Intellectual property: foreign firms in China

Baker McKenzie FenXun

Baker McKenzie FenXun has a strong expertise in all aspects of portfolio management, technology transfer and licensing transaction, and has the capabilities to assist with IP audits, patent validity issues and infringement litigation. Honghuan Liu spearheads the team's contentious practice from the Beijing office while Clement Ngai focuses on regulatory and transaction issues in the pharmaceutical and technology sectors from the Shanghai office. Maria Smith leads the Hong Kong and regional brand protection and enforcement team and is also a name to note alongside the Beijing-based Andrew Sim whose practice includes domain name, Internet and new technology laws.

Practice head(s):

Loke-Khoon Tan

Other key lawyers:

Honghuan Liu; Clement Ngai; Maria Smmith; Andrew Sim

Key clients

AIA Company Limited

Louis Vuitton Malletier

Work highlights

  • Advising AIA on the protection of a tagline to be used in connection with its latest product launch in relation to health and wellness services in 18 jurisdictions, specifically relating to the clearance and advise on infringement risk analysis and applying to register the tagline.
  • Advised and successfully obtained a well-known mark status for the Chinese name of Givenchy.

Bird & Bird

Bird & Bird's intellectual property offering in China is spread across its Beijing, Shanghai and Hong Kong offices and operates under the leadership of Hong Kong-based Matthew Laight. The group has strong capabilities with respects to both advisory mandates and contentious matters. Christine Yiu is a litigation expert who sits in the Shanghai office, while in Beijing Rieko Michishita is particularly well-known for her advice to Japanese clients doing business in China and Hong Kong. Also notable are Hank Leung  who is based in Hong Kong and was recently made partner, and Beijing-based managing associate Dorie Wong who specialises in cross-border protection strategies.

Practice head(s):

Matthew Laight

Other key lawyers:

Christine Yiu; Rieko Michishita; Hank Leung; Dorie Wong

Testimonials

‘Christine Yiu’s experience of working in the UK coupled with the fact that she is a Chinese national with a deep understanding of the Chinese legal system makes her well placed to advise Western clients’.

‘The Bird & Bird IP team is extremely responsive to all inquiries. It provides the most accurate, insightful, and business-focused solutions’.

‘Hank Leung is the most relaxed yet reliable professional in the intellectual property field. He provides extremely timely support and is able to guide clients through their cross-border IP strategies according to their respective business needs. He is the “go-to-person” if clients ever feel unsure about any trade marks issue. Any organisation would be lucky to have him’.

Key clients

Li & Fung

Takeda

Heinz Food

Rotork

Vans

Helen of Troy

Merck KGaA

Kempinski

Riot Games

Monster Energy

Work highlights

  • Advises Li & Fung and a large number of its subsidiaries in the retail and consumer sector on IP protection strategies in Hong Kong, PRC and Macau.
  • Advising Imperial Pacific International Holdings Ltd. on the strategic trade mark portfolio management of its brands across Asia and the US.
  • Advised and acted for Oaktree on a rare appeal to the PRC courts from a .cc domain name dispute.
  • Continues to manage and handle Helen of Troy’s trade mark, design and patent applications and registrations in Hong Kong and China, and defending its design and patent registrations against invalidation actions in China.
  • Representing Merck in Hong Kong and China as plaintiff in proceedings against members of the Merck Sharp & Dohme group of companies. The Hong Kong and China proceedings are part of a global series of fiercely disputed proceedings between Merck and MSD with respect of the use of the term ‘Merck’.

DLA Piper

DLA Piper combines its local and regional expertise with its global network to provide a full IP service to its enviable client roster in China and abroad. Based in Beijing, Horace Lam co-heads the firm's Asian intellectual property group and regularly advises on both non-contentious licensing, brand protection and know-how transfer matters, as well as high-profile cross-border litigation. William Fisher sits in the Shanghai office and leads the Chinese patents group. Hong Kong-based Edward Chatterton is also a key name to note.

Practice head(s):

Horace Lam; Edward Chatterton

Other key lawyers:

William Fisher

Testimonials

‘DLA Piper has an impressive platform to provide global advice and strategy worldwide. The team is knowledgeable and pragmatic, offering clear guidance on strategy and complicated issues. Its experience and client base are impressive and it is continually using technology and procedures to improve efficiency and add value’.

‘The team at DLA provides an efficient service and a specific team for the work provided. It offers clear and commercial advice, advising on complex legal issues but providing useful practical guidance and its recommendations, as opposed to many other firms’.

‘The advice is pragmatic, commercially sensible and meets business needs and budgets’.

‘Edward Chatterton is great at building and maintaining relationships and clients know that if they need him, he’ll be there no matter what’.

Key clients

Skyworth

EPO Fashion Co., Ltd.

Hyatt

Hypertherm

Lego

Witricity

CTC Global

Conair

Avon Products Inc

Work highlights

  • Advising Skyworth on a global trade mark dispute with SKY International regarding its core brand “SKYWORTH” across multiple jurisdictions, including the entire European Union, the US and Australia.
  • Advises EPO on a whole range of legal issues globally, leading by IP (and extended to litigation, real estate, corporate, employment, etc), across multiple DLA offices, including China, Hong Kong, US, UK, France, Italy, Germany and others.
  • Advises Hyatt on a wide range of branding matters, from prosecution and infringement, to domain name and commercial IP issues throughout China.
  • Acts as Hypertherm’s external counsel in China for significant IP enforcement matters.
  • Advises LEGO on IP issues relating to its proposed production and distribution of the local version of its highly successful TV episode LEGO Masters series in China.

Hogan Lovells International LLP

On top of its general IP advice, Hogan Lovells International LLP provides a dedicated litigation service through its associated Shanghai-based local firm Hogan Lovells FidelityZhen (Katie) Feng specialises in IP litigation and advises clients on protecting and enforcing their IP rights in China from the Shanghai office. The Beijing office features practice co-head Helen Xia and counsel Grace Guo who covers the full gamut of advisory and contentious matters. Also notable is Shanghai-based counsel Yu-An Chang who regularly advises on complex IP and technology-related transactions, and assists multinationals with drafting and negotiating cross-border IP licenses and commercial agreements.

Practice head(s):

Zhen Feng; Helen Xia

Other key lawyers:

Grace Guo; Yu-An Chang

Key clients

Lego

Merck

ZF TRW

Lanxess

WAWI Chocolate (Xiamen) Co., Ltd.

Work highlights

  • Representing LEGO in various contentious trademark matters in China.
  • Advising Merck & Co., Inc. in connection with a major cross-border litigation concerning rights in the MERCK trademark and trade name.
  • Obtained a remarkable trademark decision for its client ZF and its affiliate ZF TRW before China’s highest court, the Supreme People’s Court (SPC). The case revolved around ZF TRW’s opposition action against a trade mark application for its brand “TRW,” filed by a trademark squatter.
  • Representing LANXESS in a trade secret infringement lawsuit against a Chinese company and a Chinese individual who have illegally obtained confidential technology know-how from Laxness in Germany and plan to misappropriate in China.
  • Successfully represented WAWI Xiamen, Chinese subsidiary of leading German chocolate manufacturer Wawi, in a remarkable trade mark litigation case before the Chinese court.

Jones Day

Jones Day's China-based IP practice operates as part of its global offering and primarily focuses on representing multinational companies in their inbound disputes, IP transactions and China portfolio strategy, and representing Chinese companies in outbound litigation. Under the joint leadership of Haifeng HuangAnthony Chen, both based in Shanghai, and Chiang Ling Li who is based in Hong Kong, the team is particularly known for its contentious capabilities. Also notable in Shanghai is of counsel Guoping Da who advises on enforcement and infringement cases in China and the US.

Practice head(s):

Anthony Chen; Haifeng Huang; Chiang Ling Li

Other key lawyers:

Guoping Da

Key clients

Moody’s Corporation

Xiaomi Inc.

Qualcomm

Micron

Work highlights

  • Assisted Moody’s in preparing and filing UDRP complaints against Yaosheng, the registrant of www.riskcalc.cn and www.riskcalc.com.cn and obtained a favourable award from Hong Kong International Arbitration Center.
  • Defending Xiaomi Inc., Xiaomi USA, Inc., and Xiaomi Technology, Inc. in a patent infringement lawsuit filed by Dareltech in the Federal District Court for the Southern District of New York.
  • Jones Day successfully represented Qualcomm in the defense of a trademark action filed against it by a Shanghai company asserting that Qualcomm’s Chinese company name (GAO TONG) infringed the plaintiff’s trademarks.

Rouse

Rouse is an IP consultancy firm primarily focused on the emerging markets of Asia and the Middle East, with a leading UK practice. The team's three main areas of focus are enforcement, brands and technology. Linda Chang acts as the firm's general manager in China with the help of deputy manager Chris Bailey who leads the firm's portfolio management and enforcement group. The trade marks team is led by Rachel Tan, and Tim Jackson leads the patent strategy and development sub-group. All individuals named are based in the Shanghai office.

Practice head(s):

Linda Chang; August Zhang

Other key lawyers:

Chris Bailey; Rachel Tan; Tim Jackson

Testimonials

‘Rouse is extremely competent in IP enforcement matters, especially in anti-counterfeiting. The team is also excellent in general IP strategy, very responsive and full of good communicators’.

‘What makes the Rouse team unique is its ability to truly understand the client’s business goals, and to help clients identify and implement the best strategy to achieve those goals. There are many firms in China who are experts in local law, but some global clients feel they are not able to creatively help them find alternate strategies to achieve their goals; this is where Rouse stands out’.

‘Jacob Chan is an excellent enforcement specialist and innovator. In addition, he is very good at client communication and has a dynamic approach in providing service in accordance with client needs and requests’.

‘Rachel Tan is excellent. She is very knowledgeable, and is able to truly understand client needs and exceed their expectations. Tim Smith in Beijing is a true expert in copyright, and is an invaluable asset to clients who have copyright issues in China’.

‘Melvin Mei and Melanie Zhu in the Shanghai office are responsive, effective and very easy to work with’.

Key clients

Universal City Studios LLC

Phinergy Ltd

Work highlights

  • Acting for Universal City Studios as plaintiff in a copyright infringement and unfair competition case against a cosmetics manufacturer and one of its distributors on the grounds of alleged violation of the client’s “Fast and Furious” franchise.
  • Acted for Israeli tech company Phinergy Ltd in the negotiation of a complicated joint venture and technology licensing deal with a Chinese listed state-owned aluminium company and a Wenzhou financial investor.

Deacons

Deacons' IP team in Beijing is especially well-known for its work regarding trade mark applications, oppositions, invalidation claims and other post-grant procedures directly with the National Intellectual Property Administration. The IP litigation group sits in Hong Kong where practice co-heads Charmaine Koo and Annie Tsoi are based. Catherine Zeng heads the patents and designs group and is another key name in the Hong Kong office alongside Ian Liu and Dora SiBenjamin Choi recently joined the trade marks practice from Mayer Brown.

Practice head(s):

Charmaine Koo; Annie Tsoi

Other key lawyers:

Catherine Zeng; Ian Liu; Dora Si

Testimonials

Deacons has a very sound knowledge of trade mark law. The trade marks team provides comprehensive, well-structured reports with clear recommendations which allow to take decisions almost immediately.’

‘Deacons has a strong presence in Hong Kong and China for IP.’

Key clients

Gmedia Hong Kong Limited and Gmedia Information Technology (Beijing) Co., Ltd.

OSRAM GmbH

Ping An Insurance (Group) Company of China Ltd (2318.HK) and Ping An of China Securities (Hong Kong) Company Limited

PCCW Group

Tsui Wah Holding Limited

Work highlights

  • Representing Gmedia in a patent infringement action in Hong Kong against Tencent regarding the use of Gmedia’s 2D (QR) code technology in Tencent’s Weixin and Wechat products.

Mayer Brown

Mayer Brown's IP experts handle complex litigation, due diligence and transactions, data privacy matters, franchising and technology-related mandates. The firm's trade mark agency in Beijing enables it to assist its diverse client roster directly with their trade mark needs in China. Hong Kong-based practice head Gabriela Kennedy represents an impressive client roster in the full spectrum of IP matters including name hijacking cases. Rosita Li and counsel Amita Haylock are also noteworthy in Hong Kong. The team lost Benjamin Choi to Deacons.

Practice head(s):

Gabriela Kennedy

Other key lawyers:

Rosita Li; Amita Haylock

Key clients

Accenture

Adidas

AIG

Adobe

Alibaba (and many of its subsidiaries)

Airport Authority Hong Kong

Agoda Services Company Limited

AGTech

Alexandre de Paris International

Aristocrat Leisure

Asia Video Industry Association

Cassia Investments

Cummins

Composers and Authors Society of Hong Kong

dormakaba Group

DTS, Inc (under Xperi Corporation)

Jardine Matheson & Company Ltd / Dairy Farm Group

Entertainment One

Fung Group

Hong Kong Jockey Club

Hang Seng Bank

Henderson Land

Jack Daniel’s

Lane Crawford

LVMH Fashion Group

Mandarin Oriental Hotel Group Limited

Nautilus

Nvidia Corporation

Ocean Park Corporation

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

Work highlights

  • Acted for Timbird International Limited in a litigation against a PRC company for using the client’s logo.
  • Advising Royal Golden Eagle on a host of IP matters in Asia and implementing strategies informed by an in-depth report as a result of the audit of its IP portfolio.
  • Assisting Wynn Resorts with protecting and enforcing its IP rights in Asia, including trade mark portfolio management, enforcement actions, trade mark oppositions and litigation.
  • Represented Guangdong Chant Group, a leading manufacturer of grills and kitchen appliances, along with Springfield Marketing, a US company which sells Chant’s ‎products against a plaintiff, SHM International, who alleged various breaches in its amended complaint, including breach of contract, breach of a non-disclosure agreement, unfair competition, and conversion in relation to outdoor BBQ grills.

Orrick, Herrington & Sutcliffe LLP

The team at Orrick, Herrington & Sutcliffe LLP specialises in patent infringement and trade secrets misappropriation litigation cases in the ITC and the US courts, but covers the full gamut of patent and trade mark portfolio management and applications. Its impressive client list includes leading multinationals and Chinese private and SOEs requiring IP counsel regarding a vast array of technologies ranging from software, machinery, semiconductors, automotive and electronics to renewable energy, pharmaceutical and medical devices. Xiang Wang and Shelley Zhang jointly lead the practice from Beijing with Shanghai-based Yufeng (Ethan) Ma.

Practice head(s):

Xiang Wang; Yufeng (Ethan) Ma; Shelley Zhang

Key clients

Advanced Technology & Materials, Co. Ltd. (AT&M)

Baidu

China New Building Materials Group

Haier Group Corporation

Hisense

Shanghai Sansi Electronic Engineering Co.

Semiconductor Manufacturing International Corporation (SMIC)

Tencent Technology

BOE Technology Group

Beijing Xiaomi Technology Corporation

Work highlights

  • Obtained a complete victory in the trade secret ITC investigation on behalf of AT&M and four other Chinese co-defendants when the plaintiffs, Hitachi Metals and its US subsidiary, unilaterally moved to terminate the investigation at the close of fact discovery, without any concession or settlement agreement.
  • Successfully handled a patent infringement action at the ITC for Sansi, CreateLED and Yaham following the termination of a Section 337 investigation based on unconditional withdrawal of the complaint by Ultravision Technologies.
  • Successfully defended SMIC in patent infringement cases against Lone Star regarding several US patents.
  • Defended Hisense in the patent lawsuit filed by VIA Licensing Corporation in United States District Court for the Northern District of California for alleged breach of patent licensing agreement.
  • Successfully defended China Synergy Manufacturing Group, Shanghai Cerong Network Co. Ltd. and Shanghai Sourcing against Luxottica Group S.p.A. and Oakley, Inc. in a trademark and patent infringement case filed in US District Court for the Northern District of Illinois (Eastern Division).

Simmons & Simmons

Simmons & Simmons manages the global or regional trade mark portfolios for several household name brands. In recent years, the team has maintained its longstanding clients in addition to working with a number of new clients. It has a particularly strong practice in invalidation actions against the registration of disputed trade marks. In one highlight, George Chan and key associate Sophie Zhao successfully assisted Johnson & Johnson with an invalidation action against a mark; the Trademark Review and Adjudication Board (TRAB) considered that the co-existence of the disputed mark and Johnson & Johnson’s prior marks on similar goods would cause confusion among relevant consumers.

Practice head(s):

George Chan; John Slater

Other key lawyers:

Sophie Zhao; Julie Luo; Joy Shi

Key clients

Cathay Pacific Airways and Hong Kong Dragon Airlines

YGM (AQUASCUTUM)

Maus Frères International Services (LACOSTE, AIGLE International S.A., GANT AB)

BANDAI

Infor

Johnson & Johnson

Warner Bros

New Zealand Trade and Enterprise

Herschel Supply Company Ltd.

Afton Chemical Corporation

Work highlights

  • Acted for Johnson & Johnson in its invalidation action against a trade mark based on the client’s prior trade mark and trade name. The TRAB decided that the offending mark should be invalidated given its similarity to Johnson & Johnson’s prior marks.
  • Successfully assisted Johnson & Johnson in an invalidation action against a mark; the TRAB held that the disputed mark is similar to J&J’s prior trademarks in terms of character composition, pronunciation and overall appearance.

SIPS – Simone Intellectual Property Services

Noted for its 'legal expertise as well as practical insights', SIPS – Simone Intellectual Property Services balances a varied workload of trade mark portfolio management and IP enforcement, including anti-counterfeiting, online enforcement and trade secrets protection. Headquartered in Hong Kong, the firm has offices in Beijing and Shanghai, and a large proportion of its work involves PRC matters, though it also advises on IP matters in Hong Kong and the region. Managing partner Dan Plane advises leading players in the luxury goods, electronics and pharma sectors; founding partner Joseph Simone  has been active in Hong Kong and the PRC since the 1980s; and the multilingual Helen Tang advises multinational and Asia-based clients on IP prosecution, enforcement and management.

Practice head(s):

Joe Simone; Helen Tang

Other key lawyers:

Dan Plane; Troy Rice

Testimonials

Provides legal expertise as well as practical insights. Vast knowledge of practices unique to region’.

Joe Simone, Helen Tang and Douglas Berman are experts and provide a client service that is off the charts’.

AWA Asia

AWA Asia is based in Hong Kong and provides an 'East-meets-West' IP protection, enforcement and IP portfolio management service through its bilingual and bi-cultural team. The Beijing office is a licensed trade mark agency which allows Ai-Leen Lim and her team to file and enforce trade marks directly with the China Trademark Office. Other key names include Ashley Zhao who specialises in trade marks, copyright and domain name matters, Internet law and anti-unfair competition cases, and Xiaofan Chen who has a strong track record in patent litigation.

Practice head(s):

Ai-Leen Lim

Other key lawyers:

Ashley Zhao; Xiaofan Chen

Testimonials

‘AWA is known for its excellent counsel, prompt attention, always being on top of things and employing very friendly people’.

‘AWA provides a single point of contact for the seamless handling of matters in both the PRC and Hong Kong’.

‘AWA’s ability to give direct, succinct feedback on issues or a ‘quick gut check’ analysis of a situation is what makes it such a standout firm in Asia. Armed with concise and relevant information, clients can then decide if they want to pursue a course of action or have Ai-Leen Lim and her team conduct a full, comprehensive analysis of a particular issue’.

‘Ai-Leen Lim and her team make it a pleasure to do business with them because they deliver their advice on local laws in a ‘Western package’ that is easy for my clients to digest and act on’.

‘Charlie Liu is a day-to-day contact who is responsive and realistic about strategies. Ai-Leen Lim is very attentive to client care’.

‘Ai-Leen Lim is a warm, caring person. Clients appreciate having someone on their team that is tough as nails with opposing counsel and a pit bull of a IP rights enforcer who is at the same time a lovely human with exceptional listening skills. It is this rare combination of genuine warmth, toughness, and legal acumen that make Ai-Leen so effective’.

Ai-Leen Lim is a talented and engaging attorney who brings an in-depth understanding of multiple jurisdictions and the international trade mark marketplace as a whole to the table. Ai-Leen is incredibly responsive, creative, and effective in both prosecution and enforcement matters‘.

‘Ashley Zhao is a consummate professional. She provides timely advice and always acknowledges client communications’.

Clyde & Co LLP

Clyde & Co LLP recently welcomed Yan Gong to the Beijing office as the new head of the trade marks practice; she joined from China PAT Intellectual Property Office and specialises in all aspects of trade mark prosecution, including recovery or invalidation of trade marks filed in bad faith. The team is led from Shanghai by Elliot Papageorgiou with the support of Molly Zhuang who spearheads the enforcement sub-group, and Leo Tang who acts as head of the patents sub-practice. Senior partner and experienced patent litigator Li Weng is also a key name to note.

Practice head(s):

Elliot Papageorgiou

Other key lawyers:

Molly Zhuang; Leo Tang; Li Weng

Testimonials

‘The Clyde & Co lawyers have a deep understanding of Chinese IP law. They are extremely prompt in responding to requests, often by a simple but very helpful phone call.’

‘The team members work well together and give complete answers to questions. They do a good job of explaining Chinese procedure and law to foreign attorneys. They are also good at saying when a client should stop spending money on something.’

‘Elliot is an excellent adviser who is always sensitive to the commercial and financial realities. He offers very individual consultancy as well as personal engagement.’

‘Yan Gong is very knowledgeable about trade mark matters in China and is very good at explaining things. Her emails generally have just the right amount of detail to make a decision without going into unnecessary detail.’

Key clients

Friedhelm Loh Stiftung & Co. KG

ThyssenKrupp Group

Work highlights

  • Represented Friedhelm Loh Stiftung & Co. KG in a patent claw-back action against SIP Mechanical Technology (Taicang) Co., Ltd.

CMS

The IP team at CMS is particularly notable for its work with clients operating in the life sciences sector, including both pharmaceutical and medical technologies companies. Practice head Nick Beckett, based out of the firm's Beijing office, is particularly strong on patent litigation and the IP aspects of corporate transactions, along with associate Daisy He. Shanghai-based Ulrike Glueck is the key contact for trade mark matters, handling both contentious and non-contentious work for a broad range of clients.

Practice head(s):

Nick Beckett

Testimonials

CMS Beijing’s team is young, energetic, smart and capable of learning, providing clients with thoughtful service and innovative legal advice‘.

Nick Beckett has solid professional knowledge, rich experience, a deep understanding of China’s trade mark practice, and has dealt with many cases with significant influence‘.

Key clients

Takeda Pharmaceutical Company Limited

Otsuka

Dentsu Aegis Network

Unilever

Elmos Semiconductor AG

Eli Lilly

Wellcome Trust

RWE

UCL

Royal Auping

K&L Gates

K&L Gates acts for companies commercialising emerging communications technologies, novel drug therapies, iconic brands, trade secrets and copyrights in patent prosecution, portfolio development, counselling, and opinion work in the United States, Asia, Australia, and Europe. The firm is noted for its strong litigation offering which fields experts such as US-qualified Jay Chiu in the Hong Kong office. Also notable are Beijing-based Shu Yujing and counsel Winnie Chan who also sits in Hong Kong.

Practice head(s):

Robert Barrett; Michael Zeliger

Other key lawyers:

Jay Chiu; Shu Yujing

Testimonials

The team has strong communication skills, and can effectively coordinates internal and external resources‘.

The firm has many highly professional lawyers in the team, who can discuss the key points of patents and technology with technical experts‘.

Key clients

Qingdao Yunlu Energy

Amperex Technology Limited

SZ DJI Technology Co., Ltd (DJI)

Guangdong Oppo Mobile Telecommunications Corp (OPPO)

SIMO Holdings, Inc. / Skyroam, Inc.

ZTE Corporation

Matsutek Enterprises Co., Ltd and BISSELL Homecare Inc

Darfon Electronics Corp.

Ching Feng Home Fashions Co., Ltd.

Getac Technology Corporation

Work highlights

  • Advised Qingdao Yunlu, one of the world’s largest producers of amorphous metal ribbon, in a Section 337 investigation before the ITC filed by an international metal production company and its subsidiary alleging misappropriation of trade secrets.
  • Acting as counsel for all defendants, including battery maker ATL, drone maker DJI, and phone maker OPPO against claimants alleging patent infringement of three patents and seeking an exclusion order against ATL-made batteries and any products containing them.
  • Defended ZTE against plaintiff Maxell – an intellectual property holding company that spun off from Japanese high-tech conglomerate Hitachi. Maxell alleges that various mobile phone functions within ZTE mobile devices infringe eight patents-in-suit.
  • Represented Matsutek in a patent infringement action filed by iRobot which sought an exclusion order against Matsutek-made robotic vacuum cleaner.
  • Assisting Skyroam with seeking damages and an injunction against uCloudlink to prevent it from infringing on Skyrom’s IP by selling infringing hotspot devices, also more popularly known as Glocalme, and from uCloudlink’s unauthorized use of Skyroam’s patented technology.

Ropes & Gray LLP

Geoffrey Lin's IP practice at Ropes & Gray LLP has a very strong expertise in the life sciences sector where it covers transactional intellectual property mandates to facilitate the commercialisation of life sciences assets. Counsel David Chen is based in Shanghai with Lin and focuses on licensing arrangements, joint ventures, partnerships, technology transfers and R&D activities with a particular emphasis on digital healthcare.

Practice head(s):

Geoffrey Lin

Other key lawyers:

David Chen

Key clients

Zai Lab

Innovent Biologics

Shanghai Furen Medicine R&D

CANbridge Pharmaceuticals

Work highlights

  • Advised Zai Lab in its exclusive regional license and collaboration agreement with Novocure.
  • Advising Innovent Biologics in a collaboration and licensing agreement for three clinical products discovered and developed by Incyte, a Delaware-based biopharmaceutical company.
  • Acted for Shanghai Furen Medicine R&D, a leading China-based pharmaceutical company, in a collaboration agreement between AstraZeneca Gothenburg and Furen Pharmaceuticals.
  • Advised CANbridge Pharmaceuticals, a leading China-based biopharmaceutical company accelerating the development and commercialisation of specialty healthcare products for orphan diseases and targeted cancers, in its Greater China Licensing Agreement with GC Pharma for its Hunterase™ product, for Hunter Syndrome.

Allen & Overy LLP

At Allen & Overy LLP, the IP team is particularly notable for its work with clients in the life sciences and TMT sectors. The team is led by Shanghai-based David Shen, who has substantial sector experience as a former in-house counsel for a pharmaceutical company, and is strong on both non-contentious work, particularly IP licencing and the IP elements of M&A work, and contentious work such as patent and trade mark infringement disputes.

Practice head(s):

David Shen

Clifford Chance

Clifford Chance's Greater China IP practice, led by Ling Ho, handles a range of trade mark, patent and copyright matters, both contentious and non-contentious. The group benefits from the firm's broad office network and expertise in corporate and M&A, technology and dispute resolution. On the transactional side, the team is equipped to advise on the IP aspects of cross-border corporate transactions. In internal developments, Shanghai-based IP litigation specialist Lei Shi made partner in 2019.

Practice head(s):

Ling Ho

Other key lawyers:

Lei Shi; Jill Ge; Lijun Chui

Testimonials

‘Clifford Chance’s intellectual property (“IP”) practice team distinguishes itself from peers by its good business acumen, proficiency in optimization of IP under transaction contexts, practical working approach and result-orientation. All these makes its practice unique and my in-house peers may turn to this practice group to leverage on its expertise in IP-intensive transactions.’

‘Ling Ho (the partner), Yi Yang (the counsel)and Ernest Shen (the associate) together as a team has delivered high-quality IP services relying on its proficiency in cross-jurisdiction IP-intensive transactions and deep insights into business context. The foregoing attributes make this team remarkable compared with other competitors.’

Work highlights

  • Assists a Hong Kong property and infrastructure conglomerate with its trade mark portfolio in Hong Kong and China, including in its successful defence of actions filed by a longstanding counter-party which has earlier trade mark registered rights in China.
  • Provides strategic advice and support to a hospitality group in its trade mark portfolio worldwide, including advising on options, methods and actions against conflicting registrations and applications, investigations and enforcement.
  • Advises a clothing design and manufacturing company on brand protection strategies, portfolio management and enforcement issues in China, and, in particular, dealing with customs protection issues.

Covington & Burling LLP

Covington & Burling LLP is home to an IP practice which acts for both foreign and domestic clients across both contentious and non-contentious work. The firm is particularly notable for its work with media clients on licensing and other commercial work, primarily for foreign entertainment companies operating in China, with Shanghai-based Jason Goldberg heading the team. Another key area for the firm is its strong outbound litigation practice for Chinese clients engaged in disputes abroad, where Beijing based Ruixue Ran is the name to note.

Work highlights

  • Represent 1AND8, Inc., doing business as the Museum of Ice Cream (MOIC), in a dispute with Yuanwangjia.com, which attempted to run a fake Museum of Ice Cream in Shanghai, China.
  • Advised Nelvana, a Canadian animation studio and children’s media company owned by Corus Entertainment, in connection with animation co-productions in China with WeKids Times Culture (Shenzhen) Ltd.

Morrison & Foerster

From its offices in Beijing, Shanghai, Hong Kong and Palo Alto, Morrison & Foerster advises leading players in the tech and life sciences sectors on the IP aspects of corporate and commercial transactions. It particularly stands out for its experience in patent applications and protection. Ancillary areas of expertise include licensing, data privacy and cybersecurity. Gordon Milner and Chuan Sun are among the key partners in the team.

Practice head(s):

Gordon Milner; Chuan Sun

Other key lawyers:

Janet Xiao; Gigi Yuen; Can Cui; Tyler Xiu; Sarah Wang

Key clients

Everest Medicines Limited/Everest Medicines II Limited

Triastek, Inc.

Henlius

The Dairy Farm Group

Work highlights

  • Represented Everest Medicines II Limited, a portfolio company of C-Bridge Capital, in its exclusive collaboration, license and supply agreement with VenatoRx Pharmaceuticals, Inc.
  • Assists Triastek with building a robust patent portfolio which positions the company to be a leading player in the 3D drug printing field.
  • Advises biotech company Henlius in its licensing and supply agreements, and in building its patent portfolio.

Norton Rose Fulbright

Multinational companies operating in the life sciences, tech and financial services sectors turn to Norton Rose Fulbright for trade mark portfolio management and assistance in IP prosecution, enforcement and litigation. The team also advises on licensing and commercialisation. Practice head Justin Davidson and a team assist pharma giant GlaxoSmithKline with its trade mark prosecution matters and clearance searches for the company's new products. Senior associate Maggie Chong has a broad IP practice that takes in trade marks, domain names, design rights, patents and copyright.

Practice head(s):

Justin Davidson

Other key lawyers:

Maggie Chong

Key clients

ASTRI (Hong Kong Applied Science and Technology Institute)

Bank of Montreal

BNP Paribas

Crown Worldwide Holdings Ltd.

Dell

GlaxoSmithKline

Morgan Stanley

Pfizer

Royal Bank of Canada

Techtronic Industries

Tencent Holdings

Work highlights

  • Advises GlaxoSmithKline on trade mark prosecution issues, including the management of its trade mark portfolio and renewals in Hong Kong and Macau.
  • Advises Hengfeng Tyres on global trade mark issues, including its trade mark applications in over 40 jurisdictions.
  • Manages the global trade mark portfolio of Hong Kong-based company Crown Worldwide in around 70 countries.

Perkins Coie

Perkins Coie is singled out for its 'deep understanding of the Chinese IP legal system and ability to be effective advocates in the Chinese court system'. It has recently strengthened its position in the IP market with the arrival of Scott Palmer and his team from Sheppard, Mullin, Richter & Hampton LLP, as well as more junior arrivals from local law firms. The prosecution and enforcement of trade marks is a key area of work for the firm, with the firm often instructed to assist clients with opposition and invalidation proceedings, as well as achieving well-known status for clients' marks. The firm is also active in IP licensing and domain name matters, as well as advising clients on patents.

Practice head(s):

Scott Palmer

Testimonials

Strong ability to make plainly explain complex situations or problems in a way that facilitates good decision making‘.

Brilliant strategists‘.

Stephenson Harwood

The Hong Kong-based IP team at Stephenson Harwood receives plaudits for its 'exceptional client service' and counts multinational companies from numerous sectors among its clients. Jezamine Fewins specialises in IP litigation and also has a notable track record in representing clients in matters involving the theft of trade secrets and confidential information by employees. Jonathan Chu, who co-heads the practice with Fewins, has a comprehensive IP practice that includes contentious and non-contentious issues.

Practice head(s):

Jezamine Fewins; Jonathan Chu

Other key lawyers:

Mengyi Chen; Candy Tong

Testimonials

Recommended for its market insight, bench of expertise, good language capability and reasonable billing‘.

Provides exceptional client service‘.

Key clients

Eu Yan Sang International Limited

Hot Toys Limited

Xiaomi Inc.

Bonhams 1793 Ltd

All In Pay Network Service Co., Limited

FDG Electric Vehicles Limited

Orange Sky Golden Harvest

Jezaya Limited

Allianz Se

Asia Standard Management Services Limited

LRS (Lucozade Ribena Suntory)

Samsung

Hitachi

GlaxoSmithKline plc

Huda Beauty

Havells

Work highlights

  • Successfully defended Asia Standard Management Services Limited in opposition proceedings issued against it by China Oceanwide in respect of the client’s trade mark application for the mark “泛海”.
  • Represents leading insurance company Allianz Se in trade mark infringement and passing off proceedings against a Hong Kong entity.
  • Assisted Italian company Cieffe Forni Industriali Spa in defending a cancellation action in China as well as the protection of its mark on a global basis.