China IP Services

The explosive growth of commercial and trade relations with China has given rise to a multitude of IPR protection issues. Combining the resources of its strong global IP Litigation practice, its Patent Group and its China offices, Heller Ehrman has provided practical and effective solutions to many inbound and outbound business issues that implicate IP in China. 

Our Capabilities

• Comprehensive "IPR Audits" designed to evaluate the IPR protections that clients currently maintain in China and to assess the effectiveness of those protections. Following an IPR Audit, we make recommendations regarding potential improvements.
• Assistance with the preparation and drafting of various contractual and other legal documents designed to help IPR holders defend their rights in a legally enforceable manner in China.
• Assistance with administrative raid actions against IP infringing organizations.
• Assistance with the Chinese Customs authority's IP border measure, which allows IPR holders to identify and take action against any infringing imports and (often more importantly) infringing exports.
• Protection and enforcement of patents, copyrights and trademarks in China and throughout Asia through dispute resolution mechanisms, including judicial representation in the Chinese courts and through representation in the alternative dispute resolution context.
• Assistance with patent and trademark prosecution, technology transfer issues and criminal proceedings in relation to intellectual property rights in China.

Representative Engagements: China Intellectual Property Services

• Advised U.S. high-tech trade association on strategies for counteracting IPR infringement in China through local judicial remedies, use of Chinese border measures and use of trade policy tools.
• Represented a Hong Kong company in design patent infringement litigation in Guangdong Province; supervised pre-litigation investigations.
• Successfully represented Shanghai Semiconductor Manufacturing International Corporation (SMIC), in a multiple jurisdiction litigation against Taiwan Semiconductor Manufacturing Company Ltd. (TSMC). SMIC was accused of infringing several TSMC patents and misappropriating TSMC's trade secrets.
• Represented the Hong Kong subsidiary of a well-known French magazine in a copyright infringement litigation against a local magazine publisher. The Court took steps to perpetuate evidence for the litigation by seizing documents from the premises of the defendant. This case was settled after the defendant paid an agreed amount of damages to the plaintiff and signed a letter of undertaking.
• Represented a Fortune Global 500 electronics company in a design patent infringement litigation. Under our advice, the local Public Notary visited the infringing factory and its sales outlets to collect evidence for infringement. In the invalidation action the defendant later initiated, our consultants also represented the client.
• Represented a Chinese subsidiary of a German manufacturing company in a trademark infringement brought against it by a local Chinese company. As a result of our successful defense, the plaintiff withdrew the case two hours after the hearing without any conditions.
• Represented a Chinese subsidiary of a U.S. manufacturer of ATMs in a trademark infringement brought against it by a local Chinese company. In our successful defense, the claims of the plaintiff were all rejected.
• Represented a Fortune Global 500 French cosmetics company in a litigation against a local Chinese company who registered the client's brand as domain name. The Court decided in favor of the client and concluded the trademark of the client had gained significant reputation in China, aiding the client's subsequent enforcement actions in China.
• Regularly advise multinational companies on IP enforcement in China, including a prominent U.S.-based developer of cellular telephone technology and U.S. pharmaceutical companies.