Carol W. Yan, a senior associate in Orrick's Beijing office, is a member of the Intellectual Property Group. Carol’s practice focuses on patent filing and prosecution, patent-related legal advice and patent litigation across a broad range of industries, including chemistry, materials science, pharmaceutical, biotechnology, medical device, semiconductor and auto mechanics.

Carol has extensional experience in patent, trademark, domain name, copyright and trade secret.

Carol's recent experience includes:

  • patent enforcement litigations, patent invalidation proceedings, anti-counterfeiting and anti-piracy efforts;
  • patent prosecution including patent drafting, office actions and reexamination procedures;
  • technology transfer/licensing arrangements for substantial patent and trademark portfolios for companies doing business in China;
  • IP due diligence and portfolio counseling;
  • advising on IP protection strategies, R&D related IP issues and trade secret issues;
  • advising pharmaceutical and medical device companies in regulatory compliance and proceedings in China; and
  • assisting Chinese companies in defending Section 337 U.S. International Trade Commission investigation.

Before joining Orrick, Carol worked with Lung Tin International Property Agent Ltd. and in Jones Day's Beijing Office.

  • Carol's representative engagements include:

    • assisting a Chinese agriculture industry association to successfully invalidate a basic pesticide related patent which was owned by a famous international agricultural chemical firm;
    • assisting a domestic chemical company to defend a patent infringement lawsuit in China and to invalidate the patent at issue;
    • assisting a leading multinational company in the field of electronics to defend a patent infringement lawsuit in China and to invalidate the patent at issue;
    • assisting a U.S. consumer product manufacturer 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 (PRB);
    • providing legal advice to a leading company in the field of semiconductor for a Chinese litigation and a relevant U.S. litigation involving issues of breach of contract, patent infringement, trade secret misappropriation and unfair competition;
    • providing analysis to a leading foreign pharmaceutical company regarding its potential legal actions against Chinese companies infringing its patent;
    • providing analysis on freedom to operate (FTO) to a leading foreign chemical company regarding its new technology to be introduced in China;
    • providing assistance to a domestic company against a chemical product owned by a famous international chemical firm under administrative protection as well as patent protection;
    • assisting a U.S. pharmaceutical company with medical device import registrations before the China Food & Drug Administration (CFDA);
    • assisting a leading foreign company in the field of electrical transportation engineering on patent invalidation preparation, evidence collection and evaluation, as well as strategic issues;
    • providing analysis to a foreign investment company on due diligence analysis of a Chinese company's IP assets;
    • assisting a foreign company in medical industry and its subsidiary in China to defend an infringement lawsuit in China and an arbitration case in the United States raised by its former distributor;
    • assisting a leading foreign software company to defend a patent infringement lawsuit in China and to invalidate the Chinese patent at issue; and
    • assisting a leading company in the field of touch technology to defend its core patent in multiple patent invalidation proceedings.

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