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Intellectual Property

TransAsia’s intellectual property practice operates both independently and as an integral component of other practice areas, such as Employment law. We are particularly active with regard to IP matters in heavily regulated and evolving industries, such as the Internet and broadcast media. In addition to trademark and copyright issues, we advise on a diverse array of technology-related matters, including the protection of computer software and online IP issues.

Our attorneys also work closely with our network of affiliated law firms internationally, to create comprehensive and integrated patent protection schemes for clients with respect to inventions, utility models and designs.

As China's IP protection regime has matured, litigation has become an increasingly attractive option for protecting IP. Our team has successfully represented a number of clients in a wide range of lawsuits, particularly in the area of online and audiovisual copyrights. We also have strong experience in defending the legitimate right to make fair use of third-party materials, as well as in domain name dispute resolution.

Client Services

General Matters
  • Intellectual property licenses and assignments
  • Digital rights management
  • Risk analysis and intellectual property protection strategies
  • Assessment of legal status of intellectual property assets
  • Issues specific to deep-linking, peer-to-peer platforms, user-generated content and online piracy
  • Investigation of intellectual property infringement activities
  • Trade secrets, and intellectual property enforcement with respect to employees
Registration and other Procedural Matters
  • Trademark, patent, copyright and domain name searches
  • Registration of trademarks, copyrights, computer software and domain names, as well as handling opposition, cancellation and invalidation proceedings
  • Opposition and invalidation proceedings
  • Record intellectual property rights with the PRC customs authorities
Technology & Patents
  • Technology transfers and patent licensing contracts
  • Investigate allegations of patent infringements
  • Patent prosecution applications
  • Conduct patent reexamination and invalidation procedures
  • Enforce patent rights through judicial and administrative channels
  • Patent portfolio management
Dispute Resolution
  • Enforcement of intellectual property rights through administrative proceedings
  • Appeal of administrative decisions on IP rights
  • Litigation of intellectual property and domain name disputes

Government Advisory Work and Public Service

We enjoy close working relationships with all the key government authorities in the IP field, including the Ministry of Culture, National Copyright Administration and the Trademark Office under the State Administration for Industry & Commerce.

We have also assisted the State Administration of Radio, Film & Television with various research and policy initiatives, including those relating to IPTV and broadcast copyright licensing.

Representative Transactions

  • Advised China Film Group on the license of over 100 feature films and domestic/international co-productions and assisted with copyright infringement disputes
  • Developed patent pool policies for the State Administration of Radio, Film & Television's China Mobile Media Broadcasting
  • Advised Aviation Industry Corporation of China on a Sino-foreign joint venture with General Electric in which the parties contributed technology, patents and know-how
  • Designed and implemented patent protection strategies for Carbon Trust
  • Advised Nokia on its digital rights management system for a new electronic device to be distributed in China
  • Advised Cochlear on patent piracy issues
  • Represented Qunar.com (leading travel search engine) in its defense of trademark opposition proceedings brought by Guangzhou Quna
  • Formulated strategies for Nokia regarding the protection of software and Internet search technology
  • Successfully defended Youku.com (leading Chinese video sharing website) against a claim brought by Shi Ji Long (provider of online television content) for alleged copyright infringement resulting from user uploads of unlicensed television programs
  • Advised Duty Free Shoppers (DFS) on its IP protection strategy for China
  • Represented Elsevier in its negotiations with cyber-squatters for the transfer of domain names in the .cn space
  • Advised CBS on the management of the company's trademark portfolio in China
  • Created and implemented a patent award policy for Synpatics
  • Represented Random House on several trademark matters
  • Advised the International Olympics Committee during the 2006 Torino Winter Olympic Games on the protection of its IP rights (specifically with respect to online sources) throughout China
  • Assisted various multinationals with IP restructuring and ownership arrangements in order to comply with regulatory requirements
  • Assisted Electronic Arts to protect its trademarks and copyrights in online-game licensing and cooperation with local partners, including advising on risk analysis and IP strategies
  • Obtained a favorable settlement for Youku.com in a copyright infringement case brought against it by TVB, a leading Hong Kong-based broadcaster
  • Successfully advised Mtime, a leading PRC movie content website on its litigation against another website for copyright infringement
  • Represented Fushi Copperweld on its appeal before the PRC Trademark Review and Adjudication Board for the registration of a trademark
  • Successfully defended Qunar.com in appeals court, overturning the original judgment for copyright infringement
  • Assisted Youku.com to significantly reduce previously awarded damages for the alleged copyright infringement of 3 pieces of electronic publications resulting from user uploads

Representative Clients

  • Alibaba.com
  • Amazon
  • American Automobile Association
  • Cemex
  • CSR
  • DFS
  • EE Media
  • Elsevier
  • Gruner+Jahr
  • IOC
  • Lanvin
  • Luitpold
  • Melaleuca
  • Morningside
  • Nokia
  • North Light
  • Random House
  • Starbucks
  • Time Warner (Turner Broadcasting)
  • True Seating
  • Tyco International
  • Yale University
  • Youku