Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

CCPIT is one of the largest IP firms in China, and has a long history of representing and defending clients’ IP interests. The firm has offices all across China, and is strong in patent and trade mark law as well as litigation work. The firm is often instructed by multinationals to defend their interests in China.

The firm recently obtained a favourable decision from the Beijing Municipal High People’s Court in a case that involved definition of an ‘invention’ with regards to patent law, and whether the claims were clear and had adequate technical features.

Hao Ma, Tianan Zhang and Zhongqi Zhou are all leading lawyers in the practice.

Liu Shen & Associates was established in 1993, and was the first non-government managed patent and trade mark practice to be approved by the PRC government. The boutique firm has 26 partners and over 140 patent attorneys. The firm is particularly well acquainted with cross border IP issues involving the US, the UK, Japan or Germany. Clients also benefit from the firm’s strong technical background in hard sciences, life sciences and technology. Liu Shen & Associates represents clients on trade mark registration as well as trade mark design issues in China, Hong Kong, and around the world.

Beijing Sanyou Intellectual Property Agency was opened in 1986 with the opening of China’s patent system. The firm is one of the largest in China and routinely handles an array of patent, trade mark and copyright issues – from the more traditional to the most acute. Beijing Sanyou holds the distinction of being one of the few patent agencies that the PRC government has allowed to deal with foreign trade mark and patent issues.

Chang Tsi & Partners is especially prominent when it comes to trade mark litigation in the PRC. Leading partner Spring Chang is described very favourably by peers. “Chang is in charge of some huge, high profile trade mark litigation cases,” says one. “She is also clearly enthusiastic and interested in her work. She eats, sleeps and breathes cases.” The firm is also known for effective seizures of counterfeit products from retailers.

China Patent Agent has offices across China in addition to sites in Tokyo, New York and Munich. This enables it to advise clients on multijurisdictional intellectual property issues. The firm has been a Hong Kong incorporated company since 1984, and was launched to help handle patent activity in light of the PRC’s patent law.

The firm has over 510 staff members including 190 patent attorneys and 40 members covering trade marks. The longstanding history of the firm, combined with its multi-jurisdictional, multi-lingual capability, make it a go-to firm for many multinationals.

China Science Patent & Trademark Agent began in 1984 as a unique agency working within the state-funded Chinese Academy of Sciences national research institute. The firm has since grown into a private practice owned by shareholders, and it has been granted a coveted special licence by the Chinese government to handle foreign IP issues.

With offices in Beijing, Shanghai, Seattle and Osaka, China Science has a true multi-jurisdictional capability. It is known for its technical prowess in patents relating to the biotechnology, electrical, mechanical and chemical engineering sectors.

China Sinda fields a large yet boutique IP practice housing over 200 staff across offices in Beijing, Tokyo and Washington, DC. The firm has a team of patent attorneys and technical experts almost all of whom have earned technical or engineering degrees – and many of these at advanced university level. China Sinda advises clients on a range of IP issues including patents, trade marks, copyrights, domain names, and on competition and litigation matters. The firm also assists clients on technical matters like integrated circuit layout schemes and technical research.

Fangda’s IP team is bolstered by the firm’s strength in litigation, and is often seen representing major multinationals on IP cases in front of prominent courts. The firm’s team is well known in China, with two partners recently publishing the book ‘Intellectual Property Rights in China’.

In one prominent case, Fangda’s IP team obtained a successful landmark ruling for Nokia when the Beijing High People’s Court stated that time zones were not relevant in determining if a publication was published before patent priority or application dates. Fangda effectively enabled Nokia to retain its patent by reversing a previous decision of the Patent Re-examination Board Office (PRB) that had invalidated the patent.

Hylands invests heavily in its IP practice, which houses over 120 practitioners. The firm is regularly involved in prosecuting trade mark infringers and conducting raids and seizures on offending businesses.

One satisfied client says: “The firm is always updated on the current happenings and technical issues. Its senior partners personally attend to matters, and they have sound knowledge and are expert about the issues under IP rights.”

The firm recently represented luxury goods producer Prada in filing oppositions against an individual who filed trade marks that were similar to the Prada design. Hylands was able to successfully file oppositions in the courts, and demonstrate the individual filer’s bad faith in filing the marks.

Senior partner Lian Ynze is a leading lawyer in the field.

Kangxin Partners boasts an IP practice that is genuinely strong on the technical side, with almost 45% of staff having earned scientific or engineering degrees at masters or doctoral level. The firm is serious about maintaining its high technical standards, and often sets up law and technology training and seminars for its staff. Managing partner Samson Yu and senior partner Yangling Zhou lead Kangxin’s team. The firm is viewed by peers and clients as one of China’s strongest firms when it comes to patent and trade mark work.

King & Wood is known in the market for its strong full service practice that can handle complex IP matters across a broad range of issues.

The firm recently represented Shanghai Zhonghan Chenguang Stationery in a retrial case in front of China’s Supreme People’s Court. Zhonghan Chenguang Stationery used to hold a design patent for its gen-ink pen, but the patent ended before the lawsuit was initiated. The firm’s team argued that even though the patent had already ended the design was not in the public domain because the pen’s design satisfies the definition of ‘decoration of famous commodity’. The decision handed down was the first Supreme People’s Court ruling supporting the idea that a design can be protected under the Anti-Monopoly Law even after that design’s patent has ended.

Experienced lawyer Li Yong leads King & Wood’s IP department.

Wan Hui Da is particularly well known on the trade mark side of IP work, and is often involved in high profile litigation and court matters. The firm was started in Beijing in 1997 by a group of trade mark attorneys, with the aim of helping medium to large foreign corporations on all trade mark aspects of their IP matters. Wan Hui Da has since expanded to include a patent capability. It now has offices in many of China’s rapidly developing cities, and 200 personnel.

Zhongzi’s large IP group comprises nearly half of the firm’s overall headcount. Zhongzi has well established patent, trade mark and litigation teams enabling it to advise clients on the full range of IP issues. The firm has a history of representing multinational clients, international research institutions and high profile domestic clients. Zhongzi houses over 50 attorneys across its Beijing and Shanghai offices. The firm has a strong focus on high tech sectors such as life sciences, healthcare, computer science and telecommunications.

Watson & Band fields a team of 150 staff members and three partners, and is often seen representing multinational corporations on IP matters. The firm recently advised Nikon Corporation on a trade mark infringement case against a local vehicle company. The team was able to successfully recover the client’s registered trade marks, and help it to acquire compensation for economic loss as a result of the infringement.

Peksung

Peksung was established in Beijing in 2003 with patent attorneys from a rival Chinese IP firm. It has since established itself as an IP boutique with eight partners and 100 staff, as well as offices in Palo Alto and Shenzhen. This past year, Peksung advised Bayer Health Care in an invalidation action against a Bayer patent that was filed with the Patent Re-examination Board (PRB) by a private Chinese citizen. The patent questions concerned the inactive ingredient in the popular cancer drug Nexavar, and the invalidation action was filed on the grounds that inadequate test data was included in the product’s description. The PRB ruled in favour of Bayer’s patent.