China: Foreign

The significance of having a team on the ground in China has not gone unnoticed by international firms – the number of practices covered in this chapter has doubled from a mere 10 just three years ago. US law firms are the latest to join the party, with most choosing to settle in Shenzhen rather than the traditionally popular cities of Beijing and Shanghai. As their practice of Chinese law is strictly restricted, more outfits are establishing joint ventures with domestic law firms to marry their international expertise with labour provided by local practitioners. Within the existing group of firms with local litigation capabilities – namely, Baker McKenzie, Clyde & Co, Hogan Lovells and Rouse – Allen & Overy LLP is the newest addition.

Firms

Allen & Overy LLP

Hot on the heels of the January 2020 announcement that it has embarked on a joint operation with Shanghai Lang Yue Law Firm in the China (Shanghai) Pilot Free Trade Zone, Allen & Overy makes its debut in the China: Foreign chapter of the IAM Patent 1000 this year. As the Magic Circle firm expands its patent capabilities in the contentious space, its China IP group continues to maintain a strong transactions practice under David Shen’s leadership. With his “decent team in the field of pharmaceutical technologies”, he has built a local practice with a life sciences bias – it is tasked by a predominantly foreign clientele to advise on patent strategies and pharmaceutical product licensing in China. Trained in chemistry, Shen advises industry leaders on the enforcement and licensing of life sciences innovations around the world.

AWA Asia 

“As part of a Scandinavian group of companies, AWA Asia understands there are cultural differences and knows how we see cooperation and mutual respect as key drivers for achieving better results.” With trademark expert Ai-Leen Lim at the wheel, the Chinese-speaking but Western-educated team based in Beijing has quickly grown to six with the addition of Chinese patent attorney Hai Liu. A one-stop service, the firm not only drafts patents and supports foreign companies in M&A matters that have an IP aspect to them, but also “excels in enforcing IP rights, and providing intelligence and patent landscaping of patent activities in China”. Clients are “very satisfied” with the results and the firm has begun to fully take charge of entire China patent portfolios owned by Sweden-based companies. It is also looking to expand its life sciences practice in the coming year. Xiaofan Chen is a fan favourite: “From the beginning, we learned that Xiaofan is very skilled in intellectual property and has very good communication skills, which he uses to proactively give us advice on our Chinese activities. What is special about him is that he has a more Western mindset, which makes it easier to communicate with him. He understands the importance of giving advice even for matters that we have not asked about, which we appreciate because we expect our legal advisers to be proactive and involved in understanding our business.”

Baker McKenzie

Baker McKenzie offers the best of both worlds to clients seeking a comprehensive patent offering in China – the global law firm widens its international perspective “with a lot of insights in both law and patent practice” to local litigators provided by the Baker McKenzie FenXun Joint Operation Office. Clients laud attorneys there for being “capable of elaborating complicated legal questions in a very clear way and addressing them”. The two outposts in Beijing and Shanghai are manned by 11 dual-qualified lawyers and can support industry leaders in myriad technical areas better than ever thanks to a new data centre in Shanghai, which helps them to deliver results in a timely manner. Hong Kong-qualified Clement Ngai advises on life sciences regulatory issues as well as high-value IP infringement matters. IAM Patent 1000 newcomer Binxin Li captains the patent team, delivering “excellent service” in a proactive manner for patent disputes in China.

Bird & Bird

Bird & Bird’s China team works hand in glove with its Hong Kong-based members to deliver a full suite of IP services to an enviable set of blue-chip clients. With Shanghai-based Christine Yiu acting as eyes and ears on the ground, the global titan ensures that multinationals can execute the best possible patent filing strategy, prevail in local courts and cut the smartest licensing deals. A popular choice among international companies, Yiu often advises on patent transfer and licensing strategy.

Clyde & Co 

Armed with a joint law venture bestowed by the Chinese Ministry of Justice, Clyde & Co combines global expertise from its wider Middle East and North Africa and UK network with the domestic Chinese law capabilities provided by Chongqing Westlink Law Partnership to deliver the full spectrum of patent services. Its largely European clientele are fully confident of the IP skill set on offer and entrust the 20 fee earners with all manner of patent work – they have even transferred entire IP portfolios to the team and depend on their advice to establish long-term IP strategies. “A very good communicator,” Elliot Papageorgiou has extensive IP experience and a superb track record, including positions at the European Chamber of Commerce and involvement in high-stakes IP litigation matters at the Supreme People’s Court.

CMS Legal

Despite being a newcomer to the IAM Patent 1000, CMS Legal is no stranger to the IP demands of multinationals and Chinese companies. Since the Asia-Pacific head of intellectual property Nick Beckett began to split his time between Beijing and Hong Kong in 2019, the Greater China team has been going from strength to strength and now boasts a sizeable ensemble. Most of the nine professionals stationed in Beijing and Shanghai have grown up alongside the local practice, which is recognised for providing “forward-looking advice” and being “very responsive and good value for money”. “They work hard to meet the clients’ practical needs and provide workable solutions. Not only do they have an excellent grasp of the patent prosecution process and tactics, they can bring out key decision points without getting bogged down in the sciences, enabling non-scientists to make the best decisions.” With the global co-head of the life sciences and healthcare sector group at the helm, the Chinese practice focuses heavily on the biotech and life sciences fields: “CMS has expertise in pharmaceuticals and very rich experience in commercial transactions and M&As.” “Nick advises on our pharmaceutical patent portfolio in China, as well as regulatory and compliance matters to support the growth of our business in China.” Foreign associates have high praise for Beckett: “He always delivers clear, practical advice based on his vast experience in China and in the United Kingdom.” “He has an unparalleled international network and an uncanny ability to locate key experts in major matters. He is equally deft in regulatory, litigious and commercial life sciences mandates, and has a prodigious knowledge of regulatory frameworks of key jurisdictions around the world. He is a true subject matter expert and a pleasure to work with.”

DLA Piper

Among the full range of patent services that DLA Piper offers in China, its enforcement and transactions practices are its most prolific. It often advises global companies on multi-jurisdictional litigation strategies, as well as conducting cross-border IP due diligence. The international law firm has just launched a global cannabis practice to further augment its offering. For his “solid patent advisory practice for a number of international clients”, Shanghai-based William (Skip) Fisher is a “recommended adviser for enforcing patents against Chinese companies”.

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 

Finnegan’s Shanghai outpost collaborates closely with the firm’s Washington DC office to help Chinese companies prosecute patents in the United States and to advise on licensing and tech transfer agreements. “Recommended for US International Trade Commission (ITC) cases,” the compact team is recognised for its outbound capabilities. With Ningling Wang at the helm, it navigates the patent landscape adroitly for clients in numerous industry sectors. Well versed in US law, the consummate IP strategist shines brightest in the contentious IP field – she is highly recommended for inter partes review proceedings in the United States.

Gowling WLG 

Although Jamie Rowlands has returned to the London office, Gowling WLG remains a mainstay for international corporations seeking advice on an array of IP problems in China, especially those relating to invention and design patents. The firm recently expanded its domestic practice with a new office in Beijing, although the bulk of the 11-strong team continues to be based in Guangzhou. “Very good at giving Chinese advice from a global perspective, Gowling has been our go-to firm in China for IP matters for a number of years. They provide a high standard of service, are reactive, and understand how we operate as a business and what is important to us.” While Rowlands’ departure was noted by peers and clients alike, “he continues to work closely with the Guangzhou team and we have not noticed any difference in the level of service as a result of his location change”. Clients have nothing to fear with Jian Xu, captain of the Chinese IP filing practice, on the ground. One foreign associate comments: “He is not only always very responsive but succeeds in giving 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. They are certainly a key contact for China.”

Hogan Lovells International LLP

Plugged into its enviable international network, Hogan Lovells provides an A-Z patent offering that is enjoyed by a wide range of international and Chinese clients. With three patent professionals in Beijing and another four in Shanghai available through its associate Fujian Fidelity Law Firm, the global behemoth has a dedicated unit for litigation work – making it is an easy choice for companies seeking to enforce their patents in China. It also works closely with US counterparts to prosecute patents for Chinese businesses such as Shenzhen DJI. Zhen (Katie) Feng anchors the practice in Shanghai. She focuses on contentious patent matters, with a sprinkling of advisory on in-bound transactions between US and Europe-based technology, media and telecommunications, and life sciences entities and Chinese licensees.

Jones Day

With the combined expertise of nearly 20 IP lawyers positioned across the Greater China region, Jones Day tends to the patent needs of a largely Chinese clientele across multiple industries. The international firm assists famous Chinese companies in US and Chinese patent infringement suits, while drawing upon the expertise of its government regulation practice in Washington DC to navigate other legal issues; lately, it has been increasingly called on by Chinese companies in the life sciences field. Effortlessly straddling the contentious/non-contentious divide, Shanghai-based Tony Chen commands the coveted top spot of the litigation and transactions table, as well as the respect of his peers.

Kilpatrick Townsend & Stockton LLP

Kilpatrick Townsend & Stockton makes its debut in the China: Foreign chapter of the IAM Patent 1000 this year with the highest number of ranked individuals. Since its Shanghai office – currently staffed with four patent attorneys – opened in 2012, the international law firm has been advising Chinese companies on their legal problems in the United States. The addition of its Beijing office further enhances its appeal to clients, offering “convenient locations, fast responses, in-person interaction, good quality and global reach”. Clients and local associates have nothing but high praise: “They demonstrate a very high degree of skill and professionalism, and their location in China is a huge plus because they are not disadvantaged by time zone differences.” “They satisfy all three of our criteria – quality, cost and efficiency.” “I appreciate that they can effectively, efficiently and comprehensively communicate with us, a local Chinese patent firm. Our clients have been very happy with their work and I enjoy their professionalism – they have comprehensive IP skills and ample human talent, as well as good understanding of the Chinese culture and market.” Besides delivering on the full spectrum of patent work, the team provides “helpful training sessions” on US prosecution and enforcement practices for Chinese patent professionals. A litigation specialist and an expert on ITC Section 337 matters, Kristopher Reed works closely with his US counterparts to support Huawei and Thunder Power New Energy Vehicle Development Company Limited in patent infringement suits. To maintain the synergy between the contentious and non-contentious patent practices, Charles Gray focuses on counselling Chinese companies about US patent prosecution. A favourite among clients and foreign associates, the Mandarin-speaking computer science expert works closely with well-known Chinese companies, including Huawei, Tianma and Goodix. “Charles and his team put in a lot of effort to develop a long-term relationship, rather than make money on short-term projects.” For patents in the computer software and telecoms space, former USPTO examiner Lu Yin is the one to look for. “Lu is of solid legal and technical expertise. With a quick and open mind, he is unique because he understands how both US and Chinese clients think, as well as their working styles. Instead of following rigid routines, he is willing to discuss best strategies for clients’ benefit and work efficiency. He always tries his best to integrate work processes and improve his service quality.”

Morgan Lewis & Bockius LLP

From its Shanghai outpost, global law firm Morgan Lewis & Bockius has a largely outbound practice assisting clients with US IP matters. Whether it is litigation support and IP due diligence or filing and prosecution, the team of six ensures that clients can draw upon the firm’s extensive global network to resolve any issue. Currently prosecuting AI patents for Shanghai Xiaoi Robot Technology, technology specialist Shaobin Zhu is also guiding clients through US patent disputes. Splitting his time between Silicon Valley and Beijing, Yalei Sun assists famous Chinese corporations with their US patent filing and drafting needs.

Orrick, Herrington & Sutcliffe LLP

Respected for its strong outbound practice, Orrick, Herrington & Sutcliffe helps domestic and international companies with the full suite of patent matters, but specialises in representing Chinese companies in contentious patent suits and trade secret misappropriation cases at the ITC and multiple US courts. Beijing-based Xiang Wang garners warm praise for his superb litigation strategies. He is also advising top Chinese companies on highly confidential projects involving cutting-edge technology. Over in Shanghai, Yufeng Ma collaborates closely with his US colleagues to assist Chinese enterprises in patent infringement ITC litigation and district court suits – he was involved in achieving a complete victory for multiple clients against Ultravision Technologies.

Perkins Coie LLP

Perkins Coie rides a wave of effusive praise into the China: Foreign chapter of the IAM Patent 1000 this year. “Strong strategy development and implementation skills, strong and effective litigation capabilities, excellent command of Chinese and English, ability to explain complex problems and solutions to a non-patent expert, high level of responsiveness even when dealing with disparate time zones, high levels of integrity, and a strong team of IP professionals – few firms have the full spectrum of skills but Scott and his team have all of them!” Although Scott Palmer has only been with the well-known global law firm for just under two years, he has already made his mark. “The level of personal attention is outstanding, which makes working with Scott a pleasure. I have high confidence that the fine work they have done for us can be duplicated for others.” From its Beijing and Shanghai offices, the team of 16 supports multinationals in an array of IP issues in China and the United States.

Ropes & Gray LLP

Featuring a formidable transactions practice, Ropes & Gray is home to the pre-eminent Geoffrey Lin, who leads a critically acclaimed team that punches above its weight in legal expertise and advice on IP licensing and negotiations. “One of the best in Shanghai,” Lin is unanimously recommended by competitors for his deep expertise in the life sciences sector. Over the past year, he has advised Everest Medicines on a multi-million-dollar in-licence with Immunomedics and facilitated big-dollar licensing deals for Zai Lab in the Greater China region. In addition, he has counselled leading China-based biopharmaceutical companies on their commercialisation strategies and collaboration agreements.

Rouse

The first international IP firm to establish a Chinese presence back in 1993, Rouse has since expanded its reach in the country to Beijing, Guangzhou, Shanghai and lately, Shenzhen. Its team of 12 highly qualified patent attorneys operates with Lusheng Law Firm to provide value-added patent services that go beyond the traditional set of prosecution, litigation and transactions. Among the slew of complex patent infringement suits in which it has been involved, it successfully represented BRITA GmbH and Spin Master Limited in separate suits at the Shanghai High People’s Court and Zhejiang High Court, respectively. A technology specialist in patent consulting, Ling Jin analyses IP portfolios and conducts complex, multi-jurisdictional patent landscape searches for multinationals. On the contentious front, Sharon Qiao brings nearly two decades of experience in IP litigation to help clients protect their intellectual assets in Chinese courts.

Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd

Headlined by “go-to patent attorney” George Chan, Simmons & Simmons is tasked by a predominantly foreign client base to provide the full spectrum of patent services, especially those relating to design patents. The firm recently added a famous Fortune 500 company as a patent prosecution client. From his seat in Beijing, Chan is most comfortable advising on life sciences matters – he often assists big pharmaceutical companies on licensing and product launch issues in China. Foreign associates have high praise for him: “Highly commercially focused, George can get to the hub of matter. We learned of the high standard of his advice from very early on in our relationship, and I continue to refer clients to him for Chinese product development and IP problems.” Lauded as a true professional who loves his work, Chan’s knowledge of patent law in China is described as top-notch. “George is a breath of fresh air compared to my previous firms and lawyers in China. Not only can he provide accurate budgets and articulate the strategy and process in a clear and concise manner, he is always available to speak. When I think of him, I do not see him as a foreign associate to call upon only when an issue arises in China; I see him as an integral member of our internal IP team who is always available to assist on Chinese matters.”

Spruson & Ferguson

Spruson & Ferguson provides Western-style patent filing and strategy services in China via eight highly qualified patent professionals and exclusive alliance partner Beijing Pat SF Intellectual Property Agency. With a team on the ground and a thorough understanding of Chinese legal developments and the country’s patent landscape, the Australian patent prosecution powerhouse is on hand to respond to clients’ problems. Life sciences expert Oliver Lutze runs the Beijing office. “An excellent choice for IP protection in China, Oliver is a competent and reliable colleague who has always been very familiar with the latest developments in patent law in a wide variety of countries.”

Other recommended experts

IAM Patent 1000 debutant Timothy Bickham hails from Steptoe & Johnson LLP. Praised by foreign associates as “a very smart guy who clients really like”, Bickham excels in complex US patent disputes before the ITC and district courts, as well as cross-border litigation. Alongside his US counterparts, he emerged victorious in a patent infringement suit on behalf of Huawei Technologies against Technology Properties Limited at the US Supreme Court. He is also representing Autel Robotics USA in a patent infringement litigation against DJI. After working in China for a decade, he now splits his time between Washington DC and Beijing, where he is actively speaking to the Chinese community about US IP protection. Harold Johnson is managing partner of Brinks Gilson & Lione’s Shenzhen office, where he represents Chinese companies in patent disputes. Over at Covington & Burling LLP, Weishi Li divides her time between San Francisco and Shanghai. She is revered for her transactions expertise in the pharmaceutical and life sciences space. Ryan McCarthy acts as the eyes and ears on the ground for Chinese clients that require assistance with US patent problems – he can be found at Fish & Richardson’s Shenzhen office.

Individuals: litigation

  • Tony Chen - Jones Day
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Xiang Wang - Orrick, Herrington & Sutcliffe LLP
  • Nick Beckett - CMS Legal
  • Timothy Bickham - Steptoe & Johnson LLP
  • Zhen (Katie) Feng - Hogan Lovells International LLP
  • 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 - Clyde & Co 
  • Sharon Qiao - Rouse
  • Kristopher L Reed - Kilpatrick Townsend & Stockton LLP
  • David Shen - Allen & Overy LLP
  • Christine Yiu - Bird & Bird
  • Shaobin Zhu - Morgan Lewis & Bockius LLP

Individuals: prosecution

  • George Chan - Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
  • 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
  • Jian Xu - Gowling WLG
  • Lu Yin - Kilpatrick Townsend & Stockton LLP

Individuals: transactions

  • Tony Chen - Jones Day
  • Weishi Li - Covington & Burling LLP
  • Geoffrey Lin - Ropes & Gray LLP
  • George Chan - Simmons & Simmons (Beijing) Intellectual Property Agency Company Ltd
  • Ling Jin - Rouse
  • Ryan McCarthy - Fish & Richardson
  • David Shen - Allen & Overy LLP
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Christine Yiu - Bird & Bird