Hong Kong

Hong Kong may be Asia’s premier financial hub, but hitherto it has lacked a reputation for innovation and invention. However, government proposals announced in 2015 suggest a willingness to remedy this state of affairs; an original grant scheme will be introduced for applicants and the examination system for short-term patents will be overhauled. It is hoped that the changes will revitalise the creative economy of the Special Administrative Region. Though mainland players continue to extend their influence in the city, international Western outfits still enjoy most of the business; but only time will tell how these trends play out.

Firms: litigation and transactions

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

Firms: prosecution

Highly recommended
Recommended
H
Deacons
Eagle IP Ltd
Ella Cheong Law Office
Nixon Peabody CWL
Vivien Chan & Co
Wilkinson & Grist
Baker & McKenzie
A central cog in the firm’s sweeping international network, Baker & McKenzie’s Hong Kong outpost works in concord with its offices throughout Greater China to provide joined-up patenting solutions to the world’s most demanding companies. Clients appreciate its “unparalleled understanding of Chinese law” and peerless geographical reach. Able to orchestrate cross-border litigation with aplomb, the savvy team is also a font of transactional wisdom. Recent work has involved the shrewd orchestration of major chemical, IT and software infringement suits for industry heavyweights. Vastly experienced in pharmaceutical matters on the mainland, Isabella Liu is a crucial ally for local stakeholders in need of top-tier licensing and due diligence services.
Bird & Bird

A real mover and shaker on the global IP scene, Bird & Bird has any number of up tricks up its sleeve for clients. Confident and willing to go the extra mile, it has positioned itself as a springboard for investors and innovators keen to break into the Chinese market. World renowned for its contentious and transactional prowess, the set also boasts a “technically superior” prosecution – a rarity for a global entity of its scale. Alongside a long list of pharmaceutical magi, IP-rich clients such as Gibson Innovations have entrusted it with large portfolios in fields from high technology to consumer electronics. Head of Bird’s Asia-Pacific IP practice Matthew Laight is “singularly excellent in his ability to keep a cool head in the most trying of situations. He is simply one of the best in the entire region”. Partner Alison Wong has chalked up a pristine track record of wins in multiple countries for innovative pharmaceutical companies, medical devices manufacturers and consumer goods purveyors. IAM Patent 1000 newcomer and aeronautical engineer Ted Chwu helms the impressive prosecution practice.

Deacons
Having grown in tandem with the city, Deacons continues its historic legacy of excellence, serving up cutting-edge solutions to companies’ needs. The robust IP group benefits from a dazzling array of intramural corporate expertise; this deep talent pool makes the set ideally placed to handle all manner of contentious and non-contentious mandates. Fully multilingual and internationally experienced, its lawyers and patent attorneys are familiar faces in successful cross-border campaigns. It has “the flexibility of a small group, but the capability of any other global firm”. A former examiner at the Australian Patent Office, Jeffrey McLean is highly sought after for his IT prowess. Catherine Zheng makes a well-earned debut in the IAM Patent 1000 for 2016. A “treasured ally in any issues in China”, she made waves in 2015 facilitating a massive $1.8 billion technology transfer deal for JAC Capital.
DLA Piper Hong Kong
By investing in boots on the ground across Asia, US-based international behemoth DLA Piper has made significant inroads into the Greater Chinese market. Working in conjunction with its Beijing and Shanghai offices, the Hong Kong branch serves as a key centre of competence for its prestigious international clientele. The group is a frequent fixture in high-stakes pan-Asian litigation battles and complex cross-border transactional engagements. Horace Lam is a key contact.
Eagle IP Ltd
Compact boutique Eagle IP is a prime pick for patent holders seeking a personalised service and technical precision. The acclaimed set has a reputation for methodical drafting and the savvy management of filings throughout Greater China. Informed by US experience and engagement with Chinese law, it presents truly holistic international solutions. Firm president Jacqueline Lui is highly sought after for her clairvoyant IP strategising and expansive legal knowledge of foreign and domestic jurisdictions.
Ella Cheong Law Office
Asia-Pacific powerhouse Ella Cheong delighted clients of all stripes with its shrewd licensing counsel and advanced prosecution strategies. The team of 20 fee earners has a commanding knowledge of the intricacies of Chinese patent law. Boasting significant transactional prowess, it also consistently delivers in opposition and invalidation proceedings in a variety of jurisdictions. A trailblazer in the IP space for over three decades, firm namesake Ella Cheong is a tenacious advocate and a thought leader in many legal associations throughout the region.
Hogan Lovells
Working in sync with its mainland Chinese offices, the Hong Kong outpost of Hogan Lovells serves as a gateway to Asia for a slew of impressive multinationals. Bolstered by the addition of three partner-level attorneys from Mayer Brown JSM last year, no area of technology or legal expertise is beyond the reach of this multilingual outfit. Recent highlights include an infringement action on behalf of Traxaas against Hong Kong-based electronic devices entity. Elder statesman and cross-border superstar Henry Wheare is a sage counsellor and a safe pair of hands. Andrew Cobden brings a quarter of a century’s worth of experience in chemistry and electronics to bear in commercially significant matters. New kid on the block Alan Chiu is a celebrated courtroom sharpshooter with a thriving enforcement practice.
Jones Day
Jones Day ascends to the gold tier of the IAM Patent 1000 this year thanks to full-bodied client endorsements. Fully integrated within the firm’s global constellation, the transaction and litigation dynamo houses four partners dedicated exclusively to patent practice. The future-proofed advice it dispenses makes it a firm favourite of top US pharmaceutical companies and IT enterprises doing business in China. The guardian of Weir’s rubber fabrication and heavy machinery patent portfolios, Chiang Ling Li is an esteemed lawyer with a real facility for fending off attacks. Haifeng Huang has carved a niche on the Chinese litigation scene, routinely appearing in must-win infringement and invalidation battles. Inking multimillion-dollar technology transfer deals is the metier of Anita Leung. For 20 years, she has assisted entities in lobbying for ambitious legislative reforms. Compact but potent ensemble Letters & Thoo enters the Hong Kong tables for the first time this year. The burgeoning firm has a reputation for adding value throughout the patent lifecycle; as such, it has captured a respectable share of the national prosecution market. With acclaimed practitioners Timothy Letters and Laurence Thoo at the helm, the outfit is best known for its “smart, scalable and flexible” advice. “Guiding my early-stage technologies through the challenging initial period, Timothy and Lawrence provided commercially relevant and responsive counsel,” enthused one client. “They are both excellent listeners and intensely well versed in the law.” Letters handles the biotechnology side of the practice, while Thoo is a capable strategist for all things electrical. Prolific drafter Marks & Clerk is shot through with quality. An invaluable link in the chain to China and Southeast Asia, the illustrious group ably covers the full spectrum of technology for its sophisticated clientele. A diverse collection of “technically gifted” practitioners provide a 360 view of patent strategy, thanks to their experience across multiple jurisdictions. Former in-house counsel and biotechnology whizz Michael Lin is a go-to adviser for pharmaceutical and mechanical patents. On the electronics and telecommunications side, Asian Patent Attorneys Association council member Mike Flint is in high demand for his prodigious filing capabilities.
Mayer Brown JSM
Riding a wave of recommendations, Mayer Brown JSM rises to the top tier of the litigation and transactions table in this year’s IAM Patent 1000. Hailed by many as the city’s best home-grown law firm for intellectual property, it has attracted the patronage of marquee names from all over the world. While formerly best known for prosecution, ongoing investment in its contentious wing has given it real firepower in fierce infringement suits; recent wins for construction industry titan Chun Wo-CRGL Joint Venture Industry and Changzhou Kaidi Electrical Co are but two highlights. Outstanding practitioner Gabriela Kennedy leads the Asia IP and TMT divisions. A star of the trademark world, she is also highly sought after in Chinese and US markets for her silky negotiation of patent licensing agreements.
Morrison & Foerster LLP
Morrison & Foerster makes its debut in the Hong Kong listings for 2016. Having won the hearts of Fortune 500 concerns in the United States for decades, the Chinese contingent has built up a heady litigation and licensing offering in the Far East. Clients such as Tencent and Ally Bridge Group appreciate its ability to guide companies through China’s regulatory labyrinth. Practice head Gordon Milner takes a bow in the guide for the first time on the back of his superb handling of technology transfer projects involving international parties.
Nixon Peabody CWL
Late in 2015, Hong Kong prosecution shop CWL Partners partnered with Boston headquartered Nixon Peabody to form a potent new legal entity. Prosecution is a mainstay; the meticulous drafting of consumer electronics and mechanical devices patents is a key differentiator. “One of the best technical minds in the city”, Hans Lee heads the hard IP practice with aplomb. Dually qualified as a solicitor and a patent attorney, he is a favourite of clients from mainland China and overseas for myriad strategic briefs.
Norton Rose Fulbright Hong Kong
Earning promotion this year, Norton Rose Fulbright’s Hong Kong operation continues to keep its clients happy and opposing counsel on their toes. Backed by a staggering global network of legal and corporate resources, the group is best known for the bespoke suite of contentious services it provides for global blue-chips doing battle with Chinese infringers in industries as diverse as pharmaceuticals and mining. The team habitually gets lucrative cross-border licensing agreements over the line for the likes of Aeterna Zentaris. Feted strategist Justin Davidson has racked up key victories in contentious engagements overseas and also enjoys a healthy counselling practice.
Rouse
Omnipresent in Asia, Rouse has unparalleled geographical reach. Shrewd portfolio managers, its lawyers know how best to navigate the idiosyncrasies of the special administrative region. Enforcement is another central plank of the Hong Kong offering; the “personable and communicative” team puts in many robust performances in courtrooms across the land. Adelaide Yu is a key contact.
Vivien Chan & Co
Corporate outfit Vivien Chan & Co is deeply rooted in Chinese patent law. For over three decades, the group has shared its “deep understanding of legal and business issues in China” with clients big and small. A “step ahead of most of the newer firms”, it is one of the first outfits in Hong Kong that can file patents directly to the mainland. Thought leader Vivien Chan has many trophies in the cabinet and takes a big-picture view on crucial mandates.
Wilkinson & Grist
The venerable Wilkinson & Grist continues to evolve to meet the demands of the increasingly complex patent protection world. This multifaceted commercial outfit is a trusted adviser to foreign companies requiring “internationally minded” lawyers. For over 150 years, it has assisted prestigious research institutions and big-time overseas companies with high-stakes litigation and judicious portfolio management briefs. A star in all areas of intellectual property, group head Yvonne Chua is a deft handler of intangible assets. She makes it her mission to derive maximum value from clients’ inventions.

Luminaries

Vivien Chan - Vivien Chan & Co
Ella Cheong - Ella Cheong Law Office

Individuals: prosecution

Ewan Bewley - inCompass IP Ltd
Ted Chwu - Bird & Bird
Mike Flint - Marks & Clerk Hong Kong
Charles Ho - Barron & Young Intellectual Property Ltd
Hans Lee - Nixon Peabody CWL
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 and transactions

Yvonne Chua - Wilkinson & Grist
Justin Davidson - Norton Rose Fulbright Hong Kong
Gabriela Kennedy - Mayer Brown JSM
Matthew Laight - Bird & Bird
Chiang Ling Li - Jones Day
Henry Wheare - Hogan Lovells
Richard Bird - Freshfields Bruckhaus Deringer LLP
James F Brelsford - Skadden Arps Slate Meagher & Flom LLP
Alan Chiu - Hogan Lovells
Andrew Cobden - Hogan Lovells
Haifeng Huang - Jones Day
Cedric Lam - Dorsey & Whitney LLP
Anita Leung - Jones Day
Isabella Liu - Baker & McKenzie
Gordon A Milner - Morrison & Foerster
Alison Wong - Bird & Bird
Barry Joseph Yen - SKYS So Keung Yip & Sin Solicitors
Catherine Zheng - Deacons
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Issue 83