Internal-external co-operation in protecting IP rights

In protecting the intellectual property rights (IPR) of enterprises in China, effective co-operation between enterprises and their in-house counsel and external lawyers is among the important factors having a bearing on the ultimate effectiveness of IPR protection, in addition to overall strategies, implementation schemes and specific actions.

Even for those enterprises with robust internal IPR systems, co-operation with external lawyers is still indispensable. Some hold the misconception that external lawyers are not necessary for enterprises that have strong in-house teams. However, in practice, it is exactly the enterprises with professional support from internal IPR departments that have targeted needs for external lawyers, and that can more easily reach consensus with external lawyers during communication.

Legal demands of IPR services vary among enterprises, but in practice the majority can be classified into the following four circumstances: (1) an enterprise has a sound internal IPR system and a strong in-house legal or IPR team, and turns to external lawyers only sporadically; (2) an enterprise entrusts external lawyers with overall management of its domestic IPR protection activities, from the formulation of strategies to the implementation of specific actions; (3) an enterprise maintains a separate IPR position internally and goes to external lawyers for certain types of IPR matters; and (4) an enterprise has no full-time IPR position and engages external lawyers for IPR cases that arise only occasionally.

Frank Liu is a partner at Tiantai Law Firm

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