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Hong Kong’s IP Experts 2024

30 April 2024

Hong Kong’s IP Experts 2024

Recently, Hong Kong and China inked a deal that gives both jurisdictions the ability to enforce intellectual property judgments from courts in either place, giving what Hong Kong law firm Deacons called “a special position in the resolution of cross-border disputes.”

The Mainland Judgments in Civil and Commercial Matters (Reciprocal Enforcement) Ordinance came into effect on January 29, 2024. It applies to judgments rendered on or after that date in mainland China (which excludes Hong Kong, Macau and Taiwan) and makes provisions for:

  • Enforcing a mainland judgment in Hong Kong, by way of application to the Hong Kong court for registration of the judgment; and
  • Facilitating the recognition and enforcement of a Hong Kong judgment in the mainland, by way of application to the Hong Kong court for a certified copy of the judgment and certificate.

According to lawyers at Bird & Bird in Hong Kong, the judgment must be effective in mainland China, the judgment must be a) given in proceedings that are civil or commercial in nature under the law of mainland China; or b) given in proceedings that are criminal in nature under the law of mainland China, and contains an order for the payment of a sum of money (i.e. a liquidated amount) in respect of compensation or damages by a party to the proceedings. The reliefs granted by the court in mainland China must not contain an “excluded relief”.

Additionally, they note, in the case of intellectual property, the judgment must also not be an “excluded judgment.” For intellectual property cases, a mainland judgment or a Hong Kong judgment is an excluded judgment if it is given in respect of an excluded intellectual property case, they said.

According to Bird & Bird lawyers, the following mainland judgments concerning intellectual property cases are excluded for recognition and enforcement in Hong Kong:

  • Where the mainland judgment is given in proceedings brought in respect of a tortious dispute over an infringement of an invention patent or utility model patent (Section 7(1)(a) of the Ordinance);
  • Where the mainland judgment is given in proceedings for a determination of the licence fee rate of a standard-essential patent (Section 7(1)(b) of the Ordinance); and
  • Where the mainland judgment is given in proceedings brought in respect of a dispute over an intellectual property right that is not a specified intellectual property right (Section 7(1)(c) of the Ordinance).

Deacons lawyers write that the new law will bring benefits, including:

  • Removing the need to re-litigate those disputes whose judgments have been made in Hong Kong or the mainland;
  • Expanding the types of judgments that can be enforced or recognized. The new law covers monetary judgments and non-monetary judgments;
  • Removing the requirement for the parties to have agreed to the exclusive jurisdiction of a Hong Kong or mainland court; and
  • Expanding the levels of courts whose judgments will be enforced or recognized.

It is against this backdrop that we turned to IP professionals in the region in order to understand better what clients need today. Asia IP asked a large number of professionals – mostly in-house counsel and corporate legal managers – what they were looking for from their legal service providers. From their answers, we have compiled our list of Hong Kong’s IP Experts, those lawyers who understand just what their clients need and are able to provide them with the best practical advice.

Hong Kong has long been a hub for global law firms, and those IP firms and practices are well-represented on our list, with Baker McKenzie (Isabella F.C. Liu, Loke-Khoon Tan, Maria Smith and Yann Loo Shih) and Bird & Bird (Ted Chwu, Matthew Laight, Hank Leung and Alison Wong) each placing four lawyers on our list, and Rouse (Rachel Tan, Chris Vale and Adelaide Yu) with three lawyers on the list. Global firms Clifford Chance, DLA Piper, Eversheds Sutherland, Jones Day, Mayer Brown, MinterEllison, Nixon Peabody CWL and Simmons & Simmons are also represented on the list.

But Hong Kong has also been a place where local law firms can thrive, and their inclusion on our list – and the numbers by which they are represented – is proof of that. Deacons (Charmaine Koo, Patsy Lau, Annie Tsoi and Catherine Zheng) and ELLALAN (Ella Cheong, Alan Chiu, Rosita Li and Kenny Wong) each placed four lawyers on the list, while Wilkinson & Grist (Andrea Fong, Mena Lo and Annie Tsoi) have three and SIPS (Dan Plane, Joe Simone) has two. Fourteen more local practices are represented, from DeLab Consulting to Gallant, from P.C. Woo & Co. to Oldham Li & Nie.

Our survey includes only those lawyers working at law firms in Hong Kong.

Most of the lawyers named to our list have multiple practice specialties. Many of them are litigators, while others concentrate on prosecution work or provide strategic advice.

All of them have something in common: they are Asia IP’s IP Experts for Hong Kong. – GREGORY GLASS

Hong Kong’s IP Experts is based solely on independent editorial research conducted by Asia IP. As part of this project, we turned to thousands of in-house counsel in Hong Kong, China, Asia and around the world, as well as Hong Kong- and China-focused partners at international law firms, and asked them to nominate private-practice lawyers, including foreign legal consultants, advisers and counsel.

The final list reflects the nominations received combined with the input of the editorial team at Asia IP, which has more than 50 years of collective experience in researching and understanding the legal market in Hong Kong.

All private practice intellectual property lawyers working at law firms in Hong Kong were eligible for inclusion in the nomination process; there were no fees or any other requirements for inclusion.

The names of our 50 IP Experts are published here. Each IP Expert was given the opportunity to include their biography and contact details in print and on our website, for which a fee was charged.

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