Hong Kong

Despite being embroiled for months in city-wide protests, Hong Kong is pushing ahead with patent reforms and plans to promote innovation and technology. Of the HK$100 billion pledged for this by the government, HK$7.3 billion will support start-ups, while HK$2 billion is intended to encourage re-industrialisation. The original grant patent system was also rolled out on 19 December 2019, offering patent owners an alternative to the existing re-registration route as well as enabling them to request substantive examination. While patent professionals anticipate a rise in patent filing, others note that few local firms possess the technical expertise to support these rigorous new technical expectations.

Firms: litigation

  • Highly recommended
  • Bird & Bird LLP
  • Deacons
  • Recommended
  • Baker McKenzie
  • Hogan Lovells
  • Norton Rose Fulbright LLP

Firms: prosecution

  • Highly recommended
  • Bird & Bird LLP
  • Deacons
  • Eagle IP Ltd
  • Letters & Thoo 
  • Marks & Clerk Hong Kong
  • Recommended
  • Baker McKenzie
  • Hogan Lovells
  • Norton Rose Fulbright LLP
  • Spruson & Ferguson
  • Wilkinson & Grist

Firms: transactions

  • Highly recommended
  • Bird & Bird LLP
  • Deacons
  • Recommended
  • Baker McKenzie
  • Hogan Lovells
  • Letters & Thoo 
  • Mayer Brown
  • Norton Rose Fulbright LLP

Baker McKenzie

Major international player Baker McKenzie has been delivering results on the full range of patent work for decades and the Hong Kong office is integral to the firm’s success in the Greater China region. While the team has an expansive offering, contentious patent issues and technology transfers are a specialty, with a diverse group of clients drawn to the side’s ability to dispense quality advice. Leading the healthcare and life sciences practice, Isabella Liu is highly sought after for her superb negotiating skills on cross-border patent technology acquisitions and IP rights transfers. She often advises start-ups on patent enforcement and market entry for emerging technologies.

Bird & Bird LLP

A global titan, Bird & Bird is a mainstay in the local patent community. Its well-rounded prowess in the patent field is exemplified not only by its dominance of both firm tables for the second consecutive year, but also by the fact that it remains the only external consultant to advise the Hong Kong government on IP and patent system reforms. As one of the most trusted partners for clients in patent-rich industries, Bird & Bird offers a host of comprehensive IP strategy services to distinguished local and multinational organisations, including the City University of Hong Kong. Matthew Laight captains a highly experienced and technically qualified team, headlined by aeronautical engineer Ted Chwu and life sciences expert Alison Wong. Where Chwu advises technology companies on regional patent litigation proceedings, Wong helps pharmaceutical businesses to navigate the patent enforcement and transactions landscape in China.

Deacons

Sitting comfortably at the apex of all three firm tables, Deacons is a cut above the rest. With twice as many ranked individuals as its nearest rival, the outfit boasts an admirably diverse ensemble of internationally qualified patent attorneys, who are trained in an array of technical fields. Deacons is often at the forefront of the latest technologies rolled out by government entities because it “has the network and right team for effective case management, coupled with a good track record and expertise”. In-house counsel are also happy to report that “costs are well structured with no surprises”, and there is “good performance and understanding of clients’ needs”. Overseeing the patents and designs practice is Catherine Zheng. The star litigator is currently partnering with IP co-head Charmaine Koo on a patent infringement action on behalf of Gmedia against Tencent in mainland China – triple-qualified electrical engineer Ian Liu is involved in this as well. The firm is just as strong on the non-contentious front. Trans-Tasman patent attorney Jeffrey McLean expertly guides clients through design and patent registrations all over the world, with one long-term customer expounding: “At every step of the way, we are confident that Jeffrey has our best interests at heart, ensuring we do not waste any money on territories that are not worth it.” For patent applications in China, German-speaking Chinese patent attorney Shuwei Tang is the best choice. Daniel Holt, “one of the most experienced patent attorneys in Hong Kong”, rounds off the set. “Daniel has both in-house and private practice experience that enables him to better understand clients’ needs and provide well-delivered advice on infringement, patent applications and inventors’ renumeration.”

Eagle IP Ltd

Homegrown IP boutique Eagle IP Ltd is not to be trifled with. Specialising in technology-related intellectual property, the patent prosecution firm comes highly recommended for its proficient drafting and prosecution skills. Universities and local entities across industries depend on the rapidly growing team of 11 – and seven in Shenzhen – to protect their patent portfolios in Greater China and abroad. Not only is it one of the most female-dominated firms in the city, it recently welcomed two Chinese patent attorneys in the engineering field and a US patent agent to its already diverse outfit. Founder Jacqueline Lui is highly sought after for her prosecution skills and knowledge of US IP law. Jennifer Che shares with Lui the distinction of being one of the few US patent attorneys in town. Making her sophomore appearance in the WTR 1000 this year, Che offers years of in-house expertise at Vertex Pharmaceuticals and Axcella to US businesses seeking to expand into China and protect their intellectual property there.

Hogan Lovells

Plugged into its international network, Hogan Lovells advises an array of multinational clients out of its Hong Kong office. The team of five is adept at providing the full suite of patent services, with a keen eye for those with a significant Chinese element to them. The life sciences and pharmaceutical fields are their specialty, but they are equally adept in resolving issues in the electronics and telecoms space too. “The firm’s IP practice is built on the reputation of its members – most notably, experienced IP lawyer Andrew Cobden, who provides expert legal advice.” Alongside his Japanese counterpart Frederick Ch’en, Cobden continues to support Otsuka Pharmaceutical in enforcing its second medical use invention patents for the pharmaceutical Abilify.

Letters & Thoo 

Letters & Thoo, a small but mighty IP boutique led by founders Timothy Letters and Laurence Thoo, comes highly recommended for its patent prosecution services from satisfied clients and peers alike. Since working with it “always feels like a partnership”, customers cannot help but enthuse about the side’s “professional and reliable services”. “They are very accomplished, senior IP professionals, who continually provide strategic and practical advice – they can explain complex legal principles in a way that enables a client to make appropriate commercial decisions. I have engaged with numerous lawyers in my career, and I consider Timothy and Laurence to be among the most outstanding ones I’ve worked with.” Recently, the compact team of four put in place a new patent drafting and prosecution service that incorporates blockchain and AI technologies to cater to local start-ups, while continuing to act on behalf of local universities and the Hospital Authority. As well as the usual prosecution work, the firm advised and managed WizConnected Company Limited’s global acquisition by Signify.

Marks & Clerk Hong Kong

For “better and consistent service”, look no further than Marks & Clerk Hong Kong. “With its presence in Europe, Asia, Canada and Australia, the firm makes my job easy to file in numerous jurisdictions under one roof.” From multinationals and universities to small and medium-sized enterprises, the 20-strong, international team of patent attorneys hailing from eight different jurisdictions can easily draft and prosecute patents across industries. Trans-Tasman patent attorney Mike Flint has “good drafting and prosecution skills”, while Michael Lin comes highly recommended by his many clients for his “rich experience in the biopharma field”. “Not only does he have a global view, he is very strategic and always thinks from the client perspective.” Lin wins particular praise for his meticulous attention to detail, while remaining mindful of clients’ goals. “I have worked with numerous Chinese attorneys during my career, but Michael is my favourite Chinese attorney to work with.”

Mayer Brown

Full-service law firm Mayer Brown excels in the technology, media and telecommunications (TMT) space. In order to keep up with client demand, the firm recently expanded its IP and TMT practice in Greater China – Gary Hnath now splits his time between Washington DC and Beijing to handle Section 337 litigations for a host of Chinese companies. Meanwhile, the side remains a familiar partner to start-ups in the Hong Kong Science Park, providing regular advice and workshops on IP protections while assisting local clients on IP strategy for new technology. As an arbitrator with the Hong Kong International Arbitration Centre, Gabriela Kennedy mediates cases for patented technology. She is also working with the firm’s German offices to tackle design patent infringement issues in China for Nautilus, as well as advising global companies on IP transactions.

Norton Rose Fulbright LLP

“Norton Rose has a solid and reputable IP practice, a reputation that is built by the commercial know-how, thorough and considered advice dispensed by Justin Davidson.” The international law firm draws on its network spread across the world to advise life sciences and healthcare corporations on prosecuting patents. The side “provides a great quality of service at good value for money” and was recently appointed to Pfizer’s and Barclays’ global panels. A beloved “go-to adviser for Hong Kong and China IP issues”, Davidson is a favourite among foreign law firms, with whom he has worked extensively and for a long time. “Not only is he highly efficient and good at communicating, Justin provides detailed and thorough responses to questions and advice very quickly. He is always the first attorney in our mind for IP services in Hong Kong.”

Spruson & Ferguson

Asia-Pacific patent prosecution powerhouse Spruson & Ferguson “lives up to its name” in Hong Kong, as it does across the region. “I absolutely trust them – they have a strong sense of absolute professionalism, honour, empathy and sensitivity for the client.” Five patent professionals – all of them highly educated and two with PhDs – are always on call to give “solid advice on patent drafting and filing through proactive communication”, without overwhelming the layperson with legalese. US-trained organic chemist Robert Jackson “has the patience of a saint”. One review describes him in particularly glowing terms: “He always made me feel that he totally empathised with my start-up’s financial situation and assured me I can pick up the phone for advice at any time, taking the time to explain the next move. He is simply one in a million!”

Wilkinson & Grist

One of Hong Kong’s oldest full-service law firms, Wilkinson & Grist has been on hand for local and foreign clients on patent matters for over 100 years. It is a partner to multinational corporations and home-grown businesses, as well as the Hong Kong Polytechnic University and the Hong Kong University of Science and Technology. A designated team of 20 bilingual professionals focus on prosecuting patents worldwide. Mena Lo is a great first port of call – as one foreign associate comments: “She is a trusted adviser for Hong Kong and China. Her advice is timely and clear, and she regularly anticipates my follow up questions; she is an asset, providing outstanding support for my high-volume and quick-moving practice.”

Other recommended experts

Over at Hong Kong Science Park, European and Chartered UK patent attorney Ewan Bewley and his partner Trans-Tasman patent attorney Owen Gee lead inCompass IP Ltd, specialising in patent drafting for companies of all sizes. Ella Cheong is an icon of the eponymous Ella Cheong & Alan Chiu, Solicitors & Notaries. “She is a legendary person in Hong Kong and one of the best attorneys in Asia.” The firm is led by IT forensics expert Alan Chiu. Charles Ho is a familiar adviser to local start-ups in the Hong Kong Science Park and a close partner of foreign firms – he captains Barron & Young Intellectual Property Ltd. Since he shifted his focus to IP transactions 12 years ago, Lewis Ho of Loeb & Loeb LLP has concentrated his practice on licensing negotiations and IP due diligence for the likes of Hong Kong Science and Technology Parks Corporation and businesses in the life sciences and technology space. All-round IP expert Haifeng Huang hails from Jones Day, where he handles contentious patent issues and transactions. At the helm of Eversheds Sutherland (International) LLP’s latest IP offering in Hong Kong, Cedric Lam works on a range of patent matters, especially in the transactional space. Since leaving FitzGerald Lawyers, Hans Lee has been focusing on prosecuting patents at his patent agency, You Yi International Intellectual Property Services Limited. These days, Jones Day’s Chiang Ling Li participates in cross-border, multibillion- dollar acquisitions and negotiations involving pharmaceutical companies. Henry Wheare dispenses sage advice to companies embroiled in patent disputes. He can be found at Nixon Peabody CWL.

Individuals: litigation

  • Andrew Cobden - Hogan Lovells
  • Matthew Laight - Bird & Bird LLP
  • Catherine Zheng - Deacons
  • Haifeng Huang - Jones Day
  • Gabriela Kennedy - Mayer Brown
  • Charmaine Koo - Deacons
  • Chiang Ling Li - Jones Day
  • Ian Liu - Deacons
  • Alison Wong - Bird & Bird LLP

Individuals: prosecution

  • Ted Chwu - Bird & Bird LLP
  • Mike Flint - Marks & Clerk Hong Kong
  • Timothy Letters - Letters & Thoo 
  • Michael Lin - Marks & Clerk Hong Kong
  • Jacqueline C Lui - Eagle IP Ltd
  • Jeffrey McLean - Deacons
  • Laurence Thoo - Letters & Thoo
  • Ewan Bewley - inCompass IP Ltd
  • Jennifer Che - Eagle IP Ltd
  • Andrew Cobden - Hogan Lovells
  • Justin Davidson - Norton Rose Fulbright LLP
  • Charles Ho - Barron & Young Intellectual Property Ltd
  • Daniel Holt - Deacons
  • Robert Jackson - Spruson & Ferguson
  • Cedric Lam - Eversheds Sutherland (International) LLP
  • Hans Lee - You Yi International Intellectual Property Services Limited
  • Isabella Liu - Baker McKenzie
  • Shuwei Tang - Deacons

Individuals: transactions

  • Alan Chiu - Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Ted Chwu - Bird & Bird LLP
  • Andrew Cobden - Hogan Lovells
  • Justin Davidson - Norton Rose Fulbright LLP
  • Lewis Ho - Loeb & Loeb LLP
  • Gabriela Kennedy - Mayer Brown
  • Cedric Lam - Eversheds Sutherland (International) LLP
  • Timothy Letters - Letters & Thoo 
  • Isabella Liu - Baker McKenzie
  • Alison Wong - Bird & Bird LLP
  • Catherine Zheng - Deacons

Luminaries

  • Ella Cheong - Ella Cheong & Alan Chiu, Solicitors & Notaries
  • Henry Wheare - Nixon Peabody CWL