Interview: Deanna Wong, partner, Hogan Lovells
Deanna Wong is partner at Hogan Lovells' Beijing office and an IP practitioner with 20 years of experience in China and Hong Kong. As part of the Women in IP series, she speaks to Alice O’Donkor about the progress of IP enforcement in China, the plight of foreign brand owners and work-life balance.
Growing up, Wong struggled with pressure from parents to become a “medic, accountant or lawyer”, a common grievance for young Asian women. Looking to keep her options open, Wong completed a year in pre-medicine at university. A talented pupil in both art and science-based subjects, Wong sought a career that would satisfy her interest in both disciplines. She discovered that she could have the best of both worlds.
Twenty years ago, Wong entered the IP profession. In the same year, Hong Kong introduced its Patents Ordinance which introduced provisions for patent filing and grant procedures. Wong, who now works as partner at Hogan Lovells overseeing IP work in both regions, describes 1997 as an important year for patents: “When I started, I was in Hong Kong and thought that there were going to be a lot of developments in this area. I wanted to be part of it, so I gradually moved my career towards China.”
Now, China is seen as an international leader in patent filing and innovation. For years, Asia has topped the list for the number of patents filed. In 2015, the number of patents enforced in China went from approximately 600,000 in 2010 to almost 1.5 million. In the same year, China accounted for 84% of total growth in patent filing. According to statistics from WIPO, “China accounts for more active trade marks than any other country (10.3 million), more than a third of all the world’s industrial design registrations in force and fully 90% of utility models in force globally”.
The increase in patent activity creates a number of potential problems for companies operating in China. Wong explains: “It has moved on from the run-of-the-mill IP infringement. The infringers are raising the stakes.” In the past, infringers have pursued brand owners with aggression but shown willingness to back away, provided that they made money from their exploits. Wong says that this culture is changing: “They see it as a very lucrative business, not just as counterfeiting or infringement, but an opportunity to turn the tables around and sue proper brand owners for gaps they probably didn’t see in their IP protection.” Chinese entities fight for the IP rights of well-known brands, supported by a wealth of financial resources. “They realise that it’s a massive industry that is growing.” Wong says dealing with such cases has convinced her that “the legal system in China is by no means perfect, but tremendously improving.”
While the Chinese courts are more sophisticated than before and growing in its understanding of international laws and precedents, they struggled with an increasing backlog of cases. In effect, Wong says: “It means that some of them would like to render really good decisions, but because of the time and pressure constraints that they have, they are not able to.” Three years on from the establishment of specialised IP courts in China, positive changes have been seen. The courts have awarded substantial damages to plaintiffs and introduced stricter judicial reviews. In Wong’s opinion, the Chinese government need to “bulk up” its efforts to develop international credibility, by ensuring that courts and administrative authorities are rewarded based on “the quality of their cases and not the number of cases they turn”: “This is something that the government needs to show the world, is changing,” Wong says.
“They want to be able to do well but they have only got so many heads, so many judges and so much time. For example, 500 cases for one judge in a year, realistically, renders it very difficult to deliver quality decisions.”
In a statement, WIPO Director General Francis Gurry highlighted the rise of patent and trademark filing in Greater China, praising the region for “making great strides in internationalizing their businesses as the country continues its journey from ‘Made in China’ to ‘Created in China’”. In April, the Chinese Trademark Office announced a significant reduction in fees. Many say that this decision signifies a large stride towards rebranding China as an open economy and a friendly home for SMEs. Wong notes: “They have cut the fees and it makes it friendlier, but my point is, does it really? Since they implemented the new reduced fees, what we’ve actually unfortunately found is that the threshold of hijacking trade marks or IP generally, has gone down.”
“Historically, they would have had to pay a lot more in order to hijack IP. That threshold has gone right down and opened itself to more abuse in that respect.” On the surface, reducing trade mark fees makes IP accessible to everybody. Wong argues: “This does not necessarily mean that it is going to make SMEs lives any easier, especially the ones with foreign backgrounds. It has meant that they are more vulnerable to hijacking and fruitless claims than ever.”
What are most companies bound to overlook when entering the Chinese IP market? Several things, Wong says, but most commonly she says, many have not grasped “the fact that hijacking is actually a commoditised profession”. She adds: “You can get a full course on how to hijack people’s IP, you just pay and find out. I have always said to clients: If China is going to become important to you, it is worthwhile investing a little bit of money, for your own sanity, to make sure you’ve at least done the minimum.”
In spite of the culture of overtaking foreign brand owners’ rights, Wong is encouraged by the way that high profile infringement cases have been handled in recent times: “If you look at New Balance, Michael Jordan – those cases completely flip at the other side. Recently, in the Michael Jordan case, The Supreme People’s Court has accepted a retrial and the appeal by the China entity.”
“In many ways, there’s progress but it’s still an ongoing thing. It’s certain that the courts are much better than they used to be in dealing with these things. Everybody knows if you litigate and you’re willing to take it to the Supreme People’s Court, you get a good judgement.”
The best of both worlds
According to Wong, China is also making great strides in female empowerment: “If you look at decision-makers in a lot of law firms, the movers and shakers – there are actually a lot of women we aspire to and can see as role models in their own way.” In her role as partner, Wong relies on her abilities in people and client management. As a woman, Wong draws on her nurturing and empathetic nature to bring out the best in those around her, something she says is “part and parcel of being a partner”.
Like many professional women, Wong had to make several sacrifices. Now than ever, as an accomplished IP practitioner, Wong counts herself fortunate to be part of the profession: “Hats off to those before us for breaking that glass ceiling. If I look at my predecessors 10 years ago, they struggled a lot and they had to give up a lot of things; however at the same time, they had to deal with the question of what happens to women who are not willing to give up all of that.”
Today, Wong is a passionate advocate for living to the full. She encourages women to reconsider their chances of having successful careers, as well as healthy relationships and ample time to themselves: “I try to make them understand that actually, there’s no one way of doing it right. Our predecessors did it that way, but moving forward, the young generation coming through do not necessarily have to sacrifice time for loved ones and having a family life. Rather than just assuming – let’s discuss it and figure it out. Maybe there is a way to go about it so you can have the best of both worlds.”
“I have heard about someone going back to work three months after giving birth. I do not think that is the way to do it. I do not think that is the right way to propagate women leadership. Not everybody is able to do that and nobody should be asked to. This is something that the next generation needs to hear.”