Hong Kong

Following a five-year review of Hong Kong’s patent law, new changes to the patent system came into effect in December 2019. The updated system introduces an original grant patent (OGP), allowing for the direct filing of standard patent applications. The previous re-registration system, under which applicants can first file an application with the China National IP Administration, the UK Intellectual Property Office or the EPO, remains in place. The amendments are an attempt by the government to encourage innovation in Hong Kong. However, so far few have taken advantage of the OGP. Time will tell whether it will gain increasing traction or whether applicants will continue to favour the old method.

Firms: litigation

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

Firms: prosecution

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

Firms: transactions

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

Baker McKenzie

A force to be reckoned with on the international stage, Baker McKenzie maintains a firm hold on its spot in the IAM Patent 1000. The well-rounded Hong Kong team covers a wide variety of industries and work areas, collaborating with colleagues in mainland China through a joint operation with law firm FenXun Partners to offer comprehensive IP services across Greater China. Contentious issues and technology transfers are among the outfit’s areas of specialty. Baker McKenzie has taken on a leading role in the fight for gender equality and LGBT+ issues, participating in several global and regional initiatives. Isabella Liu’s cross-border expertise and negotiation skills make her a valuable asset to well-established multinationals and start-ups alike. Liu leads the Asia-Pacific healthcare practice group, as well as the China and Hong Kong group for patent and regulatory work.

Bird & Bird LLP

The success of global heavyweight Bird & Bird’s integrated Hong Kong and China practice is undeniable. A team of over 50 IP professionals offers seamless services to respected local and international clients, including the City University of Hong Kong. The side was also the only external adviser to the Hong Kong government on its project to reform the city’s patent system. Matthew Laight leads a team celebrated for its technically savvy individuals, most of whom are bilingual, with an outstanding track record in high-tech patent matters. Cross-border litigator Ted Chwu’s strengths are his “good knowledge, efficiency and how he always tries to accommodate requests and understands problems”. With a background in IP prosecution, Chwu is also a highly competent portfolio manager, “providing technical advice in a clear and concise manner while simplifying any complex issues. He will always find a way to amend claims so they can be accepted by examiners, foresees potential problems and then offers sounds advice and solutions.” As head of the Asia life sciences and healthcare practice, Alison Wong supports companies in the pharmaceutical, biotech and medical device industries, handling everything from enforcement in China to transactional issues.

Deacons

Claiming the top spot in all three tables once again, Deacons has cemented its status as a beacon in Hong Kong intellectual property. The expertise of more than 60 “knowledgeable and helpful” IP practitioners covers a wide range of technical areas, attracting the attention of several of the largest household names in the city, as well as leading multinationals. Perfectly situated to advise on matters in the Greater China region, “Deacons does an excellent job prosecuting patent applications and advising on potential infringement matters in Hong Kong and China”, with every piece of work based on “thorough analysis”. Head of the patents and designs group Catherine Zheng commands respect and has been instrumental to the success of numerous landmark mainland China cases. Charmaine Koo co-heads the IP department and recently took the lead on a rare patent litigation case for the PCCW Group. Before delving into law, Ian Liu developed in-depth knowledge of IT and fintech, which serves him well in his current role. “Ian Liu is a leader in Hong Kong’s IP sector and very active in Chinese matters. He is an intelligent, thoughtful litigator with a good instinct for steering cases toward a successful conclusion.” Jeffrey McLean’s background as an examiner at the Australian Patent Office has given him unique insights into the examination process. Foreign associates “routinely utilise Shuwei Tang for patent prosecution in China, as well as dealing with local manufacturers and infringement issues. Shuwei’s expertise and local knowledge have been critical in maintaining client relationships in the region and we would highly recommend him to anyone seeking IP advice in Hong Kong or Asia.” Finally, Daniel Holt “has a wealth of experience in Chinese patent prosecution and a great team at Deacons supporting him”. Holt is praised for his technical know-how, knowledge of diverse fields and ability to “make the patent prosecution process in China a lot easier and more predictable”. “Dan is reliable and always delivers high-quality work,” reports one client. “He also understands how to balance the optimal and the practical considerations, which is a skill many lack.”

Eagle IP Ltd

Focusing on technology-related intellectual property, boutique firm Eagle IP is praised for its “prosecution strategies and options that are very clearly explained through smooth discussions”. Roughly half of the work handled by Chinese and US patent agents and attorneys is original patent drafting and global filing. The group caters to a number of local high-profile clients, protecting their patents in China and elsewhere by working closely with colleagues in Shenzhen and Macau. A “leading expert in the fields of patent filing and prosecution”, Jacqueline Lui impresses all she meets with her “professionalism and expertise”. Lui’s experience in the United States, Hong Kong and Singapore has made her well versed in US IP law and international standards – something that she combines with deep local knowledge to provide “helpful in-depth patent filing strategies in technical areas”. Another US patent attorney, Jennifer Che’s time in-house at Vertex Pharmaceuticals and Axcella has made her acutely “aware of the commercial considerations that are important to a business without us having to articulate them. She always delivers strategic advice to meet these objectives.” As one loyal customer puts it: “Jennifer gives us confidence that the IP portfolio is being managed properly and there is no question that she gives her full focus to the client’s needs.”

Hogan Lovells

Hogan Lovells’ Hong Kong office is part of an expansive international network advising multinationals on all areas of intellectual property. Through an association with Chinese firm Fidelity, it offers direct Chinese legal advice and litigation services. Life sciences and pharmaceuticals are among Hogan Lovell’s specialties, although the group is thoroughly familiar with telecommunications and electronics as well. Relying on 30 years of patent litigation and commercial IP experience, Hong Kong-based Andrew Cobden gets involved in both local and mainland China patent cases. He is currently helping Otsuka Pharmaceutical enforce two of its second medical use invention patents relating to valuable pharmaceutical Abilify.

Letters & Thoo 

IP boutique Letters & Thoo has a knack not just for protecting intellectual property, but for building lasting client relationships. This is evident from the overwhelming amount of positive feedback that it gains from patent owners with first-hand experience of its work: “To be frank, I learned more about IP strategy in a single meeting with them than dealing with other firms over a 17-year period. You quickly realise that these guys do things differently.” “I have felt genuinely blessed to have formed a strategic alliance with them. I consider them critical partners to my operational activities.” Attuned to rights holders’ changing needs, the team has recently focused on growing its knowledge of AI-related IP issues. “Letters & Thoo stand out among the best of the best due to their resolve to understand the commercial and legal issues facing a business, as well as for their outstanding technical expertise and availability when needed urgently.” “When it comes to intellectual property, the need for a solid grasp of local conditions, laws and culture, and other subtleties as it pertains to the market in which you and the value that a solid IP strategy can give is frankly a huge asset that can change the game. If you are an innovative company which thrives on the constant need to innovate, Timothy Letters and Laurence Thoo are your people. I endorse them without reservation.” The founders are also the chosen advisers of local universities and government entities such as the Hospital Authority.

Marks & Clerk

“A solid professional substantive patent firm,” Marks & Clerk Hong Kong’s success can be attributed to a diverse team of practitioners from eight jurisdictions. Their combined knowledge enables them to draft and prosecute patents in a wide range of technical areas. The group places great importance on working with clients to gain an understanding of how best to utilise IP rights to add value to their business. Mike Flint and life sciences group leader Michael Lin are two “patent attorneys with very good drafting and prosecution skills”. Both are heavily involved in the wider IP community through regional and international IP organisations.

Mayer Brown

Full-service outfit Mayer Brown is recognised for its expertise in the technology, media and telecommunications (TMT) field. As Chinese businesses increasingly look to expand into foreign markets, Mayer Brown helps them to achieve victory after victory in Section 337 litigations at the US International Trade Commission. Co-chair of the firm’s global IP group and head of the Asia IP and TMT group Gabriella Kennedy is a valued partner of the Hong Kong Science and Technology Park, where she is a panel member providing legal support to the Leading Enterprises Acceleration Programme. Kennedy also serves on the Hong Kong International Arbitration Centre Panel of Arbitrators in IP disputes and was recently appointed as an IP arbitrator.

Norton Rose Fulbright

“Norton Rose Fulbright has a solid and reputable practice, the reputation of which is built upon the commercial know-how of its senior lawyer Justin Davidson.” The Hong Kong team advises on the acquisition, exploitation, use and enforcement of IP rights worldwide, backed by a well-connected network of 20 offices spread across five continents. The firm is an indispensable partner to companies in the life sciences, pharmaceuticals and biotech sectors, including GlaxoSmithKline and Pfizer. City University of Hong Kong and Hong Kong’s Applied Science and Technology Research Institute are two big local names that have recently approached Davidson for his “thorough and considered advice”.

Spruson & Ferguson

“One of very few firms in Hong Kong that can handle a substantial volume of work in-house,” Spruson & Ferguson specialises in offering integrated IP services throughout the Asia-Pacific region. The technically talented patent team in Hong Kong leaves clients “very happy” – practitioners offer expert help to local and international businesses with the support of a wealth of in-house resources, “providing their expertise across multiple jurisdictions”. Chemical and life science group leader Robert Jackson ensures that “all client matters are taken seriously and the quality of work is above that of their peers”. Jackson is a registered US patent attorney who prepares, drafts and prosecutes patents with flair.

Wilkinson & Grist

Wilkinson & Grist has had over a century to perfect its IP services, with local and foreign business owners alike reaping the benefits. A dedicated patent team based in the firm’s Hong Kong and Beijing offices expertly prosecutes patents, manages portfolios and

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 – the side specialises 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. Jonathan Chu of CMS-associated Lau, Horton & Wise has broad horizons – he practices in multiple IP areas, across the contentious/non-contentious divide and in Hong Kong and China – making him a percipient adviser. Charles Ho, a dependable adviser to local start-ups in the Hong Kong Science Park and a close partner of foreign firms, 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 on licensing negotiations and IP due diligence for the likes of the Hong Kong Science and Technology Parks Corporation and a number of 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, particularly 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. Jones Day’s Chiang Ling Li tackles 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
  • Justin Davidson - Norton Rose Fulbright
  • 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
  • Timothy Letters - Letters & Thoo 
  • Michael Lin - Marks & Clerk
  • Jacqueline C Lui - Eagle IP Ltd
  • Jeffrey McLean - Deacons
  • Laurence Thoo - Letters & Thoo
  • Ewan Bewley - inCompass IP
  • Jennifer Che - Eagle IP Ltd
  • Andrew Cobden - Hogan Lovells
  • Justin Davidson - Norton Rose Fulbright
  • Andrea Fong - Wilkinson & Grist
  • 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 - ELLALAN
  • Jonathan Chu - CMS
  • Ted Chwu - Bird & Bird LLP
  • Andrew Cobden - Hogan Lovells
  • Justin Davidson - Norton Rose Fulbright
  • Lewis Ho - Loeb & Loeb LLP
  • Gabriela Kennedy - Mayer Brown
  • Cedric Lam - Eversheds Sutherland (International) LLP
  • Timothy Letters - Letters & Thoo 
  • Ian Liu - Deacons
  • Isabella Liu - Baker McKenzie
  • Alison Wong - Bird & Bird LLP
  • Catherine Zheng - Deacons

Luminaries

  • Ella Cheong - ELLALAN
  • Henry Wheare - Nixon Peabody CWL