Hong Kong

The Hong Kong government has historically avoided heavy investment in R&D, and while the establishment of the Innovation and Technology Bureau indicates a desire to forge a knowledge-based economy, its efficacy has yet to be seen. Proximity to China fuels much of the IP instructions, although the potential introduction of an original grant patent system should increase local workloads. On the contentious front, the recent confirmation that IP rights are arbitrable in Hong Kong is an important step in enhancing the country’s status as a centre for international dispute resolution, as well as an IP hub.

Firms: litigation and transactions

1
Bird & Bird
Jones Day
2
Baker McKenzie
Deacons
Hogan Lovells
Mayer Brown JSM
Norton Rose Fulbright Hong Kong
3
Morrison & Foerster LLP
Wilkinson & Grist

Firms: prosecution

2
Deacons
Eagle IP Ltd
Wilkinson & Grist
Baker McKenzie
Baker McKenzie’s seamlessly integrated patent practice structure enables the firm to swiftly and shrewdly mobilise its resources across the continent, giving clients what they need, whenever and wherever they need it. The set-up clearly works well; as one client avers: “Of the major law firms in Asia, we choose Baker McKenzie because it has the most experienced and internationally qualified IP team.” The Hong Kong contingent is a crucial cog in this finely oiled international machine, thanks in no small part to Isabella Liu, who “provides timely and professional advice on patent and trademark filing in multiple jurisdictions”. She has a molecular pharmacology and toxicology PhD from the eminent Imperial College London and possesses “a superb ability to understand the most complex technologies”; “she also advises in a way that is very commercial and strategic”.
Bird & Bird
Bird & Bird is widely regarded as a thought leader in the Hong Kong IP market; its appointment as the sole external consultant firm in the government’s review and reform of the local patent system is the best illustration of this. Commentators especially laud the ensemble’s contentious capabilities, stating: “It is always incredibly strong in litigation” and “a market leader in telecommunications cases”. Asia IP head Matthew Laight takes centre stage on high-value multi-jurisdictional cases and leads with poise. “He has a sound strategic mind and has absolutely no problem rolling up his sleeves and digging in deep – always with a smile and good humour.” “He knows how to effectuate winning global strategies in an efficient manner.” As a result of its sector-focused model, the group has a nuanced commercial understanding of many industries, most notably the life sciences. Alison Wong takes the reins of the Asia-Pacific life sciences and healthcare practice and inspires with her dexterous and confident management of unwieldy international patent litigation and astute implementation of IP protection strategies. Ted Chwu is a perspicacious counsellor as well as a straight-shooting litigator, who has been actively involved in the Hong Kong patent system reform effort alongside colleague Laight.
Deacons
Time-honoured firm Deacons “sets the benchmark in Hong Kong when it comes to IP prosecution and litigation”. Its tight-knit prosecution team impresses at every turn, with an overarching focus on quality and building portfolios to withstand the rigours of a globalised marketplace. A former patent office examiner in Australia, Jeffrey McLean is a key contact for all prosecution briefs. The accomplished draftsman has a flair for information technology, but can cross technical divides with ease; pharmaceuticals and biotechnology are other fortes. He has recently been kept busy preparing original patent drafts for a Hong Kong statutory body. As a firm, Deacons is well versed in cross-border litigation strategy and has a real facility for handling disputes within Greater China. Catherine Zheng – who heads the patent and designs practice – recently prevailed in a series of suits in the Middle Kingdom for Pass & Seymour, and has also been acting for Jaguar Land Rover in a design invalidation action against Chinese automotive company Jiangling Motors – a case which has attracted substantial media attention. Zheng is a dynamic force who is tireless in her efforts to protect and enforce the rights of clients.
Eagle IP Ltd
Patent owners are quick to recommend boutique Eagle IP: “Its level of experience and ability to apply a practical global strategy to a portfolio to enhance your business make every interaction a pleasure. It represents great value for money, too – instructing Eagle IP won’t break the bank! The firm’s back office functions perfectly. Every email and instruction is handled in a timely fashion and nothing goes unanswered; and everything that comes back is always extremely clear”. As one client attests: “If I could package the firm’s business skills and apply them to all my other partners, it would make life so much easier.” Providing strong leadership to the group is Jacqueline Lui, “one of, if not the top patent practitioner in Hong Kong”. “She is intimately familiar with patent law and practice in the United States, Singapore, Hong Kong and China, which enables her to provide the most perceptive prosecution and strategy representation. She produces consistently good results.” Also highly rated is Philip Lyren, a former patent quality reviewer at Hewlett-Packard who knows the blueprint for a successful patent. The worldly-wise professional can assist clients in English, French and Thai.
Hogan Lovells
The Hong Kong branch of Hogan Lovells works in perfect harmony with teams in Shanghai, Beijing and further afield to dispense customised solutions for companies looking to protect and enforce their patent rights in Asia. International litigation in the life sciences and high-technology fields is the metier of the local team, which has a slew of high-profile mandates to shout about. Counsel Andrew Cobden is acting for Otsuka against Novartis in a complex case concerning the scope of protection afforded by second medical use patents. Teaming up with Henry Wheare, he is working diligently for Texas-based radio-controlled model vehicle manufacturer Traxxas against a Hong Kong-based company. Unusually, the court has been asked to decide on infringement not only of Traxxas’s patent, but also of its equivalent Chinese patent. Both Cobden and Wheare are globally minded and vastly experienced IP professionals who can be trusted with crown-jewel patent assets.
Jones Day
Jones Day’s practitioners deliver top results for multinationals in high-stakes patent litigation and lucrative transactional negotiations, particularly where Chinese elements are involved. The team showcased its sophisticated strategic nous in a recent multi-layered case for Weir Minerals, in which it lobbied Chinese national and local public security bureaux to raid various trade secret infringers; this resulted in the imprisonment of a major infringer as well as the closure of factories, wholesalers and retailers. Chiang Ling Li masterminded this campaign; she is a zealous advocate and is among the most seasoned China IP litigators and deal brokers. She frequently collaborates with fellow partner Haifeng Huang; he oversees desks in Hong Kong and Beijing, and is one of the busiest litigators in the business. When serious firepower is needed, these two emphatically deliver. “A great resource for people that want to obtain practically useful patents”, prosecution specialist Letters & Thoo garners some of the most effusive client feedback of any IP firm in Hong Kong. “The firm is extremely reasonable when it comes to fee arrangements and, though not the cheapest, it definitely represents value for money. Where other firms do whatever they can to bring revenue in, Letters & Thoo puts the customer first and works in your best interests.” The group’s practitioners exhibit an “outstanding technical understanding” and provide “clear, commercially focused and timely advice”. Timothy Letters and Laurence Thoo are “approachable and personable people who are genuinely adept in their craft and do an honest trade for their clients at the same time”. International prosecution strategist Letters is an “incredibly experienced patent attorney”; “the quality of his work always exceeds expectations”. Of late he has been advising the Hong Kong Hospital Authority on generic drug procurement. Thoo is described as “more a part of your team than just another service vendor. He takes a long-term view and supports your growth in considerable ways. When you create a new design concept that might not have an immediately obvious patent opportunity, he can spot a new angle and turn around a successful patent application”. As one respondent enthuses, Thoo “always acknowledges my applications quickly” and offers a “late-night filing service, which is unique. I am not aware of anyone else in Hong Kong who provides that”. Expert craftsmanship is what attracts innovators to Marks & Clerk; the patents it secures are quality rights that businesses can get a lot of commercial mileage from. Its cosmopolitan Hong Kong team includes 14 practitioners with backgrounds in various jurisdictions, including Australia, New Zealand, China, Germany, the United Kingdom and the United States; as a result, patent protection is always approached from an international perspective. Michael Lin is the pick of the pack: he is a biotechnology guru with Silicon Valley lab and multinational in-house experience on his résumé. He steers the Hong Kong and Beijing life sciences practice with a steady hand, but still finds the time to travel and meet clients in person. Lin is also a prominent figure in the IP community: he has frequent speaking engagements and actively participates in industry associations. His counterpart on the electronics and telecommunications side is Mike Flint, who makes clever use of his contentious experience to draft and prosecute robust patent applications.
Mayer Brown JSM
Mayer Brown JSM is ideally placed to counsel Chinese clients on outbound investments in the United States and provides outstanding representation in Section 337 investigations at the International Trade Commission (ITC) in Washington DC. Effectively deploying its extensive US and Asian resources, the firm is acting for Guangdong Alison Hi-Tech in an ITC matter against Aspen Aerogels. It also recently prevailed for Zhejiang Medicine in another ITC case in which it secured a summary judgment for non-infringement. While the firm is clearly accomplished in ITC affairs, it also has a substantial Asia IP practice. The squad is led by IP doyenne Gabriela Kennedy, who is very active locally for both patent and trademark clients and dispenses sharp strategic guidance on protection, licensing and enforcement.
Morrison & Foerster LLP
US powerhouse Morrison & Foerster has been providing a first-class commercial and IP transactions service to Chinese and international clients from its Hong Kong base for over 30 years; the firm is well known and widely respected both locally and across Asia. IP and technology transactions authority Gordon Milner has lately got signatures on the bottom line of multiple significant deals; for example, he assisted AccuWeather with licensing matters relating to its joint venture with Huafeng Media Group and helped Intel to forge a strategic technical design and supply relationship with leading Chinese fabless semiconductor company Spreadtrum. With his slick negotiation skills, he gets those across the table on board through his vision of what a deal should look like and can formulate unique strategies which take clients down the most commercially advantageous path. Alongside the firm’s cutting-edge transactional practice sits a patent litigation division ready to deploy at a moment’s notice in China and the United States. The group also maintains a healthy prosecution workload, primarily in the support of Chinese and Hong Kong life sciences entities.
Norton Rose Fulbright Hong Kong
Norton Rose Fulbright, one of the world’s top business law firms, recently expanded its Hong Kong contingent with the recruitment of a new technology and innovation partner, Anna Gamvros; she has given the set greater breadth as it develops its China and Hong Kong IP practice. Gamvros joins a side captained by Justin Davidson, one of the most popular IP professionals in Hong Kong. Proficient in all aspects of the protection, commercial exploitation and enforcement of patents, “Justin takes a practical and hands-on approach; he is a down-to-earth guy who is extremely knowledgeable about strategy”. He has been increasingly engaged in patent litigation in China – and across the region – by leading life sciences companies, as well as top players in high-technology areas such as semiconductors.
Wilkinson & Grist

“Wilkinson & Grist provides an exemplary service and identifies optimal strategies for the protection of intellectual property. Its lawyers work with exceptional diligence and are valuable partners.” Within the firm’s large IP group sits a dedicated patent crew, which is well equipped with lawyers, China patent agents, paralegals and technical specialists. While there is plenty of contentious work for the team to sink its teeth into, prosecution and portfolio management instructions are proving particularly abundant. The firm has made the representation of universities and research institutions something of a specialty and regularly processes applications for the Hong Kong University of Science and Technology and the Hong Kong Polytechnic University. The main contact on these projects is dependable IP section leader Andrea Fong, who debuts in the IAM Patent 1000 this year. Knowledgeable about both patents and trademarks, she is a far-sighted all-round IP sage. A solicitor and notary public, Yvonne Chua wields over 35 years of IP law experience. Over a glittering career, the sharpened litigator has handled a plethora of sophisticated cross border issues.

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
Hans Lee - You Yi International Intellectual Property Services Limited
Timothy Letters - Letters & Thoo
Michael Lin - Marks & Clerk Hong Kong
Jacqueline C Lui - Eagle IP Ltd
Philip Lyren - Eagle IP Ltd
Jeffrey McLean - Deacons
Laurence Thoo - Letters & Thoo

Individuals: litigation and transactions

Justin Davidson - Norton Rose Fulbright Hong Kong
Matthew Laight - Bird & Bird
Chiang Ling Li - Jones Day
Catherine Zheng - Deacons
Richard Bird - Freshfields Bruckhaus Deringer LLP
James F Brelsford - Skadden Arps Slate Meagher & Flom LLP
Alan Chiu - Ella Cheong & Alan Chiu Solicitors & Notaries
Yvonne Chua - Wilkinson & Grist
Andrew Cobden - Hogan Lovells
Haifeng Huang - Jones Day
Gabriela Kennedy - Mayer Brown JSM
Isabella Liu - Baker McKenzie
Gordon A Milner - Morrison & Foerster LLP
Henry Wheare - Hogan Lovells
Alison Wong - Bird & Bird
Barry Joseph Yen - SKYS So Keung Yip & Sin Solicitors
Close

Register for more free content

  • Read more IAM blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 84