China: Foreign

International firms are waking up to just how crucial it is to have a physical presence in China, which is the main reason behind the expansion of this chapter. More and more organisations are taking advantage of the benefits of joint ventures with domestic law firms, as this allows them to offer local litigation services – early adopters of this structure include Baker McKenzie, Clyde & Co, Hogan Lovells, Rouse and, most recently, Allen & Overy LLP. Amid the uncertainties of the US-China trade war, the Chinese government has identified intellectual property as a core element of the country’s national strategy going forward. The fourth amendment to China’s Patent Law was approved by the Standing Committee of the National People’s Congress on 17 October 2020, 12 years after it was last updated. The new amendment will bring Chinese patent law more into line with international practice, with changes due to take effect on 1 June 2021.

Firms

  • Allen & Overy LLP
  • AWA Asia 
  • Baker McKenzie
  • Bird & Bird LLP
  • CMS 
  • DLA Piper
  • Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 
  • Gowling WLG
  • Hogan Lovells
  • Jones Day
  • Kilpatrick Townsend & Stockton LLP
  • Lau, Horton & Wise LLP
  • Morgan, Lewis & Bockius LLP
  • Orrick, Herrington & Sutcliffe LLP
  • Perkins Coie LLP
  • Ropes & Gray LLP
  • Rouse
  • Simmons & Simmons LLP
  • Spruson & Ferguson

Allen & Overy LLP

Magic Circle firm Allen & Overy LLP entered the Patent 1000’s China table last year following the announcement of a joint operation with Shanghai Lang Yue Law Firm, enabling the team to represent clients before mainland courts and to provide seamless services across the region. A high-profile mix of local and international corporations in the technology, media and telecommunications, life sciences and industrial engineering sectors enlist the help of Allen & Overy when it comes to complex litigation, dispute arbitration, transactional issues and advisory work. Committed to playing a leading role in the strive for diversity and inclusion, the outfit has several initiatives to promote racial, gender and LGBTQ+ equality across its network.

AWA Asia 

“Responsive and diligent” AWA Asia is “always quick to answer and clearly lay out recommended legal strategies”, making the firm a pleasure to work with according to foreign associates. With a focus on bridging Europe with Asia, the Western-educated, bilingual team has achieved great success under the leadership of trademark expert and client favourite Ai-Leen Lim. On the patent side, a team of six tackles drafting, M&A, enforcement and landscape analysis with flair and a personable touch “unusual amongst ’formal’ patent attorneys and IP lawyers”. A number of Swedish companies have gone so far as to entrust AWA Asia with their whole patent portfolios, while one major future initiative firm is to continue to develop expertise in the life sciences field. One of the first patent litigators to be registered with the Supreme People’s Court, Xiaofan Chen effortlessly straddles the contentious and non-contentious divide.

Baker McKenzie

Companies searching for a one-stop shop for China IP matters need look no further than the well-rounded team at Baker McKenzie. The group guides clients through IP creation, commercialisation and exploitation from offices in Beijing and Shanghai. Unlike many of their competitors, Baker McKenzie can provide high-end local litigation services through a joint venture with PRC firm FenXun Partners. Two of the side’s leading lights are based in Shanghai: Clement Ngai specialises in pharmaceutical regulatory issues and technology transactions, while Binxin Li has a stellar track record when it comes to patent disputes.

Bird & Bird LLP

Bird & Bird has built up a wealth of experience working in China and Hong Kong over the past two decades, offering its services to multinationals with both specific and broad IP needs. The team is especially renowned for its work in the high-tech space and was the only external advisor to the Hong Kong government on the development of the city’s new patent system, which was introduced in December 2019. Department co-head Christine Yiu has proven herself a valuable asset to businesses in cross-border disputes, frequently advising multinationals on patent transfers and licensing transactions.

CMS 

The largest law firm in Europe, CMS has more than 70 offices across the globe. In China, the skilled team is led by Nick Beckett who works closely with colleagues at the newly established Hong Kong IP practice to offer comprehensive patent services throughout the Greater China region. The group’s capacity was recently bolstered with the addition of an internationally experienced qualified Chinese patent attorney. A total of four partners and five associates are supported by a technology and innovation centre, which assists on patent analysis, freedom to operate and validity searches. What impresses foreign associates is “Nick and his team’s advice that is consistently clear and always leaves clients satisfied with the scope and the fees”, leading them to “wholeheartedly recommend their services”. Beckett himself is described as “very pragmatic and proactive with an excellent grasp of the science and relevant sector, as well as the patent prosecution process. He has the ability to bring out the key decision points without getting bogged down in the science so that non-scientists can make the best decisions.”

DLA Piper

DLA Piper’s China enforcement and transactions practices are well regarded on a global level. Businesses from a wide range of industries approach the regional head of patents, William (Skip) Fisher, for help with IP protection and enforcement as well as negotiating and drafting IP licenses. He has a strong legal background with more than two decades of experience practising in the United States, China and internationally. All-round expertise allows him to craft integrated strategies for multinationals that leverage patent, design and trademark rights in concert.

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 

Finnegan’s small but effective Shanghai-based team works closely with colleagues in Washington to assist Chinese inventors with patent prosecution in the United States. The group also boasts expertise in licensing and tech transfer agreements. A superb strategist, Ningling Wang takes the lead on patent related issues across diverse industries. Familiar with the ins and outs of US IP law, Wang effortlessly handles Chinese invalidation proceedings akin to inter partes reviews.

Gowling WLG

The first foreign firm to file a patent application in China in 1985, Gowling WLG has developed a strong network in the country. It established an on-the-ground presence in 2008 with an office in Guangzhou and more recently expanded its reach with an additional outpost in Beijing. A mix of domestic clients and world-leading multinationals take advantage of Gowling’s comprehensive IP services. “An understanding of the needs of international clients, knowledge of the field of law and local conditions, personal partner involvement and a solution-oriented approach” make it stand out from the crowd. Jian Xu instils confidence in foreign associates as leader of the China patent filing and prosecution group: “Jian is not only always very responsive, but succeeds in giving us and our clients a good understanding of the – for Europeans sometimes unusual – specifics of Chinese IP law. With him and his team we successfully pursued the interests of our clients in several difficult situations. He and his team are certainly a key contact to turn to for these matters in China.” Now based in London, Jamie Rowlands continues to provide hands-on support for China-related matters. The firm recently unveiled star practitioner Elliot Papageorgiou as its new signing. He is celebrated for his strategic nous and business acumen.

Hogan Lovells

Hogan Lovells’ China branch lives up to the high standard clients have come to expect from the global giant. Since 2016, it offers another huge advantage to its enviable clientele; its association with Fujian Fidelity Law Firm makes it one of a select group of foreign outfits with local litigation capabilities. A compact, dedicated team of practitioners boasting technical qualifications works full time on patent matters with the support of numerous other legal professionals. Admitted in China and New York, star litigator Zhen (Katie) Feng does not shy away from even the most complex of patent issues.

Jones Day

US law firm Jones Day’s nearly 20 IP-focused lawyers based in the Greater China region advise domestic clients in US and Chinese patent infringement suits. Although working across a variety of different sectors, life sciences has come to be one of the bilingual team’s specialties. The multi-talented Tony Chen is passionate about spreading IP awareness and does so as a member of the US-China IP Cooperation Dialogue, an initiative of the US Chamber of Commerce and Renmin University. Top-ranked in both the litigation and transactions table, Chen skilfully navigates cross-border issues.

Kilpatrick Townsend & Stockton LLP

Kilpatrick Townsend & Stockton dedicates itself to supporting primarily Chinese companies from a range of industries with an interest in the United States. With an excellent grasp of US laws and regulations in addition to a deep local cultural understanding, the firm offers tailored advice on patent matters such as portfolio strategy, litigation and prosecution. Technology heavyweights Huawei and Oppo are two companies convinced by the immense competence of the team, which operates out of offices in Shanghai and Beijing. Litigator Kristopher Reed is the go-to person for International Trade Commission (ITC) Section 337 matters, while fluent Mandarin speaker Charles Gray focuses on patent counselling and prosecution for Chinese companies.

Morgan, Lewis & Bockius LLP

A team of six at Morgan Lewis & Bockius supports a largely Chinese clientele in US IP matters. No matter is too big, as the group is backed by a network of 200 IP professionals and so excels in everything from litigation and prosecution to IP due diligence. Clients in need of US patent dispute advice turn to tech-focused Shaobin Zhu who has plenty of experience with Section 337 investigations at the ITC. Meanwhile, Yalei Sun spends equal amounts of time in Silicon Valley and Beijing, helping big-name Chinese companies with patent drafting and filing.

Orrick, Herrington & Sutcliffe LLP

“A relative newcomer to the China market but with a strong reputation in the United States,” Orrick, Herrington & Sutcliffe offers comprehensive patent services but is especially known for its outbound practice. Local clients with patent infringement or trade secret misappropriation issues benefit from the firm’s experience at the ITC and US federal courts. Respected lawyer Xiang Wang heads the IP practice in China and has mastered the area of IP disputes. Educated in the United States and China, Yufeng (Ethan) Ma advises clients on a broad range of IP matters and frequently assists with big-ticket litigation in the United States.

Perkins Coie LLP

Now a sophomore in the IAM Patent 1000, Perkins Coie continues to grow its China practice. Sixteen team members based in Shanghai and Beijing help multinationals to procure, maintain and enforce IP rights in China, while also guiding Chinese clients through patent matters in the United States. Under the leadership of reliable China IP head Scott Palmer, who joined the firm in 2018, the practice has achieved great success. Having spent his nearly two decade-long legal career in the country, the fluent Mandarin speaker has acquired solid local knowledge, which serves him well in his work on in-bound enforcement matters. Yingli Wang’s practice focuses on the biotechnology and polymer/material industry. Wang has led the patent practice since 2019.

Ropes & Gray LLP

Now with an on-the-ground presence across three continents, Ropes & Gray has been tending to clients’ every IP need for more than 150 years. Managing partner Geoffrey Lin oversees the highly regarded Shanghai office. His in-depth life sciences and high-tech sector knowledge has earned him deep respect from his peers and he can often be found dispensing effective licensing and negotiations advice in cases involving many millions of dollars. Global companies, as well as famous domestic businesses, enjoy the benefits of his outstanding commercial sense.

Rouse

In 1993, Rouse became the first global IP firm to set up an office in China. It now has a strong presence across the country, with offices in Beijing, Guangzhou, Shanghai and Shenzhen. The side has traditionally catered to a largely international clientele, but in recent years the team of 20 has been strengthening its domestic client base, which now includes numerous high-tech companies. Together with Lusheng Law Firm, Rouse provides the full gamut of IP services, including prosecution, litigation and transactions. Ling Jin is favoured by large international corporations for her nuanced IP portfolio analyses and multi-jurisdicitonal patent landscape searches. A relentless litigator, Sharon Qiao has over 20 years of experience in intellectual property. She tackles complex contentious issues, most recently one for Hansgrohe SE which was selected among the top 10 IP cases of 2019 by courts in China’s commercially important Zhejiang province.

Simmons & Simmons LLP

A physical presence in Shanghai, Beijing, Shenzhen and Hong Kong combined with 40 years of experience in the region makes Simmons & Simmons an obvious choice for foreign clients, including Fortune 500 companies, when it comes to patent services. Design patents are a particular forte. Multinational corporations have no qualms about leaving their valuable intangible assets in the capable hands of George Chan, while clients in the pharmaceutical industry rely on his extensive experience in life sciences and licensing matters.

Spruson & Ferguson

Well known in Asia-Pacific IP circles, Australian firm Spruson & Ferguson is a name synonymous with quality. The Beijing patent team consists of eight highly qualified patent professionals who collaborate closely with colleagues internationally and with exclusive alliance partner Beijing Pat SF Intelectual Property Agency. Patent prosecution is where the firm really stands out from the competition. Life sciences-focused Oliver Lutze spent 15 years working in-house for a large German pharmaceutical company, experience that he now utilises at Spruson & Ferguson where he is the China country manager and an integral part of the chemical and life sciences team.

Other recommended experts

Timothy Bickham oversees Steptoe & Johnson LLP’s China IP and litigation group. Representing some of Asia’s largest companies, he handles high-stakes disputes before the ITC and district courts, navigating cross-border matters with ease. Harold Johnson solves patent disputes at Brinks Gilson & Lione’s Shenzhen office, where he is the managing partner. Splitting her time between San Francisco and Shanghai, Covington & Burling LLP’s Weishi Li is a recognised expert on life sciences and pharmaceutical-related transactional matters. Over at Fish & Richardson, Ryan McCarthy is an invaluable asset to Chinese businesses in need of guidance on US patent issues.

Individuals: litigation

  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Xiang Wang - Orrick, Herrington & Sutcliffe LLP
  • Nick Beckett - CMS China
  • Timothy Bickham - Steptoe & Johnson LLP 
  • Tony Chen - Jones Day
  • Zhen (Katie) Feng - Hogan Lovells
  • William (Skip) Fisher - DLA Piper
  • Harold Johnson - Brinks Gilson & Lione
  • Binxin Li - Baker McKenzie
  • Yufeng Ma - Orrick, Herrington & Sutcliffe LLP
  • Clement Ngai - Baker McKenzie
  • Scott J Palmer - Perkins Coie LLP
  • Elliot Papageorgiou - Gowling WLG 
  • Sharon Qiao - Rouse
  • Kristopher L Reed - Kilpatrick Townsend & Stockton LLP
  • Christine Yiu - Bird & Bird LLP
  • Shaobin Zhu - Morgan, Lewis & Bockius LLP

Individuals: prosecution

  • George Chan - Simmons & Simmons LLP
  • Tony Chen - Jones Day
  • Xiaofan Chen - AWA Asia
  • Charles Gray - Kilpatrick Townsend & Stockton LLP
  • Oliver Lutze - Spruson & Ferguson
  • Yalei Sun - Morgan, Lewis & Bockius LLP
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Xiang Wang - Orrick, Herrington & Sutcliffe LLP
  • Yingli Wang - Perkins Coie LLP
  • Jian Xu - Gowling WLG

Individuals: transactions

  • Tony Chen - Jones Day
  • Weishi Li - Covington & Burling LLP
  • Geoffrey Lin - Ropes & Gray LLP
  • Nick Beckett - CMS China
  • George Chan - Simmons & Simmons LLP
  • Ling Jin - Rouse
  • Ryan McCarthy - Fish & Richardson
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Christine Yiu - Bird & Bird LLP