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Why IP protection strategies cannot be established overnight

Publication February 2, 2021

Intellectual property rights infringement is increasingly complex, and the protection strategy against it often needs constant adjustment before an effective solution can be ultimately worked out to curb such infringement. At a later stage of a proceeding, the rights holder may sometimes wonder: Since an effective IP strategy can eventually be found and implemented, why was it not used at the outset of the case to crack down on the infringement?

In fact, similar to a doctor’s treatment of a disease, which requires a therapeutic analysis and adjustment to the strategy, it is objectively impossible to develop an effective protection strategy at the outset of a proceeding, except for cases that deal with simple, stereotyped infringement.

Formation of a strategy

A detailed study of the facts. A practical IP strategy that is appropriate to the case scenario must be based on an exhaustive mastery of the facts, and the process of ascertaining the facts cannot be completed just at the outset of a proceeding. There are various reasons for that, such as the parties often select only facts favourable to them when presenting their cases, and often deliberately or inadvertently conceal facts unfavourable to them.

However, those unfavourable facts are usually the central focus of an IP protection strategy. Moreover, some facts that are crucial to a case may well be overlooked because the related party, from its own empirical perspective, does not see them as relevant due to an inability to accurately understand the focus of the case.

Therefore, a comprehensive mastery of the facts is often not available at the beginning of the proceeding, but needs to be made clearer through constant communication, exchange and analysis.

A thorough analysis of the evidence. In many cases the parties are unable to provide sufficient evidence to support the facts they state at the beginning of a proceeding, even if they have a detailed understanding of the facts. In this circumstance, it is necessary to urge the parties to collect evidence by further clarification and communication with them.

Further evidence may also need to be gathered from a professional perspective. In many cases, even if the utmost efforts have been exerted, it’s possible that not enough evidence in a particular aspect can be obtained. At this point, it is necessary to adjust the strategy accordingly, based on the facts that can be supported by the currently available evidence, rather than advance the strategy regardless of the evidence, and based solely on the facts that were known.

Assessment of the infringer. In IP cases, one party often directly confronts the infringer, and there is generally no prior contractual or commercial relationship between them. Not only are these cases highly adversarial, but it is also difficult to anticipate the opposite party’s feedback. After initial action has been taken, it is often necessary to observe the opposite party’s feedback and adjust the strategy accordingly.

Changes in strategy

Changes in the basis of the rights. In the formation process of an IP protection strategy, both parties in a number of cases may focus their attack upon the basis of their opposite party’s rights. Examples include the invalidation of a patent, or the cancellation of a trademark of the opposite party. In such cases, a change in the basis of the rights will have a material impact on the overall strategy for the case, and the strategy needs to be adjusted accordingly.

Changes resulting from new evidence found. Similarly, the discovery or appearance of new, key evidence (for example, new evidence arising from a change of circumstances in a rights affirmation case) will often have an impact on the facts of the proceeding. For example, evidence to prove prior use of the relevant rights, or to prove the application of relevant technical solutions in the public domain, can often have a material or even disruptive effect on the proceeding. In such cases, the strategy must also be adjusted to facilitate countermeasures.

Adjustments based on the opposite party’s feedback. As noted above, in conflict IP cases, our opposite party’s response to our actions is often very different from ours. If we have not dealt with the opposite party before the incident, the latter’s response is even more unpredictable at the outset of the case. However, when action is taken, feedback from the opposite party may often be critical to subsequent strategies, and only a tailored approach can ensure effective results.

Joint efforts

Advantages of the parties. The parties have a clear advantage in terms of their mastery of the facts about the cases, and the facts they experience are understood the most. The parties are surely aware of what evidence is available and what is not.

Advantages of the lawyer. These lie in the lawyer’s capability, based on experience, analysis and judgement, to help the client sort out the most important facts that are most useful to the case, and to assist the client in collecting relevant evidence to support the case-related strategy in a specialised manner.

Noteworthy matters during communication between the parties. It is important for both clients and lawyers to engage in communication in an objective and honest way when they are attempting to understand the facts and gather evidence. The following inclinations are not conducive to developing a comprehensive and practical strategy: Any overly subjective or unilateral statements about, or approaches for, gathering evidence in one party’s favour; and any analysis of the case from a single perspective.

Of course, a relatively fixed template strategy is not useless. For simple, repetitive or high-volume cases, a template strategy may be fast, efficient, and save time and cost. However, for complex infringements or sophisticated infringers, template strategies may produce results that differ significantly from those expected, once they are well taken advantage of by the opposite party. Therefore, for infringements to be dealt with, it is important to master both strategies and apply them to different scenarios, so as to protect the legal rights of their holders effectively.

This article was originally published in China Business Law Journal.