China Practice — Intellectual Property

The China related shift in the global economy is occurring simultaneously with another important shift in global business strategy – the role of intellectual property (IP) as a priority asset of every company. With more than 600 R&D labs in China, China became the world's second largest spender on R&D in December 2006 and also replaced Germany as the world's fifth largest source of patent application filings. As a result, the pursuit and protection of IP has become a prominent legal and business issue among companies with China related economic interests. Orrick's extensive China IP experience is illustrated in our China IP Practice brochure (PDF format).

• Orrick's China IP Services
• One of the Region's Largest IP Teams
• IP Partner Depth
• Science and Technology Degrees
• Multiple Languages and Practice Admissions
• Practical Industry Experience
• Representative China IP-Related Matters
• Orrick's Pan-Asia IP Practice Network
• Contact Us

Orrick's China IP Services

Orrick's China IP team assists local and foreign companies with all aspects of their IP rights in China, Hong Kong and the United States. Our team also has experience representing Chinese companies as they expand their domestic and foreign R&D and IP for global application, including IP-related litigation in the United States. Orrick's China IP team provides the following IP services:

• IP due diligence and portfolio counseling
• Section 337 U.S. International Trade Commission litigation
• Prosecution, enforcement and technology transfer/licensing arrangements for patent and trademark portfolios for companies doing business in China
• Office actions, oppositions, patent invalidation proceedings, anti-counterfeiting, anti-piracy efforts and patent and trademark enforcement litigation, both in China and in the U.S.
• Technology transfer and OEM contracts; joint ventures and strategic partnerships for R&D and manufacturing
• Regulatory compliance and proceedings in China and the U.S. including assistance with submissions to the China State Food & Drug Administration and the U.S. Food & Drug Administration, drug and device import registrations and licenses, GMP and GSP, insurance reimbursement and other government and regulatory affairs, as well as CRO and OEM contracts

One of the Region's Largest IP Teams

Orrick has one of the largest intellectual property practices of all foreign law firms in China. In Beijing, Shanghai and Hong Kong, Orrick has more than 15 local IP partners, of counsel, associates, and consultants providing patent, trademark and litigation services to Chinese and foreign companies. Orrick's team is credited with handling several thousand China patent and trademark applications and more than 100 patent and trademark related disputes in China during the past ten years.

Orrick's leading IP position in the region was solidified in 2007 when a highly regarded team of IP lawyers and staff joined Orrick's Beijing and Shanghai offices from Jones Day. Further strengthening the practice was the addition of a team of Hong Kong-based litigators from Paul Hastings with substantial China IP dispute resolution experience. The IP-focused lawyers from Jones Day and Paul Hastings expanded Orrick's existing regional IP practice based in our Hong Kong office.

Orrick's Hong Kong office opened in 2005 when the entire 25-lawyer office of Coudert Brothers joined Orrick. In 2006, Orrick opened offices in Beijing and Shanghai when most of Coudert's lawyers joined Orrick in those two cities. In addition to being first in Hong Kong (1972), Coudert was the first foreign law firm to establish a permanent presence in Beijing (1979), the first foreign law firm to be approved by the Ministry of Justice to establish a law office in China (Beijing, 1992) and one of the first foreign law firms to open an office in Shanghai (2001).

IP Partner Depth

Orrick's China IP practice is led by partner Dr. Xiang Wang, one of the few China IP lawyers who has a Ph.D. in Electrical and Computer Engineering, which he received from Drexel University (Philadelphia, U.S.), as well as a Masters of Science degree in Electrical and Computer Engineering (Drexel University) and a Bachelor of Science degree in Electrical and Computer Engineering (Sichuan University). Dr. Wang received his Juris Doctor degree from the University of Maryland and his Chinese Certificate of Laws from China University of Political Science and Law.

In addition to Dr. Wang (based in Beijing and Shanghai), Orrick's IP team includes two partners in our Hong Kong office, Robert Péand Adrian Yip, with IP-focused Asia-Pacific dispute resolution practices. Mr. Pé leads Orrick's Court Litigation and Arbitration practice and Mr. Yip leads the Regulatory Investigations and Corporate Counseling practice. Mr. Yip has an extensive trademark practice, specifically IP matters requiring liaising with regulatory authorities. Mr. Pé handles cross-border IP issues including infringement disputes and anti-counterfeiting.

Advanced Science and Technology Degrees

In addition to Dr. Wang's Ph.D. in Electrical and Computer Engineering, most of the members of our China IP team hold advanced degrees in science and technology fields such as Chemistry and Materials Science, Mechanical Engineering and Electrical Engineering. Several of our Beijing associates served as engineers in Chinese companies before becoming lawyers and one of our Beijing associates served for eight years as in-house counsel to several international telecommunications companies.

Multiple Language Fluency and Practice Admissions

Orrick's China IP team includes lawyers who are qualified in the People's Republic of China and admitted to practice in Hong Kong, California, New York, Paris, England and Wales, and before the U.S. Patent and Trademark Office. Reflecting our international clientele and the cross-border IP needs of our clients, Orrick's China lawyers are fluent in Mandarin, Shanghainese, Cantonese and other Chinese dialects, as well as English, French and Korean.

Practical Industry Experience

Dr. Wang has received four U.S. medical technology patents and is the author or co-author of more than 50 IP books and journals, including recent articles on China's new regulatory requirements for medical devices and pharmaceuticals and how to protect intellectual property while doing business in China and the U.S.

Dr. Wang currently serves as the Vice Chair of the Intellectual Property Committee of the American Chamber of Commerce in Shanghai and as Counsel for the R&D-Based Pharmaceutical Association in China. Dr. Wang also serves as an adjunct professor of electrical and biomedical engineering at Drexel University.

Dr. Wang has also served as the Managing Director of Asian Services for a U.S. medical technology consulting firm, a Senior Consultant and Member of the Scientific Advisory Board of a U.S. medical device manufacturer, the Executive Director of R&D for a U.S. medical device manufacturer, the Director of Medical Research for the Department of Surgery of a major U.S. hospital, a Software Engineer and System Analyst for two major U.S. medical device manufacturers, and a Biomedical Engineer for the Sino-Japanese Friendship Hospital in Beijing.

Representative China IP-Related Matters

• ChinaByte, a leading information technology company in China, regarding settlement with a large U.S. Internet company on trademark and domain name disputes.
• Acer, a leading provider of information technology products and software, in multiple IP strategy issues in China.
• Applied Materials, a leading supplier of products and services to the semiconductor industry, in multiple IP strategy issues in China.
• ArvinMeritor, a supplier to the motor vehicle industry, in multiple IP strategy and dispute issues in China.
• eBay, an online auction and shopping marketplace, in multiple IP strategy and dispute issues in China.
• Kodak, a leading producer of photographic materials and equipment, in multiple IP strategy and dispute issues in China.
• Luitpold Pharmaceuticals, a manufacturer and distributor of drugs and medical devices, on product strategy and IP protection in China.
• Power Dekor, a flooring materials provider, in its IP dispute negotiation in China.
• Prestolite, a manufacturer and provider of products for vehicles and industrial equipment, regarding IP strategy planning in China.
• Smith International, an international supplier of drilling equipment and services, regarding IP strategy planning in China.
• Telomolecular, a nanotechnology research corporation, regarding IP strategy planning in China.
• Multinational internet search engine company in multiple disputes in China against infringement claims allegedly caused by its embedded search dictionary.
• Leading American toy manufacturer with respect to numerous anti-counterfeiting, trademark registration, opposition and review matters, and customs protection of intellectual property rights in China.
• American automobile company with respect to technology licensing and its numerous multibillion dollar investments in China.
• Multinational software company in multiple disputes in China arising out of an embedded function that allegedly disabled end user computers from using pirated software.
• Several global technology/Internet venture capital funds with respect to IP due diligence and investments in China-based companies.
• A Singaporean telecommunications company with respect to import of technology and software into China.
• A leading Korean securities company with respect to protection of software and other IP rights relating to its cyber trading business in connection with a joint venture in China.
• A Hong Kong company with respect to cancellation of an illegal domain name registration by a Chinese domestic company.
• A leading consumer product manufacture on enforcement of IP rights in China, involving administrative proceedings before the Chinese IP office, patent infringement litigation proceedings before court, administrative proceedings before Customs, and invalidation proceedings before the Patent Reexamination Board.
• A leading company in the field of providing engineer solutions on IP enforcement involving issues of breach of contract, unfair competition, patent, trademark and copyright infringement in China.
• Chinese companies in the laminated flooring industry in a U.S. ITC Section 337 case.
• A leading company in the field of semiconductor manufacture in a Chinese litigation and a relevant U.S. litigation, involving issues of breach of contract, patent infringement, trade secret misappropriation and unfair competition.
• A leading pharmaceutical company on analysis of issues involving administrative protection of pharmaceutical products and patent infringement in China.
• A leading company in the field of electrical transportation engineering on patent invalidation issues.
• A multinational company on resolving trademark and domain names disputes in China

Orrick's Pan-Asia IP Practice Network

Orrick's China IP practice is an integral part of our pan-Asia IP capabilities. In addition to Beijing, Shanghai, and Hong Kong, Orrick's Asia IP team includes lawyers in our offices in Tokyo and Taipei, as well as a strategic network of co-counsel and agents in key Asian countries. Together, Orrick is able to provide pan-Asia IP solutions, such as the risk management, registration and protection of patents and trademarks throughout Asia.

Representative Multi-Jurisdiction Matters: Examples of our team's experience with multi-jurisdiction IP-related legal matters include:

• Anti-counterfeiting action on behalf of a major Japanese electronics company (around 150 factories in Mainland China alone had been identified as manufacturing product and affixing the client's trade mark without authorisation) including the co-ordination of lawyers in various parts of Mainland China, Hong Kong, Israel, Japan, Sweden and Taiwan.
• Patent and trade secret litigation in the U.S., China and Taiwan for a Taiwanese integrated circuit company against a Chinese company, which resulted in a favourable settlement of hundreds of millions of U.S. dollars.
• Patent litigation in the U.S., Hong Kong and China for a U.S. plastic product company against a Chinese company, which resulted in a favourable settlement.
• Patent infringement and breach of contract disputes in U.K. and China for a U.S. photographic materials company against a Chinese film paper manufacturer.
• Trademark and domain name infringement litigation in France, Hong Kong and China for a French company against a Chinese company, which involved successfully obtaining injunctive relief and retrieving the domain name.
• Trademark infringement litigation and anti-counterfeiting action in Russia, India and China for a Japanese pharmaceutical company against multiple counterfeiters.

Tokyo IP Practice

Orrick's Tokyo office opened in 1997, combining U.S., English, Korean, Russian and French law qualified lawyers of the international firm of Orrick, Herrington & Sutcliffe LLP with the Japanese bengoshi of Orrick Tokyo Law Offices. Our Tokyo IP-related experience includes:

• Ajinomoto, a global manufacturer of food products and pharmaceuticals. Orrick regularly advises Ajinomoto on complex IP transactional matters, including technology transfers, and IP dispute resolution matters.
• Corixa Corporation, a developer of immunology-based products. Orrick advised on the negotiation and preparations of collaborative research, development, commercialization and licensing agreements.
• Nippon Soda Co., Ltd., a global chemical products company. Orrick advised on the negotiation and preparation of acquisition, license, distribution, development and settlement agreements.
• Fujitsu, a leading global provider of information technology products, systems and services. Orrick advises Fujitsu in various patent litigation matters and complex cross-border IP transactional matters.

Taipei IP Practice

In 2005, Orrick Foreign Legal Affairs Attorneys at Law opened in Taipei to provide Taiwan-based high-tech and electronics companies with U.S. IP counseling and litigation services. Clients of Orrick's Taiwan team include:

• The world's largest total PC component solutions manufacturer
• The world's No. 4 branded PC vendor
• The world's third largest IC packaging and testing services provider
• One of the world's largest notebook manufacturers
• A global leader in the development of high-end flash memory products
• The largest manufacturer of connectors for use in PCs in Taiwan

Contact Us

For more information about Orrick, our intellectual property lawyers, and our intellectual property practice, please contact members of our local China team at the following locations:

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