Practice - Intellectual Property
Combining the resources of its strong IP Litigation practice, Longan has provided practical and effective solutions to many international and domestic business issues concerning Intellectual Property Rights 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 injunctive 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.
Our Experience in IP Services
- Advised many U.S. high-tech companies on strategies for counteracting IPR infringement in China through local judicial remedies, use of Chinese border measures, and use of trade policy tools.
- Represented several Hong Kong companies in design patent infringement litigation in Shanghai, Guangdong and Shandong Provinces; supervised pre-litigation investigations.
- Successfully represented Zhuhai Semiconductor Design Co. Ltd, in a multiple jurisdiction litigation against another world-class semiconductor company.
- Represented several famous writers in China in a copyright infringement litigation against a local 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 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.
- 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 a Fortune Global 500 electronics company in 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.
- 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.
- Represented a Chinese subsidiary of a U.S. company in a trademark infringement brought against it by a local Chinese company. In our successful defense, the claims of the plaintiff were all rejected.
- 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.
Patents in China
Longan provides a full range of China patent services, including prosecution, licensing and dispute resolution. We counsel a diverse group of clients on a wide range of issues.
We work in conjunction with our client’s business operations and develop a patent protection plan that will maximize protection of new innovation and imported inventions. The patent attorneys at Longan are fluent in both English and Chinese, and have extensive experience in providing our clients with comprehensive strategies.
Each client's needs are assessed, taking into account the client's domestic and worldwide strategies, the competitive activity and the need to achieve maximum protection at a reasonable cost. Our patent attorneys are all licensed to practice before the State Intellectual Property Office (SIPO) and are well versed in all aspects of patent prosecution, including procuring patent rights in the State Intellectual Property Office. Our attorneys enforce client's rights in Chinese courts, before the Customs Office, the State Administration of Industry and Commerce, the China Technical Service Bureau, and other relevant regulatory bodies, including China arbitration bodies.
Longan regularly handles the following areas of patents:
- Filing patent applications including:
(i) Inventions
(ii) Utility models
(iii) Industrial designs
- Re-examinations
- Invalidations
- Translations
- Technology transfers
- Licensing of patent rights
- Patent searches; and
- Patent validity consultation.
Trademarks in China
Longan has been successfully implementing trademark protection strategies for more than a decade. We assist numerous clients from large multinational companies to small businesses, providing comprehensive protection based on the budget set by the client. Longan’s attorneys are proactive concerning trademark protection in China, keeping watch for trademark infringers and consulting on enforcement strategies.
We are one of the first Chinese law firms to develop proprietary software to keep up-to-date, individualized client docketing lists, which will soon be opened to clients for viewing their individual applications online.
The trademark attorneys at Longan Law also assist clients in the selection of an appropriate Chinese trademark, registration of the mark in China and abroad, and provide constant follow-up including the enforcement of client trademark portfolios.
Longan’s attorneys handle numerous proceedings before the State Intellectual Property Office (SIPO), The Trademark Review and Adjudication Board (TRAB), The State Administration of Industry and Commerce (SAIC), and other regulatory bodies. They are also involved in all aspects of transactional trademark work, including the negotiation and drafting of licensing, distribution and franchise agreements.
Below are some of the services that we provide to our trademark clientele:
- Trademark search
- Trademark monitoring
- Registration on China mainland and abroad
- Oppositions
- Cancellations
- Reviews
- Disputes
- Revocations
- Renewals
- Assignments & licensing
- Name and address changes
- Well-known trademark petitions
- Trademark infringement
- Anti-counterfeiting
- Investigations
- Anti-counterfeiting, including investigations, administrative actions and litigation
- Customs protection
- Trademark pledges; and
- Reissuing of trademark certificates.
Copyrights in China
The attorneys at Longan are experienced in negotiating and drafting agreements relating to the creation, use and transfer of works of authorship of all types, including computer-related works, literary, published and musical works.
Longan Law has extensive experience in preventing the illegal copying of works of expression in China. Through drafting and negotiating joint authorships and works-for-hire agreements (including releases and waivers) in connection with various employment arrangements, Longan tracks the release and sales of your copyrighted works in China. In addition, we have represented major companies in the entertainment industry in connection with the acquisition of copyrights.
Our attorneys have handled infringement litigation (including online infringement), ownership disputes, royalty negotiations, licensing, assignments and copyrights. Our approach is to implement and press Chinese Copyright Law onto the ever-fluid Chinese business environment. Providing international clients with the most effective and practical solutions has won us the confidence and trust from owners of the nation's most well known works.
Our services in this area include:
- Protection and the strategic planning of copyrights
- Acquisition of copyright registration in both China and abroad
- Managing copyright matters associated to the Internet
- Copyright licensing
- Employee and third-party waivers and releases
- Administrative and judicial enforcement of copyrights; and
- Assignment agreements.
Software Registration in China
A major concern of software developers is the high rate of piracy throughout China. Rapid growth of the technology industry and an intensification of competition have resulted in the increased importance of protecting rights in software. Software registration in China as well as at home can not only secure revenues but also prevent damage to reputation when pirated.
Longan is aware of this threat to the business integrity of our clients. We thus provide a level of protection against software infringement unparalleled in China. In pursuing this strategy, we are able to coordinate with the authorities raids on suspected infringers and obtain damages for such acts. The team of attorneys at Longan has extensive experience in all areas of software protection, such as:
- Registration of the software
- Negotiating and drafting agreements for software development
- Shrink-wrap agreements
- Website development
- Licensing
- Technology transfer
- Disclaimers
- Commissioned development; and
- Software-related invention patents.
