China Patent Agent (HK)

Firm overview:

Established in 1984, China Patent Agent (HK) is among the top choices for international and domestic enterprises seeking high quality patent services in China.

Consistently ranked as a premier firm for patent work, CPA operates a highly efficient prosecution practice, with the number of inbound patent applications it handles among the highest in China. In more recent years, the firm has increased its focus on helping innovative Chinese businesses develop global IP portfolios to exploit their inventions.

CPA’s patent filing service extends to scores of countries and regions, and the patent team has a Hong Kong unit which handles registration and related matters with the Hong Kong Intellectual Property Department.

Leading businesses and global conglomerates have sought the firm’s advice on the full scope of contentious patent matters, contributing to the firm’s placement in the ‘Outstanding’ category this year. CPA has a strong bench of talent that includes litigators such as Yanfeng Xiong, well regarded for his standard-essential patent (SEP) dispute expertise.

Team overview:

CPA is one of the largest IP firms in China with a multilingual team of 540 professionals, including 230 patent attorneys.

General manager of the firm Yuhe Wu is a known authority on IP law in China, with particular expertise in patent litigation. In this year’s ‘Hall of Fame’, Wu has authored many articles on IP law and co-authored Patent Infringement and Litigation, used by the All China Patent Attorneys Association for its patent attorney training series. A peer notes that he is “renowned in this industry” and that “everybody knows him”.

Deputy general manager Yanfeng Xiong is “very good at litigation in China” says a peer. Xiong’s practice focuses on patent prosecution, invalidation and litigation in the electronics, telecoms and mechanics fields. In this year’s ‘Outstanding’ category, Xiong has deep expertise in SEP litigation for telecoms multinationals, and a number of his patent litigation cases have been recognised by the Supreme People’s Court and Beijing High Court as representative cases.

Ke Ke serves on the patent team (Chemistry, Biotechnology and Pharmaceuticals) and legal service team. A seasoned litigator, Ke has represented companies from China, the US and Europe in patent administrative and ownership disputes.

Dapeng Wen is a notable team member for non-contentious patent matters. Part of the Mechanics & Designs group, Wen speaks Chinese, English and Japanese. Key work highlights include representing a Europe-based medical device company in a series of patent infringement cases.

Key matters:

• Yucaitang Suzhou Material Tech: Victories in patent invalidation dispute

CPA deployed its administrative litigation expertise to assist client Yucaitang Suzhou Material Tech, a materials technology company, in a patent dispute. On behalf of the client, the team won the first and second instances of appeal against an invalidation decision, maintaining the invalidation decision.

Yucaitang Suzhou’s patent had been challenged twice by a competitor but upheld as valid on the basis of amended claims. The competitor further appealed before the Supreme People’s Court, which ultimately upheld the decision in favour of CPA’s client.

CPA’s team included Yu Zhang, Qian Liu and Jingchen Zhang.

• Nihon Nohyaku: Beijing IP Court judgment upholding patent validity

Led by Xuyi Gao, the CPA team was called in to represent Nihon Nohyaku, which makes life sciences products, in a case involving Markush claims.

CPA secured a favourable first instance judgment from Beijing IP Court, affirming the validity of the client’s patent. The case was important for Nihon Nohyaku, involving a core technology that had been licensed to another leading agrochemical company with substantial commercial interests. The outcome safeguarded the client’s key technical solutions.

• KPN: SEP patent invalidation proceedings and administrative litigation

CPA successfully defended a standard-essential patent for leading Dutch telecoms company KPN in invalidation proceedings and subsequent administrative litigation. The IP Court of the Supreme People’s Court issued a second-instance judgment upholding the validity of the patent.

The patent was asserted against a Chinese smartphone company in the Shanghai High Court, with a claim for damages of RMB 80 million (around $11 million). This marks the fifth challenge to the validity of this SEP.

Clients:

Ericsson, China UnionPay, KPN, Nihon Nohyaku, Siemens, SINOPEC, Yucaitang Suzhou Material Tech