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IP strategies details determine success or failure

Publication November 2022

Once right owners understand the importance of intellectual property (IP) protection, they generally pay corresponding attention to their overall IP strategies. However, even after an IP protection strategy is understood and formulated, concrete implementation can still prove ineffective, or fail to achieve its intended purpose.

Even a tailored strategy may not turn out to be once-and-for-all effective. Full and proper execution of a relatively broad IP strategy requires more attention to detail regarding several aspects.

TAILORING TO DETAIL

Taken literally, the phrase “IP protection strategy” gives the impression of being holistic rather than detail-oriented. In the author’s opinion, strategies are more global than specific action plans.

But rather than being a formality or a superficial way of gaining insights and perspectives, or merely ideas or theories on paper, IP strategies should aim at solving practical problems. Some companies – overconfident in their ability to understand and adapt by learning from examples after listening to a lecture or reading an article – may follow modelled strategies from others, only to find they do not work as well as expected.

Instead, effective IP protection strategies must be tailored according to right owners’ current status of rights, and the actual situation of potential IP squatters and infringers. This should also be in combination with the current situation and relevant market changes of the specific IP. Together, all of these factors should guide specific action plans to cope with and solve practical problems.

Practical results and actions led by effective strategies must be based on detailed study of specific cases, and guided by practical experience derived from the facts. If a company takes the one-size-fits-all template as its strategy, it will unavoidably encounter barriers and failures in reality.

WHAT CAN GO WRONG?

The author has encountered many typical cases in which companies had consulted on IP issues and formulated a corresponding strategy to the situation at the time, but in the course of implementation failed to correspondingly adjust through follow-up consultation, while infringers changed their schemes, hence rendering the strategies ineffective.

Even a strategy that takes into consideration various circumstances of the right owner, competitors and infringers is not a done deal, because protection of an exclusive IP right is inherently adversarial. In such a battle, opponents or other participants do not wait for an owner to implement strategies step by step to suppress them. They take action simultaneously to counter the IP.

IP strategies therefore need to be adjusted by closely monitoring counteractions of opponents and other participants. Only in this way can action plans evolve and adjust, becoming flexible, dynamic and vital.

In addition, ineffectiveness of strategy implementation is closely related to inadequate preparation at the initial stage of formulation.

In reality, right owners more often than not only consider plans that appear favourable from their perspective, and overlook circumstances that may be unfavourable, whether intentionally or unintentionally. Some may even be emotionally resistant to further discussing possible negative views.

However, to be genuinely effective, IP strategies need to be proactive, focusing on weaknesses and planning for possible actions that opponents might take. As long as most challenging and unfavourable situations are anticipated, and counter plans are made in advance, response can be with forethought and preparedness.

WHY ACTION PLANS FAIL

Broad strategies need support from concrete implementation. Consider the metaphor that even a layman can make meaningful comments on a case after reading it. That is because the result of the case and the judge’s analysis are already apparent, and hindsight is not difficult.

But the vast and trivial details of the work behind a judgment can only be understood after close consideration and analysis of the case, including fact-finding, evidence collection and personal participation in confrontation. Just as watching a movie and producing a film are two different things, reading a judgment is quite different from planning a strategy and promoting its implementation.

The source of each piece of evidence in the judgment, the purpose of evidence collection, the initial clues, the critical support of the evidence to the case, its potential to become unfavourable evidence in another case and other facts all need to be considered and planned according to the same established goals under the guidance of IP protection strategies.

Not to mention that much favourable evidence may not be available for various reasons, so whether to continue the original action and how to cope with defeat must also be considered in advance.

Behind some concise and clear evidence in the judgment of a complex case is the investigation and collation of numerous complicated facts. The final factual conclusion is just the tip of the iceberg compared to the massive workload in the early stage.

Therefore, formulating and implementing an effective IP strategy requires attention to details of the specific action plan for such a relatively broad strategy, as well as response plans for possible situations during the confrontation, and a backup plan in case the implementation becomes unsuccessful.

An IP strategy can be effectively implemented only with a lot of thorough and detailed work. The saying that details determine success or failure applies in the same way to specific plans and relatively broad IP protection strategies.

The original article was published in China Business Law Journal, 26 August, 2022.

Author

Head of Shanghai Pacific Legal, Partner, Intellectual property, Antitrust and competition