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Nixon Peabody CWL

5TH FLOOR, STANDARD CHARTERED BANK BUILDING, 4-4A DES VOEUX ROAD CENTRAL, HONG KONG
Tel:
Work +852 2521 0880
Email:
Web:
www.nixonpeabodycwl.com

Henry Wheare

Tel:
Work +852 2171 6450
Email:
Web:
www.nixonpeabody.com/en/team/wheare-henry
Nixon Peabody LLP

Work Department

Intellectual property; patent; trademarks & copyrights; Fashion; China services

Position

Partner

Career

Mr Henry Wheare, a highly experienced and respected solicitor with a practice spanning decades in the field of intellectual property enforcement and rights management, is a partner in Nixon Peabody CWL in Hong Kong. He represents global clients in Hong Kong, mainland China and elsewhere in Asia. He also has a particular interest in the intersection of antitrust and competition law with intellectual property law.

What do you focus on?

1) Intellectual Property

I focus on IP dispute resolution in cases involving patents, trademarks, copyright, designs and confidential information, with an emphasis on cross-border solutions using both civil remedies and work with anti-counterfeiting enforcement agencies spanning Greater China and other jurisdictions. I also engage appropriately in alternative dispute resolution for compromising, mediating and arbitrating IP disputes.

I also have hands-on experience in structuring and negotiating transactional IP matters such as licenses, technology transfers, regulatory issues and other legal challenges associated with new technologies. I have broad ranging interests in the life sciences, technology, media, communications, fashion, music and entertainment industries.

2) Competition Law

I advise on legal aspects of anti-competitive conduct and compliance, especially where there is an overlap with intellectual property (i.e., in relation to patent licensing), and work with both professional and industry associations to promote awareness in these sectors.

What do you see on the horizon?

Hong Kong will become even more central to the development and advancement of intellectual property in the region, with significant reforms due to come into force in the near future.

Representative experience

Hong Kong Court of Final Appeal on interpretation of infringement provisions of Trade Marks Ordinance and the scope of dilution claims in passing off.

Hong Kong Court of Final Appeal on the extra-territorial scope of delivery up orders.

Patent and regulatory advice in relation to originator and generic drugs.

Patent dispute involving Hong Kong and mainland China cross-border strategy.

Cross border seizure and asset freezing orders in support of anti-counterfeiting strategy.

Representing U.S. pharmaceutical company in patent infringement and regulatory disputes for a range of pharmaceutical products.

Acting in a multi-jurisdictional copyright claim involving functional works.

Handling successful mediation of copyright claim against a leading U.S. sportswear company.

Affiliation

Henry is a member of the Hong Kong Institute of Patent Practitioners and Hong Kong Institute of Trade Mark Practitioners. He is the Honorary Secretary and Treasurer of the Hong Kong Group of the Asian Patent Attorneys Association. He is also a member of the Law Society of Hong Kong’s Committee on Competition Law and Honorary Legal Adviser to the Hong Kong Association of Pharmaceutical Industries.

He served from 2009-2012 at the Polytechnic University of Hong Kong as an Adjunct Professor Competition and Intellectual Property Law.

Languages

English 

Member

Solicitor of High Court of Hong Kong

Solicitor of the Supreme Court of England & Wales (non-practising)

Education

University of Cambridge, Jesus College, M.A.


Hong Kong

Intellectual property

Within: Leading individuals

Henry Wheare - Nixon Peabody CWL

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