Patents

Patents Experience

• Advised Orig3n, a Boston-based biotechnology company, on its China joint venture with ZhongAn, a Shanghai-based internet insurance company listed in Hong Kong. We advised on the licensing of its patents, trade marks and also an exclusive distribution agreement, in relation to the establishment of a joint venture in personal genetic testing and stem cell bio banking.

• Acting for a major telecommunications company in a telecoms patent infringement court proceedings brought against them by a US entity, in the Hong Kong Court of First Instance.

• Acting for a global leader in genomics and next-generation sequencing, on patent infringement proceedings against a China-based genome sequencing company, relating to genetic sequencing and pre-natal genetic testing technologies, including pursuing preliminary injunction and pre-injunction undertakings.

• Advising a nanotechnology company developed by the UK government in conducting investigations, collecting evidence of infringement, and preparing for various patent infringement proceedings against infringers before local Intellectual Property Offices and court proceedings, and defending invalidations before the Patent Re-examination Board in China.

• Advised a syndicate of Chinese and Hong Kong investors on establishing a joint venture in the UK and conducting due diligence on patents, software and IPs in relation to robotic technologies applied in minimal invasive surgery and endoscopic surgery.

• Acted for a multinational group of companies in a complex, cross-border patent litigation and administrative action project involving circuit breaker technologies against a number of opponents and related invalidation actions at the Courts, Intellectual Property Offices and Patent Re-examination Board in China.

• Advised a leading German manufacturer of rail and commercial vehicle braking systems on ownership of employee inventions and regulations regarding employee inventor remuneration in Australia, China, India and Japan.

• Advised a world’s leading California-based agribusiness in fresh fruits on China IP strategy, protection and commercialisation of plant variety rights (PVRs), as well as enforcement and litigation matters arising from PVR.

• Drafted and prosecuted patent applications in the area of chemistry and biochemistry for a top-tier tertiary academic institution in Hong Kong.

• Filed and prosecuted patent applications across South East Asia for one of the world’s leading chemical companies in the area of chemicals, plastics, performance products and agrochemicals.

• Advised on the management of the entire Chinese patent prosecution portfolio for a major US manufacturer of flow control equipment for the oil and gas sector.

• Advised a public health authority on generic drug procurement, IP-related matters in respect of clinical trials and WTO compliance in respect of government tender procurement.

• Drafted and filed PCT, US and Chinese patent applications for local and regional entrepreneurs, companies and tertiary institutions.

• Advised on the preparation of freedom-to-operate, validity opinions and ongoing regional prosecution for various leading homewares manufacturers.