Hong Kong

Hong Kong currently operates a re-registration system, which requires applicants to secure a patent before a designated patent office (in China or Europe) and then re-register it in Hong Kong. This will still be possible when the original grant patent system is implemented in 12 to 18 months, which will enable rights holders to secure their patents without first going abroad. To ensure the change proceeds smoothly, the Chinese State Intellectual Property Office has agreed to provide significant training and infrastructure support. On the enforcement side, a notable number of cases are being brought, but the lack of specialist judges means there is a long wait before they make it to court, which is acting as a deterrent for many potential litigants.

Firms: transactions

H
Baker McKenzie
Bird & Bird
Deacons
Hogan Lovells
Jones Day
Mayer Brown JSM
Morrison & Foerster LLP
Norton Rose Fulbright Hong Kong

Firms: prosecution

Highly recommended
98
Marks & Clerk Hong Kong
Recommended
H
Baker McKenzie
Bird & Bird
Deacons
Eagle IP Ltd
Wilkinson & Grist

Firms: litigation

1
Bird & Bird
Deacons
Jones Day
2
Baker McKenzie
Hogan Lovells
Mayer Brown JSM
3
Morrison & Foerster LLP
Norton Rose Fulbright Hong Kong
Wilkinson & Grist
Baker McKenzie
Plugged into the firm’s wider global network, Baker McKenzie’s Hong Kong office boasts access to cross-disciplinary scientific and legal nous, which adds considerable weight to its eminent local prosecution practice. A wealth of on-the-ground talent guarantees that regulatory obstacles in the region are efficiently dealt with for its multinational following. Equally focused on domestic concerns, the firm is heavily investing in ensuring that Hong Kong’s start-ups receive the maximum levels of rights protection. Accompanying these players throughout the IP journey, the team stands ever-ready to assist in high-stakes licensing deals and other commercialisation opportunities wherever these arise. Fully equipped to handle any demand from pharmaceutical players, Isabella Liu comes highly recommended for her comprehensive freedom-to-operate searches, pin-precise drafting and sage advice.
Bird & Bird
Profound industry expertise, superior legal insight and a robust enforcement capacity helps Bird & Bird to stand out on Hong Kong’s IP scene. Tackling instructions sector-by-sector for 20 years now, the ensemble has amassed a vast talent pool that includes stand-out performers in life sciences, aerospace engineering and telecoms. At the reins of the Asia-Pacific life sciences and healthcare group, Alison Wong straddle the contentious/non-contentious divide, confidently handling prosecution, enforcement and licensing briefs for a loyal pharmaceutical and medical device clique. Turning his attention to the global technology and communications sector is aeronautical engineer Ted Chwu. Setting the prosecutor apart, “his genuine understanding of the industry and clear and concise delivery are particular desirable attributes” which are bolstered by “a top-notch analytical ability”. He knows everything about crafting winning specifications, which he then files “with a strategic and commercial mindset”. With Chwu, Asia IP group captain Matthew Laight advised the Hong Kong government on a new patent system for the territory – the pair were the only external advisers retained for the task. A veteran litigator who has practised in the regional IP scene for 25 years, Laight combines a way with words with a clear head to guarantee his clients a winning performance in the courtroom.
Deacons
Home to a band of “superb attorneys who excel in both the technical and commercial aspects of patent work”, Deacons is a pre-eminent name that amasses talent from Australia, China, Europe and the United Kingdom to wield significant influence on the international stage. The hands-on leader of the patents and designs group, Catherine Zheng contributes her talents across reams of contentious and non-contentious instructions; she wins high acclaim for masterminding and executing complex strategies in high-stakes disputes. Alongside Zheng, Charmaine Koo has a remarkable talent for enforcement and transactional matters. Qualified to practise in Hong Kong, Canada, and the United Kingdom, The IP co-head boasts first-class credentials. Overseeing valuable portfolios is Jeffrey McLean’s metier. Newly elevated to the partnership, the hawk-eyed, Trans-Tasman patent attorney “takes time to get to the bottom of technology”, builds long-term relationships, then delivers “unparalleled support and assistance”. IAM Patent 1000 debutant Ian Liu is a go-to for UK and Chinese patent drafting. Armed with qualifications in electrical engineering and computer science from the prestigious Imperial College London and Massachusetts Institute of Technology, he combines this with remarkable legal skills to secure protection that sticks.
Eagle IP Ltd
Positioning itself as a partner to start-ups seeking to maximise value from their innovation, Eagle IP is a reliable conduit to the United States and Asia, and a proficient actor domestically. “Replete with Chinese, Hong Kong and US expertise”, the ensemble diligently prosecutes patents of diverse technical origin, complementing this with a supplementary funding matching service to give its core following the best chance possible. An ongoing alliance with a New York law firm opens yet more doors across the Pacific, making the troop a uniquely attractive prospect for local clients with their eyes on the big leagues. Presiding over the enterprising offering, Jacqueline Lui is an expert in cell biology, whose technical savvy extends into material science and engineering fields. She is vastly experienced in assisting Asian, European and US companies to strategise and obtain patents.
Hogan Lovells
A regionally attuned one-stop patent service provider, Hogan Lovells offers high-quality and dependable strategies for portfolio management, litigation and transactions. Drawing on the technical nous on offer locally and within the group’s international network, the collective ensures that no matter how challenging the instruction, it is met with proactivity, dedication and talent. Andrew Cobden showcases this cooperation perfectly; collaborating with the Tokyo office, he has been presiding over several local and regional disputes and challenges faced by Otsuka Pharmaceutical relating to its Abilify drug. Having accumulated valuable cultural and legal savvy over a 25-year career spent on three different continents, the experienced IP veteran has seen everything there is to see in IP law and deploys his worldly wisdom to superb effect.
Jones Day
Though many of the region’s most complex instructions are handled by colleagues in China, Jones Day’s Hong Kong office is an outstanding choice for high-stakes patent disputes. Delivering a masterclass in how to deal with contentious proceedings, local litigators Chiang Ling Li and Haifeng Huang are a formidable duo in infringement proceedings. Most renowned for her carefully crafted and executed Chinese enforcement campaign for Weir Minerals, Li is also often called on to conduct due diligence exercises. Huang, meanwhile, recently won decisive victories for Qualcomm in 17 infringement matters against Meizu Technology; the methodical strategist was also the driving force behind a campaign that involved Jones Day’s San Diego and Washington offices alongside multiple local Chinese law firms. Earning praise both for its “excellent professionals” and a renowned “11th hour filing service”, IP boutique Letters & Thoo maintains “a pursuit of perfection that ensures clients’ interests are maximised”. “Remarkably cognisant of patent law in Hong Kong, Australia and internationally, Timothy Letters and Laurence Thoo think laterally to develop potent strategies for unravelling knotty situations. Prompt, precise and maintaining an unwavering attention to detail, both are capable of taking advantage of commercialisation opportunities that others might struggle to recognise.” Letters is a skilled prosecutor who boasts expertise in “resolving Chinese filing conundrums swiftly” and leaves his patrons elated. A champion of emerging start-ups, Laurence is “unwaveringly dedicated to nurturing portfolios and offers insightful input into companies’ decision-making processes”.
Marks & Clerk Hong Kong
With a 14-strong team qualified across seven different jurisdictions, Marks & Clerk continues to turn heads locally with its impressive, commercially focused prosecution capacity. The Hong Kong team boasts substantial expertise in biotech, electronics and mechanics, which is bolstered by groups across its Asian and European network; as a result, few instructions hold any trepidation for the local office and its commander Michael Lin. Having spent time in-house with a big brand consumer goods name, he knows how to devise business-conscious strategies that realise value from regional portfolios. Heavily entrenched in the local start-up scene, he also takes time to ensure rock-solid protection for burgeoning businesses and individual innovators. Mike Flint takes point on the electronics side of the practice. With ample experience in the courtroom and at the negotiating table, the Trans-Tasman patent attorney knows what makes a good patent and channels this understanding to draft airtight protection.
Mayer Brown JSM
Renowned general IP practice Mayer Brown JSM is always evolving as a patent litigation and transactions powerhouse. The addition of two new lawyers has strengthened the local line-up, while a fast-growing following among Hong Kong start-ups reflects the focus of global IP co-head Gabriela Kennedy. A dab hand at unpacking complex technologies and building up portfolios from scratch, she is in high demand at the Hong Kong Science & Technology Parks Corporation’s start-up incubator programme; her team is the sole service provider for at least six emerging businesses. For these players and many others, Kennedy’s commercial acumen is an asset in high-stakes licensing deals; she is also a familiar face in contentious encounters before the High Court of Hong Kong.
Morrison & Foerster LLP
Astonishing life sciences firepower and a robust Chinese-language faculty have enabled Morrison & Foerster to carve out a niche for itself as one of Hong Kong’s premium representatives in IP-rich biotech, pharmaceutical and medical device deals and disputes. Heading the practice is Gordon Milner, a technology transfer and licensing guru who broadens the side’s technical focus through his passion for open-source software-related issues. Leading a booming arbitration practice, Craig Celniker stands out for his Asian dispute resolution nous. Having participated in 80 arbitrations before tribunals in China, France, Hong Kong, Japan, Singapore, the United Kingdom and the United States, he knows the best way around a dispute without ever stepping foot in the courtroom. He recently joined the local ensemble after spending a decade at Morrison & Foerster Tokyo. He continues to make frequent trips to Singapore and Tokyo to maintain his impressive regional ties.
Norton Rose Fulbright Hong Kong
Best known for its remarkable trademark practice, Norton Rose Fulbright Hong Kong deploys its shrewd strategic vision in the patent domain as well. At the helm of the dynamic practice, Justin Davidson carries with him experience working in Hong Kong and London; his understanding of the nuances of both Eastern and Western business cultures are an asset to multinationals of any technical persuasion. Au fait with the contentious and non-contentious aspects of intellectual property, he boasts razor-sharp business acumen that attracts the repeat patronage of technology and life sciences companies.
Wilkinson & Grist
Over more than a century in practice, Wilkinson & Grist’s IP department has flourished in tandem with the local scene, which values its all-encompassing patent service. Fully bilingual lawyers, technical staff and Chinese patent attorneys take a resolutely commercial and client-friendly approach when navigating the Greater China patent landscape. The first Hong Kong firm to establish an IP agency in China, the set opens a number of doors for patrons seeking protection and dispute resolution on the mainland. Commercially astute strategist Andrea Fong carries the portfolio management burden for a shortlist of major players, including Gibson Innovations and the Hong Kong University of Science and Technology. A familiar face in Hong Kong courts, she fights tooth and nail in infringement matters. Former Licensing Executives Society International president and 30-year IP veteran Yvonne Chua is a dab hand at realising value from innovation. When not striking bargains for rights holders, she sits on the Hong Kong government Special Working Group on IP Trading.

Luminaries

Ella Cheong - Ella Cheong & Alan Chiu, Solicitors & Notaries
Henry Wheare - Nixon Peabody CWL

Individuals: transactions

Richard Bird - Freshfields Bruckhaus Deringer LLP
James F Brelsford - Independent Consultant
Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
Ted Chwu - Bird & Bird
Andrew Cobden - Hogan Lovells
Justin Davidson - Norton Rose Fulbright Hong Kong
Gabriela Kennedy - Mayer Brown JSM
Timothy Letters - Letters & Thoo
Chiang Ling Li - Jones Day
Isabella Liu - Baker McKenzie
Gordon A Milner - Morrison & Foerster LLP
Alison Wong - Bird & Bird
Catherine Zheng - Deacons

Individuals: prosecution

Ewan Bewley - inCompass IP
Ted Chwu - Bird & Bird
Mike Flint - Marks & Clerk Hong Kong
Andrea Fong - Wilkinson & Grist
Charles Ho - Barron & Young Intellectual Property Ltd
Robert Jackson - Spruson & Ferguson
Hans Lee - FitzGerald Lawyers
Timothy Letters - Letters & Thoo
Michael Lin - Marks & Clerk Hong Kong
Jacqueline C Lui - Eagle IP Ltd
Jeffrey McLean - Deacons
Laurence Thoo - Letters & Thoo

Individuals: litigation

Matthew Laight - Bird & Bird
Chiang Ling Li - Jones Day
Catherine Zheng - Deacons
Craig I Celniker - Morrison & Foerster LLP
Andrew Cobden - Hogan Lovells
Haifeng Huang - Jones Day
Gabriela Kennedy - Mayer Brown JSM
Charmaine Koo - Deacons
Ian Liu - Deacons
Isabella Liu - Baker McKenzie
Alison Wong - Bird & Bird
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Issue 91