Allen F Tao

IAM Research

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Silver - Individuals: litigation

Liu, Shen & Associates is one of the true giants of CNIPA patent prosecution work, long having been the first port of call for foreign filers seeking safe sanctuary for their rights in China. It has grown into a colossus of the PCT system as well, joining the select club of firms responsible for more than 1,000 filings through the global patent system in 2020. On the litigation side, Liu, Shen is the home base for “skilled and zealous advocates” such as Allen Tao and Jun Qiu.

Allen F Tao's Profile

Allen F Tao specialises in patent invalidation, litigation and dispute resolutions before the Chinese administrative agencies and the courts, as well as in counselling on IP strategies and patent clearance searches. His practice also covers patent prosecution in the fields of material science, semiconductors, displays and mechanical engineering. Since 1998, he has handled dozens of patent-related proceedings before the courts, as well as some cases relating to trademarks, trade secrets and copyright issues. Mr Tao has represented a number of multinational corporations in IP litigation cases in China. He also has extensive experience in contractual issues, licensing and other IP-related issues that foreign companies doing business in China face.

Mr Tao received his bachelor’s and master’s degrees in material science and technology from the University of Electronics Science and Technology of China in 1988 and 1991 respectively. He received professional training at a law firm in Germany in 1997 and further obtained an LLM from the John Marshall Law School in the United States in 2001 and a master of law degree from the Huazhong University of Science and Technology in 2004. Mr Tao worked at a research institute for four years before joining Liu, Shen & Associates in 1995.
 

Firm Profile

Liu, Shen & Associates is a leading IP law firm established in 1993 by 10 founding partners known as pioneers for their role in the enactment of (and being the first to practise under) the Patent Law and the Trademark Law in China in the 1980s. Liu Shen & Associates is committed to always providing superior services in relation to patents, trademarks, copyright, trade secrets and other IP matters.

Liu Shen & Associates is experienced in providing comprehensive and integrated IP solutions covering patent prosecution, litigation, invalidation and various kinds of research and analysis, including freedom-to-operate and pre-litigation patent portfolio analyses. In a rapidly changing technological and IP landscape, Liu Shen & Associates prides itself on its ability to adapt swiftly to cover the full spectrum of our clients’ needs by delivering a tailored, far-sighted and deeply integrated approach to intellectual property.

The strengths of Liu Shen & Associates lie upon the quality and expertise of its staff. Multiple litigation cases handled by the firm are ranked as Top 10 IP Cases by local high courts and the Supreme Court. With more than 200 multi-dimensional and multi-talented professionals of whom 40% hold PhDs, the firm’s high-quality services have won long-lasting trust from a large number of multinational corporations. Carrying forward our respected ethos “client interest first, case quality first, integrity and honesty first”, Liu Shen & Associates will keep up dedicating ourselves to providing the highest quality of legal service to clients.

Recent awards

  • IAM Patent 1000, The World’s Leading Patent Professionals 2019 – Litigation & Non-Litigation: Highly Recommended Law Firm
  • Chambers Partners Asia-Pacific 2019 and 2020 – Litigation: Recognised Practitioner, Non-Litigation: Band 1
  • Corporate INTL 2017-2019 – Design law: Law firm of year in China
  • Asialaw Profile 2018 and 2020 – Intellectual Property – Outstanding IP Law Firm
  • Managing Intellectual Property 2018 – Patent Prosecution and Litigation: Tier 1 Firm
  • China Business Law Journal 2018 and 2019 – Outstanding Law Firm

Our services

  • Patent mining, application, layout and strategy making
  • Patent re-examination, invalidation and litigation
  • Analysis of patent maps in specialised fields
  • Monitoring and analysis on patents from competitors
  • Patentability/validity, freedom-to-operate/infringement search and analysis
  • Due diligence on intellectual property in investment, M&As
  • Negotiations in patent licensing and transferring, contract drafting and reviewing
  • Trade secret consulting, negotiation and litigation
  • Consultation on registration regulations related to drugs and medical devices

Cases

  • Qualcomm v Apple: Represented Qualcomm in group software patent infringement cases and related patent invalidation cases in China. We were successful in defending validity of most patents to make a solid basis for the final settlement in China.
  • Samsung v Huawei: Represented Samsung in multiple-patent infringement cases and related patent invalidation cases in China, involving technologies in telecommunication, user interface operation and software. FRAND issues in this case directly contributed to the formulation of court guidelines on SEP infringement cases.
  • LEGO A/S v Shanghai Deguang: Represented LEGO A/S to file opposition against the trademark LEGO and finally won the administrative litigations, with the court recognising the trademark of LEGO as a well-known mark on goods of “toys”.
  • Dow Chemical v The TRAB: Represented Dow Chemical in a trademark refusal review case to overturn the TRAB decision. The court held that the reputation of the precedent registered trademarks should be taken into consideration in the trademark refusal review case.

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