Top China intellectual property firms

May 13, 2010 | BY

clpstaff &clp articles &

The leading IP firms in Beijing and Shanghai are showcased here. For other cities, please refer to the Chinalaw Profiles 2010 publication or check online at www.chinalawandpractice.com as the editorials will be released shortly.




Spotlight on China's top IP firms:

Beijing

CCPIT

CCPIT was the first IP law firm in China to serve international clients; it has been doing so since early 1957 and was authorised to do patent work in 1984. The firm boasts a well-established client base and is renowned for its prosecution work. It houses a team of over 450 members and 170 patent and trademark lawyers. Leading partners of the firm are core members of China's major law associations. For example, President Hao Ma and vice-president Tianan Zhang are council members of the All China Patent Agents Association (ACPAA) while partner Zhongqi Zhou is vice-president of China Trademark Association. Other leading lawyers include Qingfa Meng and Chuanhong Long.

China Patent Agent (HK)

Headquartered in Hong Kong, China Patent Agent (HK) has branches in Beijing, Shanghai and Shenzhen. The firm handles a large amount of patent and trademark prosecution work, is involved in lawsuits and invalidation proceedings and has participated in the drafting of IP legislation, such as the amendment to the Patent Law and the Implementing Rules.

This year it successfully defended the US pharmaceutical manufacturer Pfizer against patent invalidation proceedings by the Patent Re-examination Board of the State Intellectual Property Office (SIPO). The case was filed by a group of local drug makers against Pfizer's Viagra patent. Other clients include Philips, General Motors, GE, Dupont, Ericsson and Merck.

Liu Shen & Associates

Liu Shen & Associates is one of the biggest IP boutiques in China, known for its patent and trademark drafting and prosecution work. The firm houses over 365 staff, with 25 partners and 139 patent attorneys in its Beijing and Shanghai offices. This year it hired partner Zhuang Yuan from New York firm Scully Scott Murphy & Presser.

Recent clients include Sony, Siemens, Samsung, Black & Decker, P&G and Schneider.

King & Wood

As part of one of the largest full-service firms in China, King & Wood's IP team has been involved in several high-profile cases this year. In May 2009, it worked on the trademark assignment contract arbitration for Hangzhou Wahaha Group against the joint venture of Wahaha and Danone Group before the Hangzhou Intermediate Court.

In an unfair competition dispute, it defended German company Stadtbauatelier on a company name infringement against the company, which was established by its former employee. The case was filed in both China and Germany and a Chinese court has rejected the infringer's claim. The case is pending for appeal.

Boss & Young

Johnson Wang heads up the IP practice of Boss & Young in Beijing. Founded in 2001, the firm houses 12 partners and this year it has set up a team working for state-owned enterprises under the State-owned Assets Supervision and Administration Commission (Sasac) on IP strategy management.

Partner Johnson Wang leads the advice to Shenhua Group Corporation, a mining company, providing a full patent service including patent prosecution, analysis and due diligence. It also provides regular legal advice to a US home appliances maker on the IP aspects of its joint venture in China.

In an IP dispute, the team successfully helped a domestic pharmaceutical company in a patent infringement and invalidation case against a multinational company.

China Science Patent & Trademark Agent

Partner Nongfan Zhu heads China Science Patent & Trademark Agent, which was originally part of the state-owned Chinese Academy of Science. The IP specialist team acted for a Japanese company on a patent infringement case in connection with prior art elements. The patent invalidation case brought up by a Chinese Trade Association was settled.

The firm's client database includes Matsushita, Samsung, Roche, Thomson and Procter & Gamble.

Fangda Partners

Fangda Partners has one of the strongest IP teams in China. Led by partners Dixon Zhang, Chaoyang Wang and Gordon Gao, the team has been involved in some of the most high-profile cases in China. This year the firm hired IP specialist Fang Qi from Dewey & LeBoeuf in New York.

In the trademark licence dispute between Wahaha and Danone, the firm acted for the Chinese beverage maker in the case, which was settled in October 2009 when Danone sold its equity in its China joint venture to Wahaha for €300 million. Senior adviser Zhipei Jiang, the former Chief IPR Justice of the IPR Tribunal of the Supreme People's Court, led the team.

The firm was also called upon by The9, Blizzard's former licensee, on a licensing dispute case. The case concerned the transfer of distributorship for online game War of Warcraft from The9 to Netease, Blizzard's current licensee in China.

Hylands Law Firm

IP is one of the core businesses of Hylands. It has over 120 members divided into 10 specialised teams. The firm is renowned for its trademark and anti-counterfeiting practice led by partner Yunze Lian, copyright advice headed up by founding partner Xiaogang Ma, and brand building team with Zhengfa Wang as leading lawyer. Wang is former director of the developing countries division of WIPO and has also worked with CCPIT and CPA in the past 30 years.

During the 2008 Olympic Games, the firm assisted CCTV International Network on a large number of IP protection issues such as copyright infringement on the internet, TV and mobile. In June 2009, it provided counsel to Guala Dispensing, an Italian sprayer manufacturer, on the invalidation of a design patent against a Chinese company. The China Patent Re-examination Board upheld the invalidation claim. In a domain name dispute, the firm acted for Italian company Consitex against Shenyang Haoyunlai, which had registered 14 domain names that included the trademark of the foreign company. In July 2009, Cietac decided that the disputed domain names should be transferred to Consitex.

Kangxin Partners

Headed up by managing partner Samson Yu, Kangxin Partners is one of the most active IP boutiques in China.

This year the firm worked on several IP disputes. It represented an individual in a patent invalidation case against Luquan Jiwei Electric Appliance before the Patent Re-examination Board, which invalidated the patent in July 2009. In an anti-counterfeiting case, the firm acted for Bio-Medical Research on a raid action by the Administration for Industry and Commerce (AIC) office in Shenzhen. The AIC has initiated criminal procedures and the case has been transferred to the court for hearing.

Unitalen Attorneys at Law

Housing over 400 members, Unitalen Attorneys at Law is one of the fastest-growing IP firms in China and boasts one of the highest numbers of patent and trademark filings. It successfully assisted Sony in entering licence agreements with local licensees, where Sony was entitled to royalty charges for the sale of products that adopted its patent.

In April 2009, partner Qiang Ma led the counsel to BMW on a raid complaint against an infringer which used BMW's trademark on machine bearings.

Wan Hui Da Intellectual Property Agency

Known for its trademark practice, Wan Hui Da has attracted roles in a number of trademark protection and anti-counterfeiting disputes. Senior partner Haiyan Ren led the counsel to Michelin on a trademark infringement case against the distributors of parallel imports.

In May 2009, senior partner Hui Huang assisted Southwest Pharmaceutical in winning the re-trial of a trademark dispute against the Trade Mark Review & Adjudication Board (TRAB) and F. Hoffmann-LaRoche. In a copyright case, the firm worked for Futabasha Publishers on the copyright of Crayon Shi-chan, a Japanese cartoon image, against three Chinese companies in Shanghai, Guangzhou and Jiangsu province. It helped the Japanese publisher apply to the Supreme People's Court for the order of a retrial for the case.

Zhongzi Law Office

IP is the biggest business for Zhongzi Law Office. This year it was involved in a high-profile case where it led the advice to German bus maker Neoplan Bus against two Chinese companies for copying its Starliner bus design. A Beijing intermediate court made a decision after a two-year trial, ordering damages of Rmb21.16 million against the Chinese companies.



Shanghai

Duan & Duan Law Firm

Duan & Duan Law Firm provides services in patent protection strategy, enforcement of IP rights, domain name disputes and anti-monopoly proceedings. In April 2009, it assisted Chivas Brothers in successfully obtaining the well-known trademark for the spirit brand Chivas Regal.

HaoLiWen PRC Attorneys

HaoLiWen has been involved in several recent trademark cases. This included advice to a US company on trademark transfer strategy in an asset spin-off project, representing a European brand on trademark protection and advertisement of slogans, and giving counsel to an international services company on the protection of cartoon images and trademark registration strategies.

It acted for an Irish business in the licensing of technology to a truck manufacturing company in China, and successfully assisted a US company in an administrative proceeding against counterfeit goods.

MWE China Law Offices

MWE China Law Offices often provides counsel to industrial and financial corporations, commercial and investment banks, high-growth companies, government bodies and start-ups. It has recently given advice to several foreign companies on their IP protection strategies in China, and assisted an agricultural business company on the enforcement of its Chinese invention patent against several local infringers.

Watson & Band

The IP practice takes up over half of Watson & Band's business. The three-partner firm houses 150 members, among which are 47 patent attorneys and eight former judges and government officials. In June 2009 the firm assisted Nike to obtain a favourable ruling at an intermediate court in Shanghai in connection with sponsorship disputes against Adidas and football player Zhi Zheng for contributory infringement. Partner George Fu and Jean Yang led.

Other clients include Starbucks, MPA, Caterpillar, Nokia, Shanghai Science and Biology Institute and auto-manufacturers in Germany and Japan.

Yao Liang Law Offices

Yao Liang has assisted clients with several IP issues this year, such as encroachment on business secrets, an anti-counterfeiting raid against a company in Zhejiang province, and patent invalidation proceedings against a domestic company.

This premium content is reserved for
China Law & Practice Subscribers.

  • A database of over 3,000 essential documents including key PRC legislation translated into English
  • A choice of newsletters to alert you to changes affecting your business including sector specific updates
  • Premium access to the mobile optimized site for timely analysis that guides you through China's ever-changing business environment
For enterprise-wide or corporate enquiries, please contact our experienced Sales Professionals at +44 (0)203 868 7546 or [email protected]