Intellectual property: foreign firms in China

Baker McKenzie FenXun

Baker McKenzie FenXun's intellectual property (IP) team has a longstanding track record in advising well-known global brands on the management, protection and enforcement of their IP portfolios. Clients benefit from the practice's substantial PRC litigation capabilities, while the team also fields experts in life sciences, technology,  financial services, and consumer goods and retail, among others. In Shanghai, Clement Ngai's practice includes technology-related IP litigation involving patent and trade secret cases. Elsewhere, Andrew Sim is the consumer goods and retail lead in Beijing, where Honghuan Liu and James Ma are key IP litigation partners at FenXun Partners, which also houses Shanghai-based China patent head Binxin Li. In Hong Kong, Loke-Khoon Tan heads the Hong Kong and China IP technology group; Shih Yann Loo leads the cross-border litigation and enforcement IP group in Hong Kong and China; and Maria Smith heads the Hong Kong and regional brand protection and enforcement team.

Practice head(s):

Loke-Khoon Tan

Other key lawyers:

Clement Ngai; Andrew Sim; Honghuan Liu; James Ma; Binxin Li; Shih Yann Loo; Maria Smith; Isabella Liu; Ruby Chan; Paolo Sbuttoni; Aggie Liu

Testimonials

A very reactive and efficient team that gives very good legal advice, which takes into account the applicable law but also the client’s wishes and the company’s strategy.

Andrew Sim is a very efficient and reactive partner, who is always ready to assist clients in the best possible way and does not hesitate to redirect clients to the most competent people in his team when the issue does not fall within the scope of his specialties.

Key clients

Pernod-Ricard

Moet Hennesy

Caudalie

Diageo

Rémy Cointreau

Starbucks

Procter & Gamble

Louis Vuitton Malletier

International Fruit Genetics

Work highlights

  • Acted for Starbucks in a criminal action against six criminal suspects for manufacturing and selling counterfeit coffee products.
  • Acted for Pernod-Ricard in a criminal case, which concerned three individuals who sold counterfeit spirits in their jointly owned cigar and liquor store.
  • Advised International Fruit Genetics, a US-based fruit breeder, on protecting its proprietary grape varieties from IP theft in China.

Bird & Bird

Spread across the firm's Hong Kong, Beijing and Shanghai offices, Bird & Bird's Greater China IP group is highly active across the Asia Pacific region. Fielding specialists in both contentious and non-contentious IP law, the group has expertise in trade marks, patents, trade secrets, copyright and designs. It also has an enviable track record in providing strategic commercial IP advice, as well as acting in IP litigation. In addition, the practice stands out for its industry expertise, particularly in technology and innovation-driven sectors such as life sciences and healthcare. Shanghai-based Christine Yiu is highly rated for her handling of complex, high-value disputes that have cross-border elements. In Beijing, Rieko Michishita's practice includes patents, designs, trade secrets, copyright and trade marks, and managing associate Dorie Wong specialises in China IP protection strategies. Hong Kong-based Matthew Laight heads the firm's Asia Pacific IP group.

Practice head(s):

Matthew Laight

Testimonials

The pre-eminent team for international IP litigation matters, particularly patent-related Greater China issues.

Trusted advisers who consistently exceed expectations.

Matthew Laight is an outstanding patent litigator and strategist, who is talented in delivering business-focused solutions.

Christine Yiu is a delight to work with, and experienced in handling complex matters and assisting with her clients’ understanding of the Chinese legal system.

Key clients

Li & Fung

Shanghai Tang

Riot Games

Merck KGaA

Hong Kong Intellectual Property Department, HKSAR

Work highlights

  • Represented Merck in a major cross-border trade mark dispute.
  • Advised Riot Games on both trade mark portfolio management issues and protection of game characters and e-sports league properties.
  • Advised Shanghai Tang on a trade mark and designs portfolio.

DLA Piper

DLA Piper's broad China IP practice covers advisory, prosecution and enforcement work in relation to trade marks, copyright, patents and trade secrets. It also fields experts in IP litigation and administrative actions, IP-related commercial contracts, cybersecurity, data protection and privacy, IP-related technology transactions, and licensing and franchising. Clients additionally benefit from access to the firm's 450-plus dedicated IP lawyers across the globe. Beijing office managing partner Horace Lam, who has extensive experience in complex IP matters, co-heads the firm's Asia IP group alongside Edward Chatterton in Hong Kong, who is particularly focused on providing brand protection and enforcement advice. Over in Shanghai, William Fisher is highly regarded for patents, trade secrets, and international IP and technology-related transactions. Also on the mainland, non-contentious and contentious IP specialist Reking Chen was promoted to partner in May 2020; and senior associate-level support is provided by Ting Xiao, who is noted for patents, trade secrets and other technology-related matters.

Practice head(s):

Horace Lam; Edward Chatterton

Testimonials

Commercial, responsive and pragmatic advice that is valuable when navigating complicated concepts and different jurisdictions.

They are responsive, and their advice is clear and comprehensive.

Edward Chatterton offers valuable IP expertise in the region, co-ordinating different matters and local agents, while providing useful commercial advice and recommendations.

Key clients

McDonald’s Corporation

Five Guys Enterprises

Moet Hennessy

Manolo Blahnik International

Medtronic

Logitech

Pokerstars

Hypertherm

CTC Global

Work highlights

  • Providing McDonald’s with ongoing advice in relation to IP matters in Hong Kong, the PRC and Macau, including managing its IP and trade mark portfolio in Greater China.
  • Advising France’s Moet Hennessy on combatting the parallel importation of Moet and Hennessy products into China, Hong Kong and Vietnam.
  • Advised Five Guys on a range of IP and brand protection matters in Hong Kong, China and Macau.

Hogan Lovells International LLP

Hogan Lovells International LLP's mainland China offices field specialists in a range of non-contentious matters; clients also benefit from the dedicated litigation service at the firm's associated Shanghai-based local practice, Hogan Lovells Fidelity. Shanghai office managing partner Zhen (Katie) Feng is also a director of Hogan Lovells (Shanghai) Intellectual Property Agency Service Co, an IP service affiliate established by the firm. She advises a diverse range of clients on the formulation and implementation of IP enforcement strategies in China, through a combination of administrative, civil and criminal actions. Over in Beijing, Helen Xia focuses her practice on contentious and non-contentious IP work that involves trade marks, copyright, patents, unfair competition and IP licensing. Providing key support at counsel level are experienced advisers Grace Guo and Yu-An ChangEugene Low leads the IPMT practice in Hong Kong.

Other key lawyers:

Grace Guo; Yu-An Chang

Testimonials

Significant expertise in IP rights.

The team is experienced in working on a large number of cases.

Key clients

LEGO Group

Metro-Goldwyn-Mayer

WAWI Chocolate

Blizzard Entertainment

Nintendo Inc.

Ubisoft Entertainment

Work highlights

  • Represented LEGO in 22-plus IP lawsuits.
  • Acted for MGM in a high-profile trade mark infringement case.
  • Successfully represented WAWI Xiamen in a trade mark litigation case.

Jones Day

Jones Day's China IP practice is widely respected for its advice on IP transactions, China portfolio strategy and IP litigation. Clients particularly benefit from the firm's Beijing-based IP agency, which is licensed in China to handle a wide range of copyright, trade mark and other non-patent IP matters. Former co-chair of the IP subcommittee of the American Chamber of Commerce in Shanghai, Anthony Chen, acts on the protection of IP rights in China's patent office and courts; the mitigation of IP risks in China-related technology transactions; the management of patent and trade secret litigation overseas; and the creation of IP assets on a worldwide basis. Of counsel Guoping Da's work involves technologies, such as biotechnology, computer hardware and vehicle telematics, among others. Haifeng Huang is a key name in Hong Kong.

Rouse

Rouse is an 'extremely competent' consultancy firm that has been operating as a specialist IP practice in China since 1993. The team, which 'has excellent knowledge and experience', provides a complete range of IP services for multinational clients in China, including trade marks, patents and IP enforcement; in recent years, it has begun to act for Chinese multinationals on outbound IP issues. The firm's client base covers a broad range of sectors, from FMCG and luxury goods to pharmaceuticals, TMT and manufacturing. Shanghai-based principal general manager for China, Linda Chang, was one of the first trade mark agents to qualify under China's emerging IP regulatory system. Principals Hatty Cui and Amanda Yang are trade mark specialists in the Beijing office, where Joshua Mandell is the general manager. In Shanghai, principal Melanie Zhu is experienced in managing a wide variety of trade mark portfolios.

Practice head(s):

Linda Chang

Testimonials

‘Extremely competent, and with excellent knowledge and experience.

Rouse is a firm that not only delivers our requests and solves our problems, it also provides us with insights into the industry, legal system updates, and long term plans for the next generation.

Key clients

Harley Davidson

Electronic Arts Inc

Viacom

Target Brands

New Balance

Spin Master

Burberry

Universal City Studios LLC

Jellycat

Western Digital

Intel

Work highlights

  • Advised New Balance on an infringement matter.
  • Advised Harley Davidson on trade mark claims.
  • Advised McGraw Hill on the innovative use of administrative copyright enforcement tools.

Deacons

Deacons' broad capabilities include advising on all aspects of contentious and non-contentious IP in Hong Kong and China, as well as co-ordinating global instructions. The firm's full-service IP practice covers high-volume trade mark registrations in Hong Kong, while in Beijing it boasts its own trade mark agency, which allows direct access to the Chinese authorities. In addition to its experienced in-house patent team, it also has a significant track record in IP litigation. Annie Tsoi heads the China IP group; Catherine Zheng leads the patents and designs group; and Charmaine Koo heads the IP litigation and enforcement, commercial IP and entertainment and media practice groups. Benjamin Choi, who has approximately 20 years' experience in trade marks, was hired in 2019 as partner from Mayer Brown. All practitioners mentioned above are in Hong Kong.

Practice head(s):

Annie Tsoi; Charmaine Koo

Testimonials

Thorough knowledge of IP rights, quick responses and ability to understand clients’ needs.

Timely advice that is feasible to solve problems cost effectively.

They are very well prepared and able to give practical solutions, as well as being responsive and responsible.

What sets this practice apart from other firms is that the Deacons’ team comprises dedicated professionals who are keen to provide timely suggestions to address clients’ needs. They are willing to go beyond providing standard advice and play out different potential scenarios in the client’s interest. This makes us feel truly supported when facing business challenges.

Timely on responses and flexible on urgent matters, with comprehensive solutions for difficult trade mark matters in China, Hong Kong and Asia.

A high-quality service with a full understanding of our business, the team is able to provide tailor-made legal advice and strategy.

Annie Tsoi impresses with her dedication to the profession and Catherine Zheng’s team has significant capabilities.

Key clients

FWD Group

Kadoorie Estates

Lam Soon Group

Lan Kwai Fong Group

Movado

PCCW

Work highlights

  • Applying for a retrial before the Supreme Peoples’ Court of China, in relation to the decision of the Trade Mark Office to reject a trade mark.

Mayer Brown

Mayer Brown's large, Hong Kong-based Asia IP practice handles complex IP litigation, IP due diligence and IP transactions, along with data privacy, franchising and technology-related matters. The practice is particularly active in key sectors such as TMT,  financial services, construction, manufacturing, retail, luxury, real estate and hospitality. It handles a significant number of IP disputes, including company hijacking cases and complex IP litigation and arbitration, some of which involve insolvency issues with cross-border elements. Particularly known for the resolution of IP disputes, Gabriela Kennedy heads the practice in Asia and is global co-head of the firm's IP practice; and promoted to partner in 2020, Amita Haylock advises on various IP rights, including trade marks, copyright, designs and patents.

Practice head(s):

Gabriela Kennedy

Other key lawyers:

Amita Haylock; Karen Lee; Michelle Yee

Key clients

AIG

Adobe

Alibaba (and many of its subsidiaries)

Agoda Services Company Limited

AGTech

Alexandre de Paris International

Anhui Jinhe Industrial Co., Ltd. and Suzhou Hope Technology Co., Ltd.

Aristocrat Leisure

Asia Video Industry Association

Beijing Gingko Group

Cassia Investments

Cummins

Composers and Authors Society of Hong Kong

dormakaba Group

DTS, Inc (under Xperi Corporation)

Entertainment One

Fung Group

Guangdong Alison Hi-Tech Co., Ltd.

Hong Kong Jockey Club

Hang Seng Bank

Henderson Land

Jack Daniel’s

Lane Crawford

LVMH Fashion Group

Mandarin Oriental Hotel Group Limited

Man Wah Holdings

Nautilus

Nvidia Corporation

Ocean Park Corporation

PCCW Limited

Philips International B.V.

Procter & Gamble

RGE Group

Renault

San Miguel Brewing International Limited

Sino Group

South China Morning Post Publishers Limited

StubHub Inc

Swire Group

Sun Hung Kai Properties

Television Broadcasts Limited

The Bank of New York Mellon

The Mentholatum Company

The Robinson Group Limited (Kim Robinson)

WTT

Wynn Resorts

Zurich Insurance

Work highlights

  • Acted for Groupe Renault on a number of IP issues, following an Asia-wide audit of its existing trade mark portfolio.
  • Advising RGE on IP matters, including the implementation of strategies in relation to thousands of trade marks, numerous patents and design rights, and domain names.
  • Advising a German sportswear company on trade mark matters, including enforcement, litigation and licensing issues.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP's core focus is on China-US cross-border patent and trade mark infringement litigation, trade secrets misappropriation and industrial espionage. In Beijing, Xiang Wang and Shelley Zhang jointly lead the practice, alongside Shanghai-based Yufeng (Ethan) Ma. Wang assists local and foreign-based multinational companies with all aspects of their IP rights in China, Hong Kong and the US; his cases involve a vast array of technologies, from software and electronics to renewable energy and medical devices. Zhang has extensive experience in patent enforcement litigation, patent invalidation proceedings, trade secret enforcement efforts, anti-counterfeiting and anti-piracy matters; while Ma stands out for IP litigation before the US International Trade Commission and US federal courts.

Testimonials

The IP team has senior patent attorneys with the relevant technical backgrounds.

Even with such a busy work schedule, Xiang Wang is able to answer enquiries and report on the progress of a case, as well as explain the legal culture of the common law system to clients.

Yufeng (Ethan) Ma deeply impresses.

Key clients

Baidu

Sina Corporation

Shanghai Sansi Electronic Engineering Co.

Beijing Xiaomi Technology Corporation

Tencent Technology

Semiconductor Manufacturing International Corporation

Micron

Tongfang Group

Hisense

Schlumberger

Coolpad Technologies

Vivo Mobile Communication

BBK Communication Technology

Anker Innovations

Yaham Optoelectronics Co.

Zhejiang Rongpeng Air Tools Co., Ltd. (dba Aeropro)

OnePlus Technology (Shenzhen) Co., Ltd

Work highlights

  • Successfully defended China Synergy Manufacturing Group against Oakley in a trade mark infringement case, which was filed in the US District Court for the Northern District of Illinois (Eastern Division).
  • Successfully defended Zhejiang Rongpeng Air Tools against a trade mark infringement case.
  • Defended Vivo Mobile Communication Co and BBK Communication Technology Co against an investigation concerning certain semiconductor devices, integrated circuits and consumer products.

Simmons & Simmons

Simmons & Simmons is consistently involved in leading IP cases and transactions across Asia, Europe, and the Middle East; it also has a robust trade mark practice. The firm's substantial client base of high-profile brands particularly appreciates the team's sector focus on the financial markets, retail, TMT, and pharmaceuticals. In Beijing, George Chan's practice ranges from preparing trade mark registrations, oppositions, cancellations and invalidations to developing licensing strategies for clients. Providing further mainland China support at non-partner level are trade mark experts Julie LuoMonica Fang and Luna Lu. Based in the London and Hong Kong offices, John Slater has longstanding experience in practising IP law in Greater China.

Practice head(s):

George Chan; John Slater

Other key lawyers:

Julie Luo; Monica Fang; Luna Lu

Testimonials

Concise, commercially focused legal advice that is received when requested, without long ramblings about the applicable legal statutes.

An exceptional service in a market that is not always known for its responsiveness, and great for ease of communication and availability.

A friendly and approachable team that has local market knowledge, which is easily understood on a first reading.

George Chan and his team do not disappoint, providing great results in a number of disputes. George has local market knowledge and is highly approachable.

George Chan is always available for a call, very creative in finding solutions, and helps our clients understand the nature of the differences between Chinese and North American laws. He is a great resource for our clients, which is why we always turn to him for any issues that arise in China.

Key clients

Cathay Pacific Airways

Hong Kong Dragon Airlines

YGM (AQUASCUTUM)

Maus Frères International Services

Infor

New Zealand Trade and Enterprise

SIPS – Simone Intellectual Property Services

SIPS – Simone Intellectual Property Services has longstanding experience in China IP, as well as standout knowledge of China's political and legal systems. Clients additionally benefit from the firm's wholly owned PRC IP agency, SIPS (Shanghai), while the Beijing office is authorised to file applications in relation to trade marks, copyright and customs recordal, as well as infringement complaints with China's relevant authorities. Managing partner Dan Plane, Joe Simone and Helen Tang lead the practice from Hong Kong which saw the arrival of Chris Smith who joined from Baker McKenzie , while Shanghai's Joshua Miller, who is experienced in representing several famous brands, is a recently promoted partner. In Beijing, senior consultant Courtney Macintosh, who has practised China IP law for approximately 10 years, was recruited in 2019 from Baker McKenzie FenXun.

Practice head(s):

Dan Plane; Joe Simone; Helen Tang

Other key lawyers:

Joshua Miller; Courtney Macintosh

Testimonials

Great for expertise and practical business advice.

The team’s key strengths are having both Chinese language and English language lawyers, and understanding IP law in China as well as IP law in Australia, so it is able to provide a very accessible portal for us into China.

Dan Plane is extremely easy to work with and knows the law well, but he is also very commercial. He gives fixed fees for set pieces of work and he is responsive to my needs.

Helen Tang is great for co-ordinating matters between Hong Kong and mainland China.

AWA Asia

AWA Asia's full-service practice acts in relation to IP-related prosecutions, litigation, aftermarket services, strategy and commercialisation; and it fields IP experts in patents, trade marks, design, copyright and domain names. The firm's head office is in Hong Kong, while the Beijing office is also a licensed trademark agency, which facilitates the filing and enforcement of trade marks before the China Trademark Office and administrative authorities. Leading the firm's Asia offices as CEO, Ai-Leen Lim divides her time between the Beijing and Hong Kong offices, while Xiaofan Chen and Ashley Zhao are the Beijing names to note.

Practice head(s):

Ai-Leen Lim

Other key lawyers:

Xiaofan Chen; Ashley Zhao

Testimonials

AWA Asia’s biggest strength, in my experience, is its ability to get to the heart of any problem quickly and accurately. The team provides helpful and creative advice that is based on solid legal principles rather than just a treatise on the law, which does not help clients decide what action to take. In other words, they highlight the path that is most likely to succeed for the least cost.

Clients really appreciate the thoughtful and sound advice that is based on what is best for that particular client.

They make me look good by avoiding extra back and forth with the client by raising all relevant issues at the front end, as well as pointing out potential short cuts that will fix the client’s trade mark problem faster and for less cost. In my book, this service is absolutely invaluable.

AWA is the only team in China that I have dealt with that is truly responsive, and that provides advice that is completely commercially focused. The quality of its technical advice is superb, but more importantly, the team really takes the time to understand the commercial goals of clients and provide great strategic input.

Ai-Leen Lim and Ashley Zhao are super-responsive and highly professional. They always go above and beyond what I ask for, and will raise relevant points that I may not have thought about or knew were options. I really love that!

Work highlights

  • Advising one of Asia’s leading ride-sharing corporations on both its over-arching intellectual asset management strategy and managing its China patent portfolio, including filing and prosecution matters.
  • Advised on the IP aspects of licence agreements for an artificial intelligence software company and its joint venture in China.
  • Advising a non-dairy alternative milk producer on its brand protection strategy and trade mark portfolio management, as well as its market entry and expansion throughout Asia, including China and Hong Kong.

Clifford Chance LLP

Clifford Chance LLP acts on the full suite of IP matters, including complex IP aspects of business-critical projects, technology adoption, transactions and disputes, through to advisory and day-to-day support. PRC-related IP specialist Lei Shi has extensive experience in resolving IP-related disputes before the courts. He also acts in initiating and defending administrative investigations into IP-related matters. Counsel-level support is provided by Yi Yang, who advises multinational clients from the pharmaceuticals, healthcare, consumer goods and manufacturing industries. The Asia IP group is led by Ling Ho in Hong Kong, who combines IP technology arbitration and litigation specialisms with extensive expertise in complex transactions.

Practice head(s):

Ling Ho

Other key lawyers:

Lei Shi; Yi Yang

Work highlights

  • Managing the brand portfolio for a car manufacturer, including successfully overcoming pre-emptive registrations and dealing with infringers.
  • Advised a Hong Kong property and infrastructure conglomerate on its trade mark portfolio in Hong Kong and China.
  • Acted for a Chinese fintech company in a potential dispute, which arose out of a data sharing and licensing agreement that concerned exclusive use, allowed exceptions and territorial scope.

Clyde & Co LLP

Clyde & Co LLP provides the full range of China IP services, including patent and trade mark prosecutions, as well as enforcement and litigation matters.  Consistently advising international and European-origin companies on China and Asia Pacific IP strategies, Shanghai and Beijing-based senior partner Elliot Papageorgiou heads the Greater China IP practice. Clients additionally benefit from the firm's fully licensed PRC law capabilities, as a result of its joint law venture with Westlink Partnership, where Molly Zhuang heads the enforcement practice, Leo Tang leads the patent group, and Yan Gong is trade mark head.

Practice head(s):

Elliot Papageorgiou

Other key lawyers:

Molly Zhuang; Leo Tang; Yan Gong; Li Weng

Testimonials

The team is highly knowledgeable about IP issues in China, particularly patent and trade mark issues; we feel confident when working with this team on filings to obtain IP rights, but also in order to solve disputes such as infringement or invalidation issues.

They work as a team, with integrity, which is quite different from other law firms or IP practices – the practice is able to demonstrate its efficiency, accuracy and professional services.

They have a communication system within the team that makes it convenient for us as clients; we do not need to repeat any instruction given to any of their team members. As we are a multinational corporation with colleagues all over the world, it is important that an instruction given is received properly without the need to repeat it. On top of this, they are prompt in their replies and deliver clear information.

Great collaboration between team members, who are very communicative with clients – I have not yet seen that in China elsewhere – and for this, I credit Elliot Papageorgiou.

Elliot Papageorgiou has a holistic understanding of the procedures and nuances surrounding IP acquisitions and protection in China.

Elliot Papageorgiou is a highly experienced adviser and litigator for IP-related issues in China – he regularly visits his clients and provides them with highly relevant information, in particular regarding new developments in the IP landscape and legislation in China.

The outstanding Yan Gong and Elliot Papageorgiou are great. Both provide useful and complete advice on contentious and non-contentious matters in a timely manner.

Yan Gong has been pivotal in our decision to engage them. She is not only experienced and professional in her approach, but also ethical. Due to her strong experience, we value her opinion very much; and so far, her views have proven correct.

CMS

CMS' sector-focused hub in Beijing is led by Nick Beckett, who heads the firm's IP Asia Pacific group and is global co-head of the life sciences and healthcare sector group. Dividing his time between the Hong Kong and Beijing offices, Beckett's experience includes acting for a European automotive manufacturer on IP licensing and portfolio protection matters. The practice is further strengthened by the firm's technology and innovation centre, which provides specific scientific and technical assistance on patent analysis, freedom to operate and validity searches. Fan Wu is the associate to note in Beijing.

Practice head(s):

Nick Beckett

Other key lawyers:

Nicolas Zhu; Fan Wu

Testimonials

The firm showed deep knowledge of the applicable law and significant practical experience; the solutions proposed aimed to protect our client’s IP rights effectively and were business- and solution-oriented. Furthermore, the team provided us with quick replies to all our questions, while always following-up on the development of cases.

Nick Beckett responded quickly to our requests and outlined in a clear manner all the possible actions that could be taken, along with their advantages and disadvantages, allowing us to provide the appropriate advice to our client.

Nick Beckett takes a thorough and efficient approach to the matters at hand, and provides quick feedback in response to any supplementary queries.

Key clients

Takeda Pharmaceutical Company Limited

Dentsu Aegis Network

Unilever

Elmos Semiconductor AG

UCL

Eli Lilly

DuPont

Atos

The Wellcome Trust

A + E Networks

Work highlights

  • Matter summary

K&L Gates

K&L Gates' IP practice in Greater China is experienced in patent prosecution, portfolio development and advisory matters in the US, Asia, Australia, and Europe. The IP litigation team excels in protecting emerging communications technologies, novel drug therapies, iconic brands, trade secrets, copyright, and other proprietary information; and regularly acts in patent infringement disputes before the US' Federal Circuit. The firm's trade mark practice assists large clients with the inventorying, revitalisation and rehabilitation of worldwide trade mark portfolios. In Beijing, Yujing Shu's broad practice covers IP matters, while Greater China and US-based Jay Chiu is a US-qualified IP litigator.

Practice head(s):

Jay Chiu

Other key lawyers:

Yujing Shu

Testimonials

The advantage of KLG’s team in China is that it allows a multinational company to receive a complete service. In today’s market, this advantage is very valuable.

The team develops and implements comprehensive and effective IP protection strategies for multinational companies.

Key clients

Advantech Corporation

Ampro Adlink Technology, Inc.

Ching Feng Home Fashions

Darfon Electronics Corp

Getac Inc. and Getac Technology Corporation

Hon Hai Precision Industry (Foxconn)

IPEVO

SIMO Holdings, Inc. / Skyroam, Inc.

Quanta Computer, Inc.

Winmate Altair Logix

ZTE

Work highlights

  • Acted for plaintiff, Skyroam, and its holding company (SIMO Holdings) in an IP-related lawsuit against Hong Kong uCloudlink Network Technology (and its affiliate in the US).
  • Defending an investigation before the United States International Trade Commission.
  • Defended ZTE against patent litigation.

Ropes & Gray LLP

Ropes & Gray LLP is a go-to firm for life sciences-related IP matters in China. The team handles a wide range of transactional IP mandates, including the commercialisation of life sciences assets; it is also increasingly active in relation to technology, e-commerce and fintech. On the ground for over 15 years, Shanghai-based Geoffrey Lin consistently acts for high-profile clients from the life sciences, private equity and technology sectors; and David Chen is an experienced IP transactions and data privacy counsel.

Practice head(s):

Geoffrey Lin

Other key lawyers:

David Chen

Key clients

Everest Medicines

Eli Lilly

Zai Lab

Innovent Biologics

Alibaba

Viela Bio

Work highlights

  • Advised Everest Medicines on licensing matters.
  • Advised Eli Lilly on the sale of rights to two antibiotic drugs.
  • Advised Zai Lab on licensing issues.

Covington & Burling LLP

Covington & Burling LLP's Beijing based Ruixue Ran is a widely respected IP litigation specialist; her practice involves patents, trade secrets, trade marks, and other types of unfair competition. A key partner in the firm's Shanghai and Beijing offices, Jason Goldberg is chair of the firm’s entertainment, sports, and media practice in China.

Other key lawyers:

Ruixue Ran; Jason Goldberg

Morrison & Foerster LLP

Morrison & Foerster LLP's IP practice spans prosecution, litigation, and licensing matters; and it fields sector specialists in pharmaceuticals, biologics, diagnostics, personalised medicine, medical devices, medicinal chemicals and vaccines. Chuan Sun, who divides his time between Shanghai and Hong Kong, advises on complex IP transactions. Gordon Milner heads the firm's Asia technology practice from Hong Kong.

Practice head(s):

Gordon Milner; Chuan Sun

Key clients

Jiangsu Hengrui Medicine Co., Ltd.

Roblox

Alibaba

Everest Medicines Limited

Everest Medicines II

Triastek, Inc.

Henlius

The Dairy Farm Group

Work highlights

  • Advised Roblox on its joint venture with Tencent, in relation to operating the Roblox platform in China.
  • Advised Jiangsu Hengrui Medicine Co on its $165m exclusive license agreement with Novaliq.
  • Advised Alibaba Group Holding on Alibaba’s acquisition of a 33% equity interest in Ant Financial, which included the negotiating of IP agreements.

Norton Rose Fulbright

Norton Rose Fulbright's Hong Kong and China IP team advises companies across Asia (and globally) on the registration of patents, trade marks and designs, IP exploitation, correct usage and enforcement. It also provides commercial IP advice in relation to M&A, public offerings, restructurings, insolvency proceedings and competition law. Hong Kong-based Justin Davidson is an experienced IP specialist.

Practice head(s):

Justin Davidson

Other key lawyers:

Phoebe Poon

Key clients

Logos Ltd.

BNP Paribas

GSK

Curozone Ireland Limited

Fluidic Inc.

Key Bioscience AG

Tillotts Pharma AG

Hudson Institute of Medical Research

Jacobson Pharma Corporation

BioSurgical S.L.

EON Surgical Ltd.

Teleflex Medical Incorporated

Starpharma Pty Ltd.

Crown Worldwide Holdings Ltd.

GlaxoSmithKline

ASTRI

City University of Hong Kong

Work highlights

  • Advised GSK on trade mark prosecution issues, including the management of its trade mark portfolio and renewals in Hong Kong and Macau.
  • Advised ASTRI on its technology licensing deals.
  • Appointed as global managers of BNP Paribas trade mark portfolio.

Perkins Coie LLP

Acting for both foreign companies in China, as well as Chinese clients in the US, Perkins Coie LLP's Beijing-based partner Scott Palmer is experienced in IP registrations, maintenance issues, licensing, enforcement and litigation. As part of his IP practice, Palmer manages anti-counterfeiting and anti-piracy programmes for large and small companies.

Other key lawyers:

Scott Palmer

Sheppard, Mullin, Richter & Hampton LLP

Sheppard, Mullin, Richter & Hampton LLP's mainland China practice has significant experience in the preparation and prosecution of US and foreign patent applications. It also has extensive IP transactions and licensing experience. Shanghai-based partner Harris Gao is a registered US patent attorney, with a notable track record in international IP litigation and technology transactions.

Practice head(s):

Harris Gao

Other key lawyers:

Michael Zhang

Key clients

TCL

Hong Kong uCloudlink Network Limited

Changxin Memory Technology Inc.

Shanghai Henlius Biotech. Co.

I-Mab Biopharma

ShanghaiTech University

SunShine Lake Pharma

Bio-thera Solutions, Ltd.

Work highlights

  • Advised TCL on patent and fair, reasonable and non-discriminatory (FRAND) licensing issues.
  • Represened Changxin in prosecuting a large number of patent applications.
  • Advised Henlius on over ten licensing deals.

Stephenson Harwood

Stephenson Harwood's Hong Kong-based IP team is headed up by seasoned litigator Jezamine Fewins. Its client base covers the TMT, retail and luxury goods, hotel and leisure, life sciences, construction, and food and beverage sectors. The firm closed its Beijing office in 2020, while former partner Jonathan Chu left for CMS' Hong Kong office in late 2019.

Practice head(s):

Jezamine Fewins

Testimonials

Very practical advice – the team at SH does not sit on the fence and is dynamic in its handling of work. The practitioners are responsive, aware of cost sensitivities and give advice in easy-to-understand language.

Jezamine Fewins is commercially savvy and understands the China market, as well as what we need in order to protect our business while not incurring a large legal bill. She is efficient and lets her team deal with the straightforward aspects, but is always on call should we need reassurance on technical issues.

Key clients

Eu Yan Sang International Limited

Asia Standard Management Services Limited

Allianz Se

GSK

Bonhams 1793 Limited

Jette Joop

China Kweichow Moutai Distillery (Group)

S E A Holdings Limited

Coindu , Componentes Para A Industria Automovels S.A.

Utmost Worldwide Limited (Hong Kong Branch)

Slide & Hide Systems Pte Ltd

Peter Stupp Design Mode GmbH

Work highlights

  • Successfully defended trade mark opposition proceedings, which were issued by China Oceanwide.
  • Acting for Allianz in trade mark infringement and passing off proceedings against a Hong Kong entity that was using its English and Chinese trade marks.
  • Assisting with both the registration of a trade mark in China and a dispute with a distributor, which sought to register the client’s name for its own benefit.