Intellectual property
Our intellectual property (“IP”) team in Hong Kong and Mainland China is made up of seasoned IP litigators and IP transactional lawyers. The depth of experience in our IP team means our clients can expect their IP rights to be expertly handled from the early stages of building up portfolios, auditing and management to lobbying, enforcement and where circumstances necessitate, litigation.
Not only may IP rights be a business’ most valuable assets, but increasingly profitable businesses by definition all have important IP rights. With respect to protecting the value of IP assets, knowing and understanding your rights is critical. Each jurisdiction – US, Europe and Asia – requires different strategies to gain the full protection of the law. We manage IP rights from a global perspective. Our ability to represent companies across the US, Europe and Asia provides our clients both legal and competitive advantages. In China, the rapidly emerging market means coping with IP regulations that are in constant transition. Our goal for our clients is to bring a strategic, coordinated approach to their worldwide IP legal needs, so as to enhance the value of the IP and serve the needs of business.
How we could help
- Portfolio management
- Transactions
- Lobbying
- Life sciences regulatory work
- Enforcement and litigation
Portfolio management
Our goal to bring a coordinated approach to the entirety of our client’s IP needs begins in the earliest stages of portfolio management. Key services include:
- IP Audits – Our IP lawyers perform a full portfolio audit to determine the relative strength and value of the IP assets of interest. We assist clients with preparing relevant commercial agreements to properly protect and exploit their IP assets and developing plans to register relevant IP rights and arrange for Customs recordal where necessary, taking into account estimated product life span and specific market strategy. This also serves to identify business, regulatory, and legal risks and provides for indemnification against damages and loss.
- Monitoring – Continuous monitoring of worldwide registers on trademarks, designs, domain names, company names and markets, especially online markets, for infringing products and pirate registrations. We work closely with investigators and officials to conduct market surveys and market sweeps to weed out infringing activities. We also assist clients to monitor trade fairs and conduct site visits to target business premises.
- Commercialization of IP – IP license, assignment and franchise document review and drafting, proprietary technology and non-disclosure agreement localization and review
- In-house Training – Preparing internal staff manual, and conducting in-house training programs on best practices, reporting procedures, protection and enforcement.
- Explore, Facilitate and Monitor Licensing or Alliances – Evaluate potential targets for licensing and/or alliance opportunities; enter negotiations to implement and monitor licensing agreements on a worldwide scale.
Transactions
Due diligence, review of disclosure schedules, review of SPAs and other agreements, patent analysis and other technical support, and contract negotiations.
Lobbying
In the course of IP rights management, the lobbying of various bodies is occasionally required to further and / or protect a client’s IP rights. The breadth of experience in our Hong Kong/China IP team means that our lawyers are expertly placed to assist clients in lobbying authorities with regard to regulatory policy and legislation. Our lawyers are members of various important industry and professional organizations and hold important positions within such organizations, such as the International Trade Marks Association. They have represented clients in a range of lobbying actions including:
- Advising companies and industry organizations on lobbying, including participating on behalf of clients in making submissions to the relevant authorities for strengthening copyright and company name protection, patent linkage and data exclusivity issues.
- Submitting position papers on trademark, domain name, copyright and other legal reforms
Life sciences regulatory work
Review of clinical trial agreements, regulatory compliance and advisory work, human genetic resource advice and approval, advice on cross-border transfer or sharing of medical files.
Enforcement and litigation
Our Hong Kong/China IP team has demonstrated experience in helping clients formulate and implement legal strategies to enforce IP rights and combat IP infringement throughout the world. Our team is distinctive in its ability to mount a unified, coordinated strategy in multiparty, multi-jurisdiction IP litigation. Recent work of the team includes:
- Patent invalidation proceedings
- Patent infringement litigation
- Trade secret misappropriation litigation
- IP anti-trust litigation
- Patent ownership litigation
- Copyright litigation
- Tradename litigation
Awards and recognitions
Litigation – Recommended (Hong Kong)
Transactions – Recommended (Hong Kong)
Prosecution and Strategy – Leading Firm (Hong Kong)
Enforcement and Litigation – Leading Firm (Hong Kong)
Patents – Tier 2 (Hong Kong)
Copyright/ Trademarks – Tier 2 (Hong Kong)
