Special Feature: China's Leading IP Law Firms
June 02, 2008 | BY
clpstaff &clp articles &IP infringement is still one of the greatest challenges for the Chinese government. Leading international and local law firms have been involved in many significant cases, which show how the IP system in China is evolving.
The government has been doing a lot of work to raise people's awareness about intellectual property protection and enforcement compared to years past. Domestic and international companies in the PRC have become more knowledgeable about their IP rights, and are more willing to consult law firms on the proper procedures of having their brands and inventions registered. By the end of November last year, trademark registrations in the country had reached 3.01 million, a 29% increase from the previous year, according to a national work conference in Beijing for the State Administration of Industry and Commerce. The Trademark Office handled over 41,000 trademark infringement cases, and 143 cases were being transferred to judicial authorities. In terms of patent applications, the Patent Office last year had accepted four million applications (local and international).
The proposed amendments to thePatent Law(专利法), the first draft of which was released in 2006, is expected to be finalized in 2008. The draft law proposes that any patent applications for inventions that were completed in China must first be filed in China. However, practitioners say that there is a lack of clear interpretation on “completed in China”.
The proposed amendments to the Trademark Law(商标法), of which the first and second drafts were promulgated in 2006 and 2007 respectively, provide for more solid protection of unregistered trademarks. However, limitations remain on the examination of applications, while examinations of identical or similar trademarks would no longer be carried out. The trademark registration authorities would be more likely to be alerted, resulting in an increase in the number of rejected cases. The proposed amendments have increased civil compensation for trademark infringement to Rmb1 million (US$141,000).
In the coming years, China will set up about 40 Intellectual Property Aid Centers in the country, aiming to strengthen IPR protection by assisting entities with economic difficulties in IP litigation and disputes, according to Tian Lipu, director of the State Intellectual Property Office of China.
This annual report provides an overview of the leading PRC law firms' IP practices and achievements in the PRC from 2007 onwards.
INTERNATIONAL FIRMS
| Tier | International Law Firm |
| 1 | Baker & McKenzie |
| Lovells | |
| Rouse and Co. International | |
| 2 | Bird & Bird |
| Deacons | |
| Freshfields Bruckhaus Deringer | |
| Gide Loyrette Nouel | |
| Jones Day | |
| Mayer Brown JSM | |
| Wilkinson & Grist | |
| 3 | DLA Piper |
| Morrison & Foerster | |
| Paul, Hastings, Janofsky & Walker LLP | |
| Pinsent Masons | |
| Stephenson Harwood & Lo | |
| Vivien Chan & Co. |
Tier 1
Named Hong Kong IP Firm of the Year for four years running at the Asialaw IP Awards, Baker & McKenzie has a strong IP practice team providing legal services to leading companies across an array of industries. Established in 1976, the firm now has five IP partners in its Beijing and Shanghai offices. In March 2008, the firm hired Sian Bowen as a senior associate.
Lovells is rated among the top international law firms serving China for its IP practice, and won the China Foreign Firm of the Year Award at the Managing Intellectual Property Global Awards 2008. On December 5 2007, the firm opened a domestic trademark agency in China, operating under the name Lovells (Shanghai) Trademark Agency Service Co. Led by Zhen Feng and Deanna Wong, the agency is a wholly owned subsidiary of Lovells' Hong Kong office.
Rouse & Co. International is an intellectual property consultancy with offices in 17 cities world-wide. It advises clients, including leading multinational IP owners, on their IP strategies and assists in the protection, exploitation and enforcement of intellectual property rights world-wide. Its staff includes lawyers, patent and trade mark agents and information professionals. In May 2008 Troy Cai joined the Beijing office, and will be heading up their patent practice.
Tier 2
Bird & Bird's IP practice is one of the core practices of the firm. With Matthew Laight as the head of the IP team, the firm has 17 IP practitioners in Hong Kong and Beijing. Ai-Leen Lim, the head of the IP portfolio management practice in Asia, joined the firm in early February 2008. In May 2007, Bird & Bird IP (Beijing) Co, a trademark agency in Beijing, was established as a wholly owned subsidiary of Bird & Bird Hong Kong. The agency enables the firm to file trademarks directly in the PRC.
In April this year Deacons was named 2008 Hong Kong Firm of the Year by the international publication Managing Intellectual Property. The firm is based in Hong Kong but also has offices in Shanghai, Beijing, Guangzhou, Indonesia, Malaysia, Taiwan, Thailand and Singapore.
With offices in both Hong Kong and Beijing, Freshfields Bruckhaus Deringer provides professional legal services to clients. The firm was an awards finalist for the Asia-Pacific IP Firm of 2007 by Asialaw last year.
Gide Loyrette Nouel provides IP services to many notable clients, including luxury goods houses. With Charles-Henri Leger as the head of the IP team, the firm has six IP practitioners in China – Huang Zhen, Daniel Plane, Celine Bourjolay, Su Yanqing and Li Shen along with Leger are the firm's top IP specialists.
Led by Peter Wang, Anthony Chen and Benjamin Bai, Jones Day has over 20 IP lawyers and patent agents based in Beijing, Shanghai, Hong Kong and Taipei. In January 2008 the team was joined by Steven Cui (Beijing office) and Daniel Mao (Shanghai office). The firm recently represented a Chinese plastic products company in a patent infringement suit, and defended a leading global home improvement retailer in a patent infringement suit. Representative IP clients include Nokia, Abbott Laboratories, Eastman Chemical Company, Textron and General Motors.
Mayer Brown JSM has offices in Beijing, Shanghai, Guangzhou and Hong Kong, totalling over 100 lawyers including six China Appointed Attesting Officers. They were named Hong Kong Law Firm, PRC Office of the Year at the ALB China Law Awards in 2007.
Howard Tsang, Dun Ming Yue and Helene Jin are among the best-known IP practitioners at Wilkinson & Grist. Recently welcomed to the firm were Ma Rue as a patent agent, Jin Wan Li as a legal counsel and Zhang Miao Miao as a trademark agent. Wilkinson & Grist successfully raided a party in Zhaoan, Fujian, for infringing Hennessy's 3D mark.
Tier 3
DLA Piper has offices in Beijing, Shanghai and Hong Kong. Michael Leow joined as a Senior Associate in October 2007, and David Olds will be joining as a Senior Associate in July 2008. Clients include Hermes International, Apple Computer Inc and Plant Hollywood International Inc.
Morrison & Foerster is well recognized for its industry leading expertise in intellectual property litigation and transactions including: litigation of patent, copyright, trademark and trade secret actions; licensing of intellectual property rights; franchising; and development and coordination of global intellectual property strategies. As lead international counsel to the Beijing Organizing Committee for the XXIX Olympiad 2008 Summer Games, the firm also addresses intellectual property issues arising in the context of the marketing, entertainment, promotional and professional service arrangements required to stage the 2008 Summer Games in China.
Paul, Hastings, Janofsky & Walker has nearly 150 attorneys across the Beijing, Shanghai and Hong Kong offices, providing services to US-based clients operating in China and throughout the region. They also have a dedicated Japan-China team advising Japanese and international clients on their investments in China.
Pinsent Masons have more than 50 lawyers permanently based in Asia, with offices in Beijing, Shanghai and Hong Kong. One of their most significant projects was advising the prime contractor in relation to IP and performance issues arising out of a HK$800 million immigration control system.
Stephenson Harwood & Lo's intellectual property practice received acclaim from Asia Law & Practice in its publication Asialaw Leading Lawyers 2007, in which Chloe Lee (Partner) was named one of the top lawyers in Asia-Pacific. The firm has over 40 lawyers, with offices in Hong Kong, Shanghai and Guangzhou.
Vivien Chan of Vivien Chan & Co was identified as one of Asia's leading lawyers in the area of intellectual property in the annual AsiaLaw Leading Lawyers Survey 2007. The firm has offices in Beijing and Shanghai, and affiliate offices in Chongqing and Shenzhen.
LOCAL FIRMS
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