Intellectual property: foreign firms in China

Active in IP matters for over two decades, Bird & Bird‘s China IP group works across Hong Kong, Beijing and Shanghai and while its client base includes global brand names, the practice is committed to assisting small and medium businesses protect their IP. It also has enviable industry expertise, particularly in innovation-driven sectors such as life sciences and healthcare. Clients additionally benefit from the firm’s IP consultancy in Beijing, through which trade mark and copyright matters are addressed directly before China authorities. Christine Yiu  co-heads the China IP group alongside Hank Leung in Hong Kong. Contentious and non-contentious IP specialist Rieko Michishita, works closely with Japanese clients while counsel Dorie Wong is a brand protection and disputes expert. Matthew Laight heads the Asia Pacific IP group from Hong Kong.

DLA Piper‘s Greater China IP practice fields four partners, who are supported by a dedicated IP team of 15 fee-earners with Asia-specific expertise. The comprehensive practice covers trade marks, copyright, patents, trade secrets, and IP litigation and administrative actions. Other notable areas include the IP aspects of commercial contracts and technology transactions, cybersecurity, data protection, and licensing and franchising. The Asia IP practice co-heads are Beijing-based Horace Lam, who assists Fortune 500 companies with developing and executing IP strategies; and Hong Kong IP team head Edward Chatterton, who focuses on brand protection and enforcement advice. Shanghai-based William (Skip) Fisher is ‘very dedicated to his clients‘, and the IP practice of counsel Ting Xiao focuses on the life sciences industry. In Beijing, hospitality and leisure sector specialist Reking Chen was made partner in 2020, while Allen Xu and Asher Yan are experienced IP-focused senior consultants.

Hogan Lovells International LLP's China team routinely establishes precedents in the Greater China IP field. The practice particularly stands out for its international reach, as it regularly collaborates with its network’s global team of over 400 IP professionals and it can facilitate  domestic litigation expertise via associated Shanghai-based practice, Fujian Fidelity Law Firm. Promoted to Asia IP head in January 2021,  Beijing-based Helen Xia brings extensive experience in IP litigation, portfolio management, commercial licensing, and obtaining and enforcing IP rights and Shanghai’s Zhen (Katie) Feng is an IP litigation and brand protection expert. Also integral to the mainland China practice at counsel level are Grace Guo, whose IP practice covers trade marks, copyright, domain names, designs, patents and trade secrets and Yu-An Chang, who is experienced in the protection and commercialisation of IP assets in China and globally. Eugene Low heads the Hong Kong IPMT practice.

Regularly retained by global companies on significant IP matters, Jones Day‘s China IP practice primarily focuses on assisting multinational companies with their disputes, IP transactions and China portfolio strategy, as well as acting for Chinese companies in overseas litigation. The team has notable experience in handling high-stakes matters involving computer technology, software, telecoms, and consumer electronics, in addition to assisting leading pharmaceutical and biotech companies with complex disputes and licensing matters. Clients additionally benefit from the firm’s fully licensed, domestic IP agency in China. The key mainland China practitioners are Anthony Chen, a former co-chair of the IP subcommittee of the American Chamber of Commerce in Shanghai and Guoping Da, who was made partner in January 2021, and acts in IP enforcement and infringement actions in the US and China. In Hong Kong, Haifeng Huang is an experienced IP litigator.

In addition to its enviable track record in China-related IP litigation, Deacons‘ Hong Kong-based practice handles large IP trade mark portfolios and complex prosecution matters. The firm also fields an in-house patent prosecution team and many of its team members have science or technology backgrounds from Europe, the US, Canada or China. The principal figures are China IP leader Annie Tsoi, who advises on the protection, enforcement and commercial exploitation of China-related IP rights; Charmaine Koo, the leader of the IP litigation and enforcement, commercial IP, and entertainment and media practice groups; head of the patents and designs group, Catherine Zheng, who acts before all levels of administrative bodies and China courts; and Dora Si, who ‘gives advice that balances legal and commercial considerations‘. Former partner Benjamin Choi joined OLN IP Services in 2020.

Mayer Brown‘s Hong Kong-based IP practice is an active player in diverse sectors ranging from financial services, and construction to retail and TMT. In addition to its IP disputes credentials, the group has developed a sophisticated copyright licensing and franchising practice. Other areas of strength cover strategic IP reviews and audits, portfolio management, domain names, and trade mark advisory and enforcement work. Leading the IP team, Gabriela Kennedy is a member of the HKIAC panel of arbitrators for IP disputes and she handles the full spectrum of IP work, from litigation to licensing. Promoted to partner in 2020, Amita Haylock‘s track record includes a number of copyright and patent infringement proceedings involving software and electronics. Recently elevated to counsel, Michelle Yee predominantly handles non-contentious IP matters.

Orrick, Herrington & Sutcliffe LLP‘s integrated practice in China covers the full breadth of IP, including patents, trade marks and trade secrets. The firm fields an especially large China-based team of patent attorneys in possession of engineering or science degrees and the majority of its contentious IP matters involve major technology-related disputes. The practice also has a strong track record in China-US IP litigation, with a core focus on cross-border patent and trade mark infringement litigation, trade secret misappropriation and industrial espionage. Heading the firm’s China IP practice, Xiang Wang advises on IP rights in China and the US from Beijing, where Shelley Zhang is a key IP group partner. In Shanghai, Yufeng (Ethan) Ma regularly assists with IP litigation before the US International Trade Commission and the US federal courts.

Established in 2012, Hong Kong-headquartered  SIPS – Simone Intellectual Property Services also has offices in Beijing and Shanghai, operating under the name of its fully licensed trade mark agency, SIPS (Shanghai). Specialising in the protection of all types of IP in Greater China, the group assists clients of varying sizes with managing their IP portfolios, including the registration, enforcement and licensing of trade marks, patents, and copyrights. In Hong Kong, managing partner Dan Plane specialises in trade mark prosecution, anti-counterfeiting and the enforcement of IP rights; founding partner Joe Simone has been working in the IP field in Greater China since 1988; and Helen Tang heads the Hong Kong and regional practice. The key mainland figure is Shanghai-based trade mark prosecution and enforcement expert Joshua Miller, who was made partner in 2020; and in January 2021, Christopher Smith joined the firm from Baker McKenzie, where he helped develop its Beijing IP practice.

With over 40 years’ on-the-ground experience in Greater China, Clifford Chance LLP‘s broad IP practice is an integral part of its offering. Led by Hong Kong-based IP specialist, Ling Ho, the Greater China and Asia-Pacific IP group assists with the full suite of contentious and non-contentious IP matters, from the complex IP aspects of business-critical projects, transactions and disputes. In Shanghai, Lei Shi has impressive credentials in IP litigation in both the Hong Kong and China courts. Corporate counsel Yi Yang is experienced in advising multinational clients from the pharmaceutical/healthcare, consumer goods and manufacturing industries on IP aspects of transactions.

K&L Gates‘ Greater China IP practice is sought out by innovative organisations in relation to patent prosecution, portfolio development and advisory work, along with patent infringement issues. In January 2021, the practice enhanced its China and global capabilities by launching a Chinese trade mark agency, which files and prosecute trade mark applications directly with the Chinese National Intellectual Property Administration. Working across the Hong Kong and Beijing offices, Jay Chiu is an experienced, US-qualified IP litigator; and  Edward Yao is a key IP counsel in Beijing. In Hong Kong, Winnie Chan focuses on trade marks, copyright, designs, patents and domain names.

Morrison Foerster‘s experienced IP practice spans work ranging from prosecution to litigation and includes commercialisation of IP assets such as licensing. Many of the practitioners have PhDs in scientific disciplines; the team is particularly focused on sciences in the areas of biologics, diagnostics, medical devices and vaccines. The key advisers are Shanghai-based Chuan Sun, whose track record includes complex IP matters across Greater China; and Hong Kong’s Asia technology head Gordon Milner, whose broad practice includes IP work.

Advising companies across Asia and globally, Norton Rose Fulbright‘s Hong Kong-based China IP team assists with the registration of patents, trade marks and designs, licensing and enforcement matters. The group also provides IP-related advice on corporate and M&A transactions. Based in Hong Kong, Justin Davidson regularly assists with protecting and exploiting IP portfolios, and is becoming increasingly active in China-related patent litigation.

Stephenson Harwood‘s Hong Kong-based IP team serves an impressive client base across the TMT, retail, hotels, life sciences, construction, and food and beverage sectors; and it regularly works alongside the firm’s other offices, including the London IP group. In 2020, the firm shut its Beijing office and Jezamine Fewins left the firm in January 2022 to join Lewis Silkin.