr. Chen identifies the example of "helping the company gain 'Designation of High and New Technology Enterprise.'" Catherine Yao, IP counsel with AMAT, notes the importance of involving all the company employees in developing company IP: "Choose words and rewards for employees as an encouragement/reward for their new inventions."
To distinguish differences between in-house and firm IP positions, we compare two sample job descriptions.
Outsourcing to a law firm / patent firm 每 how to choose?
When selecting an outsourcing firm for IP work, Mr. Zhou notes the "two criteria are quality and cost." He explains how he determines quality. "When I select an outsourcing firm I request a sample work product of the attorneys or agents who would work on the case." Additional factors to consider are "reputation and peer observation," notes Xu Sheng, IP counsel with Dow Chemical. Therefore, a firm's ranking from professional IP Media / press is important.
Balancing budget concerns with need for quality representation and type of case, companies may select more than one outsourcing firm. "For a big project, like a law suit, cost is not the main issue when we choose a firm," says Mr. Li, "but for more comparable services, like prosecution, cost ranks high in consideration." Jenny Luo, a US patent attorney working for a US law firm in China, notes that, "Some companies will choose different firms for contentious or non-contentious IP work, since there may be a conflict." Ms. Yao says that her company "prefers to use a full service firm" to handle all the company's IP matters.
TIPS
- a company usually works with more than one outsourcing firm 每 selection depends on project
- if company wants to use the best firm, cost will be the last factor considered
- evaluating a patent attorney's performance is easier for quality control
- choosing the firm s/he worked with before means a shorter run-in period
- using a specific patent attorney for specific work
Career development
Aspiring IP professionals now have more opportunities to develop a specialized career practice. Where is the best place to start? Mr. Zhou notes that the foundation of patent practice is prosecution. "At a firm, you will get more hands-on patent prosecution experience," says Mr. Zhou. Ms. Luo supports this view. "A law firm or patent firm, of course, a top-tier firm, provides good systematic training." "Law firms provide better surrounding for gaining legal skills," says Mr. Li.
Fresh graduates may find good opportunity joining a big in-house IP department because of the training offered on a big platform. Smaller IP departments may not be able to provide much training. "Some multi-national companies prefer candidates with 2 to 3 years experience," says Mr. Xu. This presents an opportunity to gain some good skill training at a patent firm and then move in-house.
Most IP practitioners choose the US for advanced study. "US legal training is very good," says Mr. Li. Mr. Zhou prefers study in the US because the "US is still a leading jurisdiction for patent prosecution and litigation." He also notes that, "US companies are very active in IP." Mr. Chen notes the importance of leading technology. He says that "people want to choose a country which has leading technology, since patents have tight connection with modern technology."
Final TIP 每 find a MENTOR
Mr. Zhou stresses the importance of finding a mentor. He was fortunate to start his career with support from a mentor. His mentor maintained a very high expectation for his development. Two key characteristics of a good mentor: demanding and strict, and always willing to share experiences.
