Ian Liu > Deacons > Hong Kong, Hong Kong > Lawyer Profile

Deacons
5TH FLOOR, ALEXANDRA HOUSE
18 CHATER ROAD, CENTRAL
HONG KONG
Hong Kong

Work Department

Intellectual Property practice group

Position

Partner

Career

Ian is a Partner in the Patent and Designs Practice.

Ian is admitted as a solicitor in Hong Kong and is also a UK Chartered patent attorney and Chinese patent attorney.  In addition, Ian has obtained the Legal Professional Qualification Certificate Examination of the People’s Republic of China making him qualified in both common law and civil law jurisdictions.

Prior to starting his career at Deacons, Ian worked in the hi-tech software industry with TIBCO Finance Technology (a Silicon Valley-based company) and was a financial software consultant with Reuters.  Ian has been advising on cross-border IP litigation and enforcement, and commercial matters with a focus on China and new technology, for over a decade.  Ian’s wide ranging practice covers complex patent litigation and enforcement, trade mark anti-counterfeiting, software and copyright protection, commercial IP and technology transfer, cybersecurity risk and data protection, hi-tech M&A work including IP due diligence, technology licensing negotiation and acquisition.  In particular, drawing on his computer science and electronic engineering background, Ian advises on cutting edge IT issues including IT security, blockchain, cryptocurrencies, AI and NFTs.

Ian is a frequent speaker on IP issues including seminars organised by Hong Kong Trade Development Council, Hong Kong Intellectual Property Department, Federation of Hong Kong Industries and Managing IP.

Ian has been recognized as a Rising Star in China (2018) by Managing IP, as a Leading Individual in Patent Litigation in Hong Kong (2020-2021) by IAM Patent 1000 and a Recommended IP Lawyer in China (2021) by Legal 500.

Highlights

  • Advising a statutory body in relation to touchless technology including infringement analysis and assessing validity of existing patents.
  • Advising a Hong Kong Company in patent enforcement in the UK against a major international conglomerate.
  • Advised a global nanotech company on patent infringement, anti-unfair competition and trade secret actions in Mainland China, including advising on investigations and evidence preservation for actions before local Intellectual Property Offices and PRC Courts, and defending invalidations before the Patent Re-examination Board.
  • Acted for a well-known UK automotive company in a landmark design invalidation action in China involving the determination of general consumers and design freedom, evaluation of the overall impression for innovative design features and common design features, the significance of the side view and front view of a car design, and the non-obviousness requirement of a patentable design.
  • Advised a famous Japanese electronics and electrical appliances company in relation to potential patent claims and standard essential patent licensing involving 4.5G LTE telecommunication technologies in China.
  • Advised a Chinese private equity fund on the US $1.8 billion acquisition of the worldwide IP and technology relating to the power amplifier business of a well-known Netherlands semi-conductor company including due diligence on the patents and technology acquired and negotiating on the IP, technology transfer and licence agreements.
  • Advised a joint venture between 3 major stock exchanges on legal issues arising from developing and franchising index-linked and other equity derivatives in Hong Kong and Mainland China.
  • Advised a global cosmetic company in China on privacy issues including its privacy policy, data transfer, online collection of personal information online and data exchange with e-payment platforms.
  • Advised an offshore e-platform targeting Chinese customers on compliance with the Cybersecurity Law.

Languages

English
Cantonese
Mandarin

Memberships

Member, The International Association for the Protection of Intellectual Property (AIPPI)

Member, The Law Society of Hong Kong

Fellow, Chartered Institute of Patent Attorneys (CIPA)

Member, All-China Patent Attorneys Association (中华全国专利代理人协会) (ACPAA)

Member, Institute of Electrical and Electronic Engineers (IEEE)

Member, The Institution of Engineering and Technology (The IET)

Education

PCLL, University of Hong Kong, Hong Kong

LL. B (Hons), The University of London, UK

PG Cert. Intellectual Property, Bournemouth University, UK

M.Sc. Degree in Technology and Policy, Massachusetts Institute of Technology, US

M. Sc. Degree in Electrical Engineering and Computer Science, Massachusetts Institute of Technology, US

B. Eng. (1st Hons), The Imperial College of Science, Technology and Medicine, UK

Lawyer Rankings

China > Intellectual property: foreign firms

Deacons‘ Hong Kong-based IP team, which also leverages support from representative offices in Beijing, Shanghai and Guangzhou, acts for some of the world’s best-known brands. The firm houses patent attorneys, who are  qualified in Australia, China, Europe and the UK, and has a longstanding track record  in handling large trade mark portfolios and prosecution matters. The IP department is co-led by IP expert Charmaine Koo, and Annie Tsoi, who consistently acts for leading companies from the luxury goods, cosmetics, pharmaceutical, entertainment, fashion and electronics sectors. Also integral to the group are patents and designs practice leader, Catherine Zheng, a specialist in China IP protection strategy and contentious matters; Dora Si, who provides ‘quick responses‘ and ‘firm and concise advice‘, and advises on China-related data privacy and cybersecurity issues; and China-focused technology specialist Ian Liu, who is particularly active in IP litigation and enforcement work, along with commercial IP matters.

Hong Kong > TMT

Housing practitioners with technology and science backgrounds, Deacons‘ TMT practice is particularly active in relation to digital assets. Its experience covers cryptocurrencies and the tokenisation of assets, blockchains, smart contracts and the metaverse. The team can also draw upon the expertise of the firm’s experienced IP, corporate and commercial practices. Charmaine Koo‘s practice covers IP litigation, data privacy and entertainment; and Machiuanna Chu regularly advises new economy clients and emerging businesses, including technology companies, cryptocurrency issuers and fintech companies (among others). On the IP side, Ian Liu, Kelley Loo and Amy Chung are also active partners.