Catherine Zheng

Partner | Intellectual Property

catherine.zheng@deacons.com

+852 2825 9617

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Catherine is the Co-Head of Deacons’ Intellectual Property Department.

Catherine is triple qualified in Canada, New York and Hong Kong. She is a native Chinese from Shanghai where she studied law at Fudan University. She holds an LLB degree from Osgoode Hall Law School, York University in Canada and a Bachelor of Science degree (Hons) in Chemistry from Dalhousie University, Canada.

Catherine specialises in China cross-border IP protection strategy and contentious matters. Catherine’s extensive experience also covers all aspects of China IP ranging from IP litigation and enforcement, IP portfolio management, trade mark, copyright and domain name protection, trade secret protection, data privacy and cybersecurity, to IP-related commercial transactions, including IP exploitation, technology transfer, joint ventures and complex M&A.

Catherine has over 20+ years of experience and has successfully represented a large number of local and international companies in litigation at all levels of the Chinese courts, and actions before the different levels of administrative bodies. Catherine advises on complex patent litigation matters, with a particular focus on patent validity and infringement issues, and has won high profile patent litigation cases in the Higher People’s Court of Guangdong Province and the Supreme Court of China.

Catherine has acted on numerous complex commercial transactions including one of China’s largest outbound technology transfer deals. With her chemistry background, Catherine has also advised many pharmaceutical and biotech clients on IP protection, enforcement and commercialisation in China, and is well-versed in the protection of plant variety rights, a fast-developing and strategically important area.

Catherine is a regular speaker on IP issues and contributes to various legal publications on recent legal development in the IP field. She is a Co-chair of the Designs Committee of the Asian Patent Attorneys Association (APAA) and leads in the APAA Academy focusing on new issues in the IP law and practice.

She is recognised by Chambers & Partners as a Leading IP Individual in China (2016 – 2024), by Legal 500 as a Recommended Lawyer for Intellectual Property in China (2019 – 2024) and consistently ranked top tier trade mark and patent practitioner by World Trademark Review 1000 and IAM Patent 1000.

Highlights

• Advised a world leader in high performance sports optics on a complex Chinese trade mark enforcement programme including Customs administrative actions and handling online complaints.
• Acted for a German multinational lighting manufacturer on trade mark infringement matters and domain name disputes in Mainland China.
• Advised a world leading US-based agribusiness on Mainland China IP strategy, protection and commercialisation of plant variety rights (PVRs), as well as enforcement and litigation matters arising from PVR.
• Advised a global nanotech company on patent infringement and trade secret actions in Mainland China, including conducting investigations and collecting evidence relating to actions before local Intellectual Property Offices, court proceedings, and defending invalidations before the Patent Re-examination Board.
• Advised the subsidiary of a Chinese state-owned investment company on the US $1.8 billion acquisition of the power amplifier business of a world leading producer of semiconductor products.
• Advised an Italian fashion company in connection with a merger and conducted due diligence exercise on relevant intellectual property rights.
• Advised a UK nanotechnology company with patent infringement court action and administrative actions, investigations and collection of evidence of infringement in preparation for a patent infringement and trade secret action against the infringers in China.
• Acted for a well-known UK automotive company in a landmark design invalidation action in China involving the determination of general consumers and design freedom, evaluation of the overall impression for innovative design features and common design features, the significance of the side view and front view of a car design, and the non-obviousness requirement of a patentable design.

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