Hong Kong

2019 looks set to be a landmark year for Hong Kong’s patent practitioners. The talk of the town is the advent of the new patent system, which will aim to sharpen the jurisdiction’s stance on IP rights by introducing an original grant patent system to co-exist alongside the current re-registration regime. With some senior, highly experienced private practitioners joining the Intellectual Property Department as patent examiners, the new system appears to be making a positive start. The government has also earmarked an additional HK$50 billion to promote technological innovation in the region, financially supporting the life sciences and biotechnology sectors in particular. Further, the judiciary is contemplating the establishment of a specialist IP court to deal with the growing number of IP cases in Hong Kong. Taken together, the hope is that these exciting developments will enable Hong Kong’s patent apparatus to keep up with those of its more established Asian rivals.

Firms: litigation

  • Bird & Bird
  • Deacons
  • Baker McKenzie
  • Hogan Lovells
  • Jones Day
  • Norton Rose Fulbright Hong Kong

Firms: prosecution

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

Firms: transactions

  • Highly recommended
  • Bird & Bird
  • Deacons
  • Recommended
  • Baker McKenzie
  • Hogan Lovells
  • Jones Day
  • Letters & Thoo 
  • Mayer Brown
  • Norton Rose Fulbright Hong Kong

Baker McKenzie

Baker McKenzie’s Hong Kong bureau draws from the deep pool of regional expertise housed in its vast network of Asia-Pacific offices to expertly fulfil clients’ every need. Whether in regard to global patent filing, technology transfers or other types of transaction, start-ups and multinationals alike flock to the esteemed set for well-rounded advice. With a PhD in molecular pharmacology and toxicology from Imperial College London, Isabella Liu is one of the most qualified drafters in town. Her ability to commercialise complex pharmaceutical and life sciences patents is first rate. She also has a talent for successful patent invalidation before the Patent Re-examination Board.

Bird & Bird

East or West, Bird & Bird is a force to be reckoned with. Sitting at the apex of the Hong Kong prosecution and litigation rankings, the outstanding ensemble has a fiercely loyal client base scrambling to receive its commercially focused and forward-thinking advice. With versatility and technical expertise to spare, the team handles the full gamut of multi-jurisdictional and cross-disciplinary patent mandates. Asia IP group helmsman Matthew Laight is “one of the most experienced and sought-after patent litigators in the region”, having been litigating electronics and life sciences patent cases for 20 years. UK and European patent attorney Ted Chwu heads up the global technology and communications practice. Trained as an aeronautical engineer, he manages the Hong Kong and China portfolios of clients ranging from aerospace companies to tertiary institutions with poise. Working in perfect harmony, the two partners have been jointly advising the Hong Kong government on patent law reforms since 2014. Directing the Asia life sciences and healthcare sector group with verve, Alison Wong offers sterling advice for contentious and commercial patent matters alike – especially where they involve pharmaceuticals and medical devices.

Deacons

Deacons has by far the highest number of individuals ranked in our Hong Kong chapter this year – and the level of client feedback that its attorneys received shows why. “Ever reliable and responsive, its legion of Australian, Chinese, European and UK-qualified patent attorneys provide sweeping coverage of all major technical areas and are able to advise tactically on the procedural aspects as well.” The firm’s most experienced patent prosecutor, Jeffrey McLean, is a former IP Australia patent examiner who is completely au fait with cutting-edge global filing strategy. He is a technically gifted attorney who prioritises clients’ needs; in the words of one impressed patron: “I have always been pleased with his work and never had any reason to complain”. The “business-minded” Daniel Holt also earns a spot in this year’s IAM Patent 1000. Having spent over a decade at Hewlett-Packard and in private practice, the European and UK patent attorney offers “a rare multinational perspective on patent issues spanning multiple jurisdictions” and “learns very fast to understand invention disclosures and communicates effectively with inventors, so I never have to worry”. Trained in electrical engineering, German-speaking China attorney Shuwei Tang makes his debut in the rankings for thinking outside the box to come up with innovative patent prosecution strategies that are perfectly aligned with clients’ commercial objectives. The patents and designs team is led by Catherine Zheng, a Hong Kong, Canada and New York qualified lawyer with a chemistry background. Not only does she advise on Chinese and regional patent prosecution for clients including the Hong Kong Polytechnic University and Renishaw PLC, but she also fights tooth and nail in the courtoom to win landmark patent cases and tackle the most daunting licensing instructions. She makes a formidable duo alongside IP department co-head and noted litigator Charmaine Koo, who undertakes critical and commercially significant cases for giants such as Gmedia and PCCW. Newest partner Ian Liu – uniquely placed as a qualified patent attorney and solicitor – is also making a name for himself in the Chinese litigation space.

Eagle IP Ltd

The “top-quality, one-of-a-kind” patent prosecution practice at Eagle IP garners fantastic client feedback. “A rare find in the region and valued for their unique cross-border knowledge and expertise, they always provide sound advice, creative and cost-effective solutions as well as prompt, competent service. For instance, although it was not their usual task, they were able to produce a comprehensive translated document and advice within 24 hours.” The bilingual, technically adroit team specialises in technology-related IP matters, especially US and Chinese patent proceedings. Besides managing global IP portfolios, the firm drafts airtight applications with the utmost attention to detail. As founder of Eagle IP and president of the Hong Kong Institute of Patent Practitioners, Jacqueline Lui receives critical acclaim for the “in-depth, business savvy know-how she has gathered through years of on-the-ground experience in the United States and Singapore”. “She is able to integrate her training with the local business conditions and has become a truly international patent practitioner with extensive knowledge of the law, as well as the practical aspects and business peculiarities of these different jurisdictions.” New to the Hong Kong scene but “a seasoned US patent veteran with a niche for providing top-of-the-line US and international patent prosecution work”, Jennifer Che recently joined Eagle IP from an in-house position, adding “tremendous value and credibility” to the firm. She brings not only deep expertise in biotechnology and pharmaceuticals, but also the “ability to build a sophisticated global patent portfolio that can withstand detailed diligence”.

Hogan Lovells

Leveraging its extensive international network with finesse, Hogan Lovells provides a well-rounded IP service for a slew of long-term clients in various industries, especially niche sectors such as nanotechnology. The firm is well represented in Asia with a handful of offices in major financial centers, all of which boast an excellent track record of securing iron-clad rights protection and negotiating multi-jurisdictional patent licensing agreements on behalf of life science, technology and telecoms giants. Always to be found at the forefront of contentious IP issues in the region, the outfit continues to represent Otsuka Pharmaceutical Co Ltd in a high-profile infringement case regarding second medical use patents. Skilled in complex biotech, pharmaceutical, chemical and electrical patent issues, Andrew Cobden is a dual threat in the courtroom and at the negotiating table. Qualified in the United Kingdom and Australia, he also advises the Hong Kong Association of the Pharmaceutical Industry on patent matters and provides extensive media comment on new IP developments.

Jones Day

As the first US law firm to practise in Hong Kong, Jones Day is known for its high-quality litigation capabilities, which are enhanced by a fully integrated global network and versatile local team that operates in several jurisdictions – including the United States, Taiwan and Singapore. Through close collaboration with the firms’s five other Asian offices, the Hong Kong team serves domestic and international companies sterling contentious counsel and cross-border transactional strategy. Since representing Qualcomm Incorporated in 17 litigation cases, Haifeng Huang has established a name for himself as a tenacious IP litigator and a formidable courtroom foe across all sectors. For cases involving Chinese pharmaceutical law, Chiang Ling Li is an inspired choice; she never fails to put forth original strategic perspectives and creative legal suggestions.

Letters & Thoo 

Rising to the highest tier of the prosecution table, the duo at the eponymous Letters & Thoo lead a young but sophisticated IP boutique that earns some of the most effusive praise in the jurisdiction for its “top-notch” patent drafting and its “pragmatic, commercially savvy advice on negotiating the scope of patent licenses”. Lauded for its ability to channel obscure and original arguments, the growing team attracts eminent clients such as the Hong Kong government, as well as local entities and small to medium-sized growing enterprises seeking protection for their state-of-the-art inventions. Timothy Letters – a registered Australian and New Zealand patent attorney with a doctorate in biomedical engineering – uses his “extensive insight into the complexities and commercial realities of pharmaceutical patents” to prosecute and strategise with aplomb. Partner Laurence Thoo is equally discerning about patent law, as one client’s comments confirm: “He takes a long-term view and provides sound advice, so we look to him as part of the team rather than just another service vendor. We have complete confidence that the patents are watertight and can stand in good stead to defend against infringement or act as collateral in potential licensing negotiations”.

Marks & Clerk Hong Kong

Distinguished prosecution firm Marks & Clerk comes highly recommended for original patent drafting, with its practitioners representing such a wide technical spectrum that inventors of all hues will find themselves in safe hands. The “solid, professional and substantive” ensemble – consisting of 21 practitioners hailing from eight jurisdictions across Europe, North America, Asia and Australasia – has been offering a global experience to enterprises of all sizes and universities for more than 125 years. Clients love the firm’s “reasonable fees”, sharp business acumen and prodigious filing capabilities. At the leading edge of local patent developments, its most recent specialism is plant variety registrations – a relatively new sector in Hong Kong and China. Held in exceedingly high regard by his peers, trans-Tasman patent attorney Mike Flint is praised for his “good drafting and prosecution skills”. Leading the life sciences group, “helpful, courteous and knowledgeable” US patent attorney Michael Lin “provides prompt and quality services, sometimes at very short notice”. Augmenting the electronics and biochemical teams respectively are new partners Zephyr Su and Monique Chu, both of whom are qualified in the United Kingdom and China.

Mayer Brown

Its “rich experience in IP protection work” is just one reason that clients look to the “professional and client-focused” team at Mayer Brown to assist with complex IP acquisitions and due diligence matters across multiple jurisdictions. As a full-service law firm, it handles patent searches and negotiates high-stakes deals across Asia, particularly those with a Chinese component. The multilingual head of Asia IP and technology, media and telecoms, Gabriela Kennedy, is a renowned general IP practitioner with a soft spot for start-ups at the Hong Kong Science & Technology Park, for whom she proactively develops outstanding patent strategies and enforces patent rights. She has an impressively loyal following of famous multinational companies, including Chinese giant Alibaba.

Norton Rose Fulbright Hong Kong

Full-service global titan Norton Rose Fulbright is equally adroit at resolving contentious and non-contentious IP issues. Drawing on its worldwide technical ability for patent prosecution matters, it advises various clients in the life sciences industry, while also receiving crucial instructions from prominent local research entities including the City University of Hong Kong and the Hong Kong Applied Science and Technology Research Institute. Lawyers are currently busy representing Dell as lead counsel on a Chinese patent invalidation case at the Supreme People’s Court in Beijing. Clients looking to strike advantageous IP deals are well advised to seek out mastermind Justin Davidson, who is described as “completely reliable” and “highly efficient”. The “client-oriented and personable” IP lawyer garners praise for “analysing complex legal issues, providing insightful and valuable solutions, and offering precise, timely, commercially astute advice”.

Spruson & Ferguson

Since setting up in greater China two years ago, Spruson & Ferguson has been prosecuting patents for universities, start-ups and solo inventors with gusto. Appreciated for its “quality work” and “easy and direct communication”, the technically gifted team comprises six highly qualified professionals replete with in-house experience, who are always on standby to tackle complex patent applications. A chemist by training, US patent attorney Robert Jackson uses his extensive patent drafting and prosecution experience, amassed both in-house and in US and Singapore-based patent law firms to produce measured, crystalline work time and time again. He cultivates close relationships with his clients and continues to find joy in passionate discussions about the most granular technical details of his latest portfolios.

Wilkinson & Grist

Steeped in over 130 years of history, Wilkinson & Grist is one of Hong Kong’s longest-standing full-service law firms. It is firmly entrenched in the local IP space, managing and prosecuting patent applications in numerous industries including luxury lifestyle products and biotech. Not only was Wilkinson & Grist the first Hong Kong firm to open a foreign IP agency in Beijing, it also continues to be one of the highest filers of e-applications of patents, designs and trademarks in the jurisdiction. Trusted for its innate commercial acumen, it serves a variety of devoted local and foreign companies on a spectrum of patent matters. Mena Lo oversees a number of prominent patent portfolios belonging to the likes of Samsonite and Ultra Biotech Limited, providing comprehensive and practical advice that caters to their business needs, as well as their legal and technical issues. She is supported by IP veteran Yvonne Chua, who is now a consultant at the firm.

Other recommended experts

Located at Hong Kong Science Park to cater to local start-ups, inCompass IP Ltd is led by Ewan Bewley, an expert in Asian IP law and a diverse range of electrical and mechanical technologies. Richard Bird of Freshfields Bruckhaus Deringer is always poised to give gold-plated advice on technology, media and telecoms transactional patent matters in Asia. The esteemed Ella Cheong, of Ella Cheong & Alan Chiu, Solicitors & Notaries, was recently inducted into IAM’s IP Hall of Fame. She is an acknowledged master at handling patent advisory and infringement work. Cheong’s right-hand man, Alan Chiu, provides “excellent, reasonably-priced client-focused solutions” to a host of domestic and foreign clients, including some well-known international luxury brands. Chinese and US patent attorney Charles Ho, of Barron & Young Intellectual Property Ltd, enthusiastically advises individual inventors, start-ups and Fortune 500 companies on a diverse range of complex patent prosecution matters. Companies in the life sciences and technology industries seeking to monetise IP assets in the Hong Kong market cannot do better than instruct Lewis Ho from Loeb & Loeb. An ex-Dorsey & Whitner partner with over 20 years of experience under his belt, Cedric Lam is now head of Eversheds Sutherland’s IP practice in Greater China, where he counsels large multinational companies on sophisticated deals on a daily basis. At the helm of FitzGerald Lawyers’ IP practice, chartered UK patent attorney Hans Lee prosecutes patent applications with subtlety in the telecoms, semiconductors and biotech areas, among others. Assisted by an extensive network of technical experts, energetic IP veteran Henry Wheare takes a hands-on approach at Nixon Peabody CWL, offering candid and well-timed advice to big local names as part of his practice.

Individuals: litigation

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

Individuals: prosecution

  • Ted Chwu - Bird & Bird
  • Mike Flint - Marks & Clerk Hong Kong
  • Timothy Letters - Letters & Thoo 
  • Jacqueline C Lui - Eagle IP Ltd
  • Jeffrey McLean - Deacons
  • Ewan Bewley - inCompass IP Ltd
  • Jennifer Che - Eagle IP Ltd
  • Charles Ho - Barron & Young Intellectual Property Ltd
  • Daniel Holt - Deacons
  • Robert Jackson - Spruson & Ferguson
  • Hans Lee - FitzGerald Lawyers
  • Michael Lin - Marks & Clerk Hong Kong
  • Isabella Liu - Baker McKenzie
  • Mena Lo - Wilkinson & Grist
  • Shuwei Tang - Deacons
  • Laurence Thoo - Letters & Thoo

Individuals: transactions

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

Luminaries

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