Intellectual Property | China


Morrison & Foerster's China Intellectual Property practice is the work of an interdepartmental group of lawyers whose practice focuses on patent, trademark, copyright, trade secret, unfair competition, and related intellectual property matters. Our China IP practice emphasizes the representation of Chinese companies in their IP disputes in the United States and in the development of their global IP portfolios. The firm has one of the largest intellectual property practices of any general practice firm, with more than 300 lawyers stationed in major financial centers in the U.S., Asia, and Europe. Our size and breadth of expertise enables us to provide a full range of cutting-edge IP services, including representation in patent and trademark prosecution, litigation and alternative dispute resolution, and business and licensing transactions.

The firm's practice is ranked by independent observers as one of the top intellectual property practices in the world. Most recently, our IP litigation practice was recognized as the 2013 Chambers USA Intellectual Property Firm of the Year and a 2012 Law360 Practice Group of the Year. The firm's Intellectual Property practice has been awarded Chambers & Partners highest rankings in its 2009 Global IP, Global Life Sciences, Global USA IP categories, and also a high ranking in the Asia Pacific IP category.

The firm's IP practice is concentrated in three technology areas:

  • Life sciences, including biotechnology and medical devices.
  • Electronics, software, and telecommunications, including the Internet and semiconductors.
  • Chemistry, chemical engineering and materials science.

 

The firm's practice reaches beyond these technologies, however, to embrace such areas as copyrights and trademark rights in motion pictures, rights of publicity held by celebrities such as the late Princess Diana, gaming devices, shipping and package services, and basic chemicals.

The firm is honored to have recently served as sole international legal counsel to the Beijing Organizing Committee for the XXIX Olympiad in connection with a range of legal advice and assistance arising from the requirements of preparing for and hosting the 2008 Summer Games, including legal counsel related to the protection of intellectual property and other related matters.

Patents

The firm has over 130 PTO-admitted attorneys and patent agents in its Los Angeles, Northern Virginia, Palo Alto, San Diego, San Francisco, Shanghai, Tokyo, and Washington, D.C. offices. Like our IP practice overall, the patent group has three major technical areas of concentration, life sciences, technology, and chemistry/materials science. More than 40 of our patent attorneys hold PhDs.

  • Electronics, Software, and Telecommunications
    The electronics, software, and telecommunications or "EST" group is centered in California, Northern Virginia, Tokyo, and Shanghai, and includes Mandarin-speaking lawyers who are experts in helping Chinese companies build strong international patent portfolios. The EST group has particular expertise in semiconductor, software, Internet, telecommunications, and "business method" patents, and also represents clients in photocopier, electronic storage media, and digital signal processing technologies. The group has increasingly been called upon to advise clients on complex licensing, patent clearance, and adversarial matters.
  • Life Sciences
    The life sciences group represents major corporations, new high-tech ventures, and universities and nonprofit research institutions, on a wide range of patent matters, including patent prosecution, reexaminations, freedom of operation studies, and interferences.
     
    The attorneys in the group have an international reputation in biotechnology law and include several Mandarin-speaking patent lawyers. In fact, Chambers USA gives the firm's Life Sciences practice its top "Band One" ranking. Some of the technical fields in which the attorneys and agents have expertise include biotechnology (with particular emphasis on recombinant DNA/genetic engineering, monoclonal antibodies, agricultural technology, and medical technology), chemical technology (representing, among others, Exxon Chemical), pharmaceuticals, materials science, and mechanical engineering (with particular emphasis on medical devices and nanotechnology). In the past year, the group has focused on the emerging field of bioinformatics.
  • Chemistry, Chemical Engineering and Materials
    The chemistry, chemical engineering and materials science group also includes Mandarin-speaking attorneys who can help Chinese companies achieve their patent goals. The technical fields in which this group of attorneys and agents have expertise include general inorganic and organic chemistry, pharmaceuticals, materials science, polymers, composites, foams, fibers, metallurgy, chemical engineering processes, medical devices, consumer products, surface technology, nano-technology, printing technology, water treatment, pulp and paper, consumer appliances, semiconductors, electro-optics, electronic storage materials, and telecom. The chemical practice group provides opinions (invalidity, non-infringement, freedom to operate, and inequitable conduct), prepares licenses, conducts due diligence, and represents clients on interference, reexamination, and reissue matters.

 

Patent Litigation

Morrison & Foerster's patent litigation experience is particularly deep in the high-technology and life sciences area. We have experienced intellectual property litigators in Asia, Europe, and the United States, and we are one of the only firms able to represent clients on a global basis. We have litigated and tried patent cases in jurisdictions around the world, with special expertise and a winning track record in key jurisdictions like the Eastern District of Texas, Northern District of California, the Eastern District of Virginia, and the International Trade Commission.

International Trade Commission

Morrison & Foerster is one of the nation's leading firms in the representation of clients before the U.S. International Trade Commission under the unfair imports provision (Section 337) of the U.S. Tariff Act. This provision allows both domestic and foreign owners of U.S. intellectual property rights to block the importation of infringing products into the United States. The firm has represented both complainants and respondents, and has conducted full hearings before three of the four administrative law judges at the International Trade Commission. We have litigated cases from start to finish — from bringing complaints before the International Trade Commission to arguing cases on appeal from the International Trade Commission at the Federal Circuit.

Adversary Licensing Negotiations

Another area of specialization where we have unusual depth is what we have come to call adversary licensing negotiations. Although these negotiations are described as involving licensing, in fact they are essentially a pre-litigation settlement process. These call for a mixture of litigation and negotiation skills — the former because the strengths and weaknesses of the client's position in the negotiation are essentially a reflection of what would happen if the negotiations fail and litigation (or arbitration) results; and the latter because the dispute is not actually in litigation at that stage, and therefore has to be addressed through techniques more commonly used by lawyers on the transactional side of the practice.

Trademarks, Service Marks, and Trade Names

Morrison & Foerster has a diverse trademark practice that includes all aspects of brand protection, namely, clearance, prosecution, portfolio management, licensing, and enforcement. Because the trademark practice involves both transactional work and litigation, we include attorneys in the firm's corporate and litigation practices in our core group, which is consolidated in the San Francisco and Washington, D.C., offices because we believe that allows us to provide better and more cost-effective service to our clients. We currently have approximately twenty attorneys, three paralegals, three docket clerks, with ten additional staff members supporting the group's practice. In addition, lawyers in all of our offices, including San Diego, New York, Los Angeles, Denver, Washington, D.C., Northern Virginia, and Palo Alto, are experienced with trademark enforcement and litigation issues.

Our clients are drawn from a wide range of industries, including agriculture, banking, entertainment, investment management, computer software and hardware, telecommunications, the Internet, real estate development, health care, biotechnology, pharmaceuticals, apparel, alcoholic and non-alcoholic beverages, publishing, and retail services.

Morrison & Foerster's litigators, including those in the Trademark Group, have participated in all types of trade practice claims — trademark, service mark and trade dress infringement, dilution, unfair competition, counterfeiting, and unfair advertising cases, including cases involving domain name disputes both in federal court and through the arbitration procedures offered by ICANN. Litigators at the firm have been active in federal and state court cases that span a wide variety of industries, ranging from technology companies to more traditional consumer industries.

Copyright

The firm's lawyers counsel clients on a wide variety of copyright issues for virtually all types of copyrighted materials. Our attorneys monitor copyright developments worldwide, counsel clients with compliance, and assist with business transactions and disputes involving copyrightable materials. Our lawyers are particularly experienced in the area of computer software, including issues relating to scope of copyright protection and business arrangements for research and development, consulting, and licensing of software. Among other things, we have counseled companies on developing products that are "compatible" with products of other vendors. We also have extensive experience with copyrightable material in the entertainment industry, including film, theatre, music, and print publishing transactions, and with multimedia products that combine high technology with traditional forms of expression.

Trade Secrets

The most valuable assets of a company typically include its intellectual property ("IP") and confidential information, and the employees entrusted with this information. Both IP and employees can be highly mobile. Morrison & Foerster regularly advises clients on how to protect against the theft of their IP from both external and internal threats by implementing trade secret protection and information security programs. Often, trade secret protection includes employee agreements and/or proprietary information agreements, which contain restrictive covenants (i.e., non-competition, non-solicitation and non-disclosure agreements). In today's global economy, we assist clients in tailoring the appropriate restrictive covenants under laws which vary widely by state and international jurisdictions. With the proliferation of technology in the workplace, we also train clients to design and implement effective information security programs and policies to prevent intentional or inadvertent loss of data.

When emergencies arise, Morrison & Foerster's team of trade secret litigators have the experience to handle any trade secret matter. Among the firm's expert trade secret lawyers is James Pooley, who is the author of the highly regarded treatise Trade Secrets (Law Journal Press). The firm frequently litigates cases involving misappropriation of trade secrets, the Computer Fraud & Abuse Act, restrictive covenants, employee raiding, customer raiding, and departures of key employees. Our litigators are often in court seeking or defending against emergency relief including temporary restraining orders and preliminary injunctions, as well as trying cases to juries, judges, and arbitrators. The Morrison & Foerster team has litigated some of the most significant trade secret cases in California and the U.S.

Technology Transfer and Licensing Arrangements

In the substantive areas discussed above, our attorneys have extensive experience in drafting and negotiating domestic and international technology transfer and licensing agreements, including agreements for software development, marketing and distribution arrangements, research and development efforts, and joint ventures. With our substantial international presence on three continents, with offices in London, Brussels, Tokyo, Shanghai, Beijing and Hong Kong, we can assist with the international aspects of distribution, licensing, and intellectual property protection.

Alternative Dispute Resolution

Particularly in the area of intellectual property disputes, alternatives to traditional litigation may provide for more effective resolution of controversies. Morrison & Foerster prides itself on its pioneering work in this field and in keeping its clients apprised of these expanding opportunities. The alternatives include not only the well-known technique of arbitration but other, usually non-binding, procedures such as mediation, conciliation, mini-trials, and private trials. We have advised clients on using ADR in many different contexts and for a variety of reasons: to speed up the process or reduce the costs of dispute resolution; to increase client involvement; to preserve ongoing and basically satisfactory relationships; to allow specially trained arbitrators to judge complex technical issues; to preserve the confidentiality of information; and to accommodate divergent foreign laws and cultures in international transactions.

Chambers Global 2014
Intellectual Property: International Firms: China


Chambers Asia-Pacific 2015
Intellectual Property: International Firms: China


Legal 500 Asia-Pacific 2015
Intellectual Property: Foreign Firms
Intellectual Property: Hong Kong


Here is what they say about us:
“In keeping with its strength in the pharmaceuticals and life sciences sectors, the team often advises on the IP aspects of outsourcing and joint venture projects in China.” (Legal 500 Asia Pacific 2015)

Gordon A. Milner
Partner
Hong Kong
852 25850808

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