Catherine specialises in China intellectual property protection strategy and contentious matters. A native Chinese speaker from Shanghai, Catherine studied law at Fudan University and then Chemistry and Law in Canada, qualified in Canada, New York and Hong Kong. She is fluent in both Mandarin and Cantonese as well as English. After spending 9 years in North America studying and practising in an IP firm in Ottawa, she joined Deacons in 2000.
As head of the patents & designs group, she has extensive experience in all aspects of complex intellectual property litigation and enforcement work in China with a particular focus on patent validity and infringement issues. For the past 20 years, she has successfully represented a large number of local and international companies in litigation at all levels of the PRC courts and actions before the different levels of administrative bodies. In particular, Catherine advises on complex patent litigation matters and has won high profile patent litigation cases in the Higher People’s Court of Guangdong Province and the Supreme Court of China.
Catherine is also deeply experienced in the protection of trade marks, copyright, trade secrets and confidential information and domain names, as well as IP portfolio management and IP-related commercial transactions, including the exploitation of IP rights, technology transfer issues, conducting due diligence and drafting documentation. She also has experience advising on various aspects of plant variety protection.
Catherine’s expertise with both the Chinese and Western worlds of commerce and business lend her a singular advantage in cross-border matters.
Advising and representing a multi-national group of companies in a series of patent invalidation and infringement actions in China relating to several major patent litigations involving circuit breaker technologies in the US.
Advising and conducting a trademark enforcement programme involving a number of brands in the PRC for a well-known US listed fire and safety company and associated companies. The enforcement programme is part of an on-going effort to eliminate counterfeits of various flow control products in the PRC.
Acting for the world’s largest online trading platform on trademark portfolio management and enforcement matters on the internet in China, including negotiation for the acquisition of trademarks.
Representing a large US hotel and entertainment chain on the strategic protection of its brand in China, including registration, opposition, cancellation, administrative and Court actions.
Advising an international advertising company in relation to alleged copyright infringement of a musical piece by a French composer. The alleged infringement was related to a musical composition that was used in the sound track for an advertisement involving a famous mobile phone brand and was extensively broadcasted in the PRC.
Advising a world’s leading California-based agribusiness in fresh fruits on PRC IP strategy, protection and commercialisation of plant variety rights (PVRs), enforcement / litigation matters arising from PVR.
Catherine is a regular speaker on PRC IP issues and, in particular, has been actively involved in giving seminars to Mainland companies on expanding their businesses internationally and to foreign companies on China IP issues. She has also visited many major Chinese cities to speak at seminars organised by various Hong Kong and Chinese trade commissions to promote cross-border business opportunities and economic co-operation under CEPA.
Memberships
Ordinary Member, The Hong Kong Institute of Trade Mark Practitioners Limited
Committee Member, The International Trademark Association (INTA)
Member, The American Intellectual Property Law Association (AIPLA)
Committee Member, Asian Patent Attorneys Association (APAA)
Member, The Pharmaceutical Trade Marks Group (PTMG)
Member, The European Communities Trade Mark Association (ECTA)
Education
LLB, Osgoode Hall Law School, York University, Canada (1998)
BSc (Hons in Chemistry), Dalhousie University, Canada (1995)
Law School of Fudan University, China (1991)
Publications/Articles
“OEM after PRETUL – Beijing IP Court finds that OEM constitutes use in non-use cancellation proceedings”, Expert Guides (Aug 2016)
Interviewed and shared views on “Beijing Higher People’s Court, Guidelines for the Hearing of Network-Related Intellectual Property Cases” by China Law & Practice (Jun 2016)
“The Beijing IP Court - Review of the First Year”, Bloomberg BNA World Intellectual Property Report (Jun 2016)
Accolades
Chambers & Partners
Legal 500
IAM Patent 1000
World Trademark Review 1000 (WTR 1000)
Managing IP
Asia IP Experts
China Law & Practice Award
Doyle’s Guide
Euromoney Legal Media Group’s Asia Women in Business Law Awards
Euromoney Legal Media Group’s Expert Guides
IAM Global Leader
Who's Who Legal