China: Foreign

Firms

Baker McKenzie LLP

It has been three years since international heavyweight Baker McKenzie and Shanghai local Fenxun teamed up – and so far, everything is going exactly according to plan. Taking on whatever the patent world can throw at it, the outfit performs impressive feats in searches, prosecution, invalidation and enforcement, while keeping an eye on commercialisation opportunities wherever these arise. The group is equipped to handle any IP matter and nimbly manoeuvres through complex webs of intangible assets where patent work intersects with trademark, trade secret and antitrust issues. Based in Shanghai, Hong Kong-qualified Clement Ngai infuses his ample pan-Asian IP enforcement expertise with a sharp commercial acumen. A keen strategist whose in-house experience bestows on him an empathic understanding of innovators’ demands, he is a popular choice to handle both high-stakes licensing deals and infringement matters.

Bird & Bird

Working in close alignment with teammates in Hong Kong, Bird & Bird’s China division is an invaluable asset for multinationals with a regional stake. Exceptional prosecution skill and captivating performances in the courtroom earn it the loyalty of many of the world’s leading industrial actors, which value both the access to a global network and the versatility and prowess of its local lawyers. Christine Yiu is the eyes and ears on the ground in Shanghai. The Cambridge University electrical and information science graduate showcases her impressive technical reasoning before the Patent Re-examination Board and various Chinese courts. Standing out for her efforts to resolve fair, reasonable and non-discriminatory licensing disputes, she finds herself in high demand among an international client base, yet still takes the time to participate in IP reform discussions with the Supreme People’s Court and in discourse between the European Union and China.

Clyde & Co

Already a formidable combined unit, fully plugged into the group’s wider network, Clyde & Co achieved a major coup this year when it poached “excellent strategist” Elliot Papageorgiou and his team from regional heavyweight Rouse. Earning the firm its place in the IAM Patent 1000 for the first time, the “resourceful and energetic” line up dispenses highly strategic advice, as well as procuring and protecting all manner of patents to future-proof rights holders’ businesses. “Proactive and pragmatic, Papageorgiou’s ‘never say die’ attitude and pursuit of his patron’s best interests is exemplary, while his extensive network of contacts in and out of government is a distinct advantage.” The yin to Papageorgiou’s yang, Zhengquan Gu makes a first appearance in the guide and works with his colleague to deliver a holistic patent service “scarcely matched by any other available on the market”. Of the pair, one customer enthuses: “They treat instructions not as mere jobs, but rather bona fide causes to which they dedicate themselves wholeheartedly. With impeccable legal talent and commercial acumen, the two lawyers perfectly blend global expertise with faultless local execution.”

DLA Piper

Although delivering the full spectrum of patent services from its three offices in China, DLA Piper shines brightest in enforcement, where its laser focus on patent matters is invaluable in asserting IP rights. In this respect, the ensemble has had a busy year, taking on two patent litigations and three administrative lawsuits for industrial equipment manufacturer Hypertherm, acting for Sandvik in a stream of infringement and invalidation proceedings and dispatching many other challenges for diverse industrial actors. Transactional work is a forte, too; on that front, a booming practice covers all bases. Negotiations for licensing, foreign investment and joint-venture agreements hold little trepidation for its experienced professionals. Recently arrived from Hogan Lovells, William (Skip) Fisher heads up the patent practice in China. Adding his finely honed expertise in both Chinese and US law to the talent pool, he is a consummate IP strategist.

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 

“Well regarded in the patent space,” Finnegan’s Shanghai office is a respected and effective player in IP dispute resolution with strong ties to its parent network. An extraordinary capacity for outbound work earns the squad a reputation as a conduit for Chinese companies looking for a way into the US market, and its strong performances before the US International Trade Commission (ITC) on behalf of these players cement this status. “Ningling Wang heads up the Shanghai bureau with guile and professionalism. Her diverse skill set guarantees her assistance through every stage of the patent lifecycle is invaluable.”

Gowling WLG 

Shifting into a higher gear over the last 12 months, Gowling WLG has seen substantial growth globally and regionally, with a new office in Singapore adding considerable weight to the Asia-Pacific offering. Reflecting this drive on the local market, the Chinese practice has added considerable horsepower with the recruitment of telecoms and commercial talents from industry giant ZTE. Ideally placed to tackle infringement wherever it arises, the set earns the loyalty of a diverse following, which value its “sound and practical” counsel in both contentious and non-contentious issues; Aston Martin and Dyson are among the long list of companies who bring repeat business to the firm. For the latter, Jamie Rowlands and Jian Xu hit a sweet spot, and have fought at every level of the Chinese court system to assert numerous patents owned by the UK technology titan. “Unfailingly diligent and strategically excellent”, Rowlands consistently delivers excellent results, and possesses a “rare aptitude” for supervising local Chinese teams. “He recruits superb lawyers that fit right into his team and supports their devotion to clients’ best interests.” Xu is “very responsive and has a superb understanding of Chinese IP laws, which he elucidates with crystal clarity”. When Xu is not battling alongside Rowlands in complex enforcement campaigns, he takes the utmost care in overseeing the prize portfolios of his predominantly European fanbase.

Hogan Lovells International LLP

“Among the best names for IP in China”, Hogan Lovells sagely helps international rights holders to navigate though China’s rough patent terrain. Though not strictly a prosecution shop, it provides its illustrious following with sage IP strategy alongside time-tested advice on how best to optimise their regional patent portfolios. Shanghai-based Zhen (Katie) Feng serves loyal client Bang & Olufsen with confidence. A knack for closing down disputes over patents and trade secrets is a unique selling point of the experienced litigator. Recently, the New York and China-qualified attorney has been putting her skills in the courtroom to use for automotive giant Mercedes-Benz in a battle against a non-practising entity in the first substantial case of its kind in China.

Jones Day

Famed for its contentious victories, Jones Day’s streamlined local outfit punches above its weight in prosecution and transactional work, too; the outpost works in harmony with international colleagues and leverages its own domestic IP agency to create a potent force in regional and global patent matters. Lending its keen commercial eye to major life sciences and pharmaceutical operations, the firm provides meticulous oversight of IP-intensive agreements and acts as a seamless conduit for technology transfer from European and North American sellers to Chinese buyers. The firm uses its place in the upper echelons of patent society for the better, working in close cooperation with retired judges and former patent office commissioners to advise on possible amendments to national patent law – a contribution made possible by the experience of its three Shanghai partners. The most accomplished of these is Tony Chen; he has been an instrumental player in China’s IP scene for almost 15 years, over which time he has learnt the best ways to purge IP gremlins both common and lesser spotted.

Morrison & Foerster LLP

Having maintained a presence in China for over three decades, Morrison & Foerster earns it place in the IAM Patent 1000 for the first time in 2018. For a foreign firm operating in the China, its unrivalled coverage of the country’s most important commercial areas make it a natural choice for multinational clients and domestics alike, which value the access it provides to the US market, its global network and the comprehensive legal and technical ability on offer. Beijing managing partner Paul D McKenzie is well-placed to guide clients through any IP situation.

Orrick, Herrington & Sutcliffe LLP

Home to a robust outbound IP practice and a line up of influential professionals, Orrick is a stalwart champion of Chinese industry on the international stage. A focus on the US market is made possible by the talents of Xiang Wang, a pre-eminent attorney qualified to practise in China and New York, and before the US Patent and Trademark Office (USPTO). Armed with a background in electrical and computer engineering, he also draws on 10 years’ experience working for medical and electronic device manufacturers to construct and execute winning strategies in both contentious and non-contentious briefs. Splitting his time between Beijing, Shanghai and Silicon Valley offices, he earns most kudos for his representation of multinational companies before the ITC and is also a discerning choice for domestic rights holders seeking speedy and effective resolution to US-based disputes.

Ropes & Gray LLP

Carving out a niche for itself in China’s transactional IP space, Ropes & Gray boasts a loyal following in the life sciences and technology arenas. Lately, the firm has been instrumental to the strategic alliance between Sanofi and Taiwan-based JHL Biotech; with this, the unit has overseen the former’s $80 million investment in the latter and facilitated the partnership’s plans to develop and commercialise biological therapeutics products in China. The team’s triumphs also include advising Eli Lilly subsidiary Lilly Suzhou and national technology outfit Netease on a licensing agreement with Microsoft. These successes bear testament to the trust that both national and multinational corporations place in Geoffrey Lin’s flair for negotiating. The practice head is a transactional whizz to whom much of the international group’s success on the Chinese market can be credited.

Rouse & Co International

Celebrating a quarter of a century in China in 2018, Rouse ably traverses the technical spectrum to deliver an A-to-Z patent service. A potent association with domestic operator Lusheng Law Firm broadens its reach. Backed by three offices in China and a far-reaching Southeast Asian network, the 23-strong set maintains a substantial European and North American fanbase and is increasingly attracting the patronage of Chinese actors, too. Contentious patent work is a forte; in this, it employs big-data analyses of some 40,000 IP judgments made by Chinese courts – provided by the China IP Litigation Analysis Tool – to develop informed, enlightened courtroom strategy. With legal qualifications earned in both China and Australia, Ling Jin is a savvy attorney to whom neither transactional or litigation instructions are an insurmountable challenge.

Other recommended experts

Former Liu Shen man Xiaofan Chen got in on the ground floor at AWA Asia when it opened in 2015. A smooth operator in both contentious and non-contentious settings, he is rapidly making headway under the Scandinavia patent giant’s banner, earning the group a local reputation in mechanical engineering, manufacturing and computer science domains. Loeb & Loeb’s Lewis Ho is a favourite among life sciences and technology concerns, which value his talent for enforcing and realising value from their IP rights. Likewise, Weishi Li is a commercially savvy litigator and negotiator. She plies her trade at Covington & Burling. Former software engineer Kristopher Reed performs admirably in post-grant proceedings before the USPTO, as well as before the ITC. To be found in either the Shanghai or Denver offices of Kilpatrick Townsend & Stockton, he makes his debut in the IAM Patent 1000 in 2018. Over at Allen & Overy, David Shen also earns a place in the guide for the first time and heads the IP practice with the legal flair expected from a lawyer admitted to the bars of two US states as well as the USPTO. In possession of a chemistry PhD alongside his legal qualifications, he provides technically savvy counsel of the utmost value, enforcing life sciences rights globally and negotiating complex licensing agreements.

Individuals: litigation

  • Tony Chen - Jones Day
  • Zhen (Katie) Feng - Hogan Lovells International LLP
  • William (Skip) Fisher - DLA Piper
  • Zhengquan Gu - Clyde & Co
  • Elliot Papageorgiou - Clyde & Co 
  • Kristopher L Reed - Kilpatrick Townsend & Stockton LLP
  • Jamie Rowlands - Gowling WLG
  • Xiang Wang - Orrick, Herrington & Sutcliffe LLP

Individuals: prosecution

  • Tony Chen - Jones Day
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Xiang Wang - Orrick, Herrington & Sutcliffe LLP
  • Jian Xu - Gowling WLG
  • Christine Yiu - Bird & Bird

Individuals: transactions

  • Weishi Li - Covington & Burling LLP
  • Geoffrey Lin - Ropes & Gray LLP
  • Tony Chen - Jones Day
  • Xiaofan Chen - AWA Asia
  • Lewis Ho - Loeb & Loeb LLP
  • Ling Jin - Lusheng Law Firm, Member of the Rouse Network
  • Clement Ngai - Baker McKenzie LLP
  • David Shen - Allen & Overy LLP
  • Ningling Wang - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP