18 cover story asian legal business may 2014 · 18 cover story asian legal business may 2014 alb...

COVER STORY18 ASIAN LEGAL BUSINESSMAY 2014

ALB drew information from firm submissions, interviews, market suggestions and other editorial resources to identify and rank the top firms for intellectual property across Asia.

The research covers the period spanning from January 2013 to February 2014. This includes both ongoing work (contentious and non-contentious) and matters that were closed during this timeframe.

The rankings are based on the following metrics:

• Volume, complexity and size of work• Firm’s visibility and profile in the

marketplace• Presence across Asia and in

individual jurisdictions• Key clients and new client wins

OUR RANKINGS

COVER STORY 19WWW.LEGALBUsInEssOnLInE.COM: @ALB_Magazine : Connect with Asian Legal Business

The last few years have seen an uptick in intellectual property (IP) activity, as companies worldwide continue to shrug off the ill effects of the financial crisis

and are investing more in innovation and IP protection. A growing number of corporations and individuals in Asia are realising the value of enhancing their portfolios and enforcing their IP rights.

A World Intellectual Property Organization (WIPO) report published last November shows that global patent filings in 2012 wit-nessed the fastest rate of growth in nearly two decades. According to the report, patent filings grew by 9.2 percent in 2012, while the filings of utility models, industrial designs and trademarks grew by 23.4 percent, 17 percent, and 6 percent, respectively.

The WIPO report also showed that China’s State Intellectual Property Office saw a 24 percent growth in filings in 2012, the highest increase in filings among the top 20 IP offices. On the contentious side, lawyers note an in-crease in IP-related litigation in China as more domestic companies exercise their rights to protect their portfolios. In particular, copyright issues are coming to the fore, with IP lawyers working on a number of internet, social media and other online-related disputes in the region. This trend is expected to persist as the Chinese online industry continues to boom, lawyers say.

In addition, China’s highly anticipated new Trademark Law was passed last August. The amended law, which took effect on May 1 this year, primarily aims to deter trademark squat-ting and infringement, improve the efficiency of the trademark registration process, stream-line trademark proceedings and introduce the registration of sound marks.

Looking at the rest of North Asia, Japanese companies are upping their activity and add-ing to their IP portfolios. Statistics from the Japan Patent Office show that the number of applications and registrations of patents,

utility models, trademarks and designs grew from 2011 to 2012. Korean companies too are raising their global profiles, and are start-ing to aggressively exercise their IP rights. Competition has never been fiercer, as large technology companies like Apple, Samsung, Google and LG continue to battle one another. Lawyers in Korea also note that antitrust is-sues are playing a larger role in IP, highlighted by the growth in the number of cases appear-ing before the Korean Fair Trade Commission.

Moving across to Southeast Asia, aware-ness of IP is steadily developing among businesses in the region. Lawyers predict that the number of contentious matters will continue to rise, as domestic companies ramp up their trademark and patent registrations to safeguard their IP rights. Meanwhile, counter-feiting and copyright infringement problems remain a sizeable problem in the region.

While companies in India continue to battle with trademark and copyright infringers, patent disputes between multinational in-novators and local generic drug makers are grabbing global attention. In India, where many patented drugs are too expensive for much of its 1.2 billion population, these phar-maceutical disputes underscore the conflict between the protection of IP rights and public health interests. The disputes also highlight the tough challenge facing multinational drug companies operating in India’s fast-growing pharmaceuticals market. In a victory for generics companies, India’s Supreme Court in April last year rejected Swiss drug maker Novartis’ attempt to win patent protection for its cancer drug Glivec. In another noteworthy case, German pharmaceutical company Bayer was ordered in March 2012 to issue a compul-sory licence to Natco Pharma, an Indian ge-nerics company, allowing the latter to produce and market Bayer’s patented cancer drug, Nexavar, at a reduced cost. In March 2013, the Intellectual Property Appellate Board

(IPAB) upheld the grant of the compulsory licence to Natco Pharma. Bayer is contesting the IPAB’s decision, with the case on appeal at the Bombay High Court.

In a rare victory for multinational phar-maceutical innovators, Switzerland’s Roche gained a favourable decision from the Delhi High Court in a lawsuit against two generic pharmaceutical companies – Bangalore-based Biocon and U.S.-based Mylan. The Delhi High Court issued an injunction against Biocon and Mylan in February to stop the sale of their version of a breast cancer drug in India. The lawsuit is the latest in a series of pharma-ceutical legal battles in India, and the disputes are expected to continue, lawyers say.

In Singapore, the government’s aim to promote the city-state as an IP hub is yielding positive results. According to the Intellectual Property Office of Singapore (IPOS), the IP sector created 300 new high-value jobs last year, mainly in the legal, technology, IP service provider and business advisory sec-tors. Furthermore, the number of trademark and patent filings grew in 2013. IPOS data shows that total trademark applications have increased by almost 15 percent over the past two years, while patent applications by local companies have grown by about 6 percent.

Singapore has also revised its Patents Act. The key changes, which came into ef-fect on Feb. 14, include a shift from the self-assessment patent system to a positive grant patent system. Under the self-assessment system, patents could be granted even if they did not fully meet the criteria of being novel, displaying inventive step and industrial appli-cability. Under the new positive grant system, only patent applications that fully satisfy all the patentability criteria will be granted. The changes bring Singapore in line with interna-tional standards and have been welcomed by lawyers, who add that the revisions will boost business confidence in Singapore.


PATENTSTIER 1• Baker & McKenzie• Bird & Bird• Deacons

TIER 2• Ella Cheong• Hogan Lovells• Jones Day• Marks & Clerk• Mayer Brown JsM

TIER 3• Freshfields Bruckhaus

Deringer• Vivien Chan & Co• Wilkinson & Grist

TRADEMARKS/COPYRIGHTTIER 1• Baker & McKenzie• Deacons• Hogan Lovells• Mayer Brown JsM

TIER 2• Bird & Bird• norton Rose Fulbright• simmons & simmons• Wilkinson & Grist

TIER 3• DLA Piper• Ella Cheong• Freshfields Bruckhaus

Deringer• Jones Day• Marks & Clerk• Vivien Chan & Co

HONG KONG

PATENTSTIER 1• Anand and Anand• K&s Partners• Lakshmikumaran &

sridharan• Remfry & sagar

TIER 2• Khaitan & Co• Lall & sethi• R K Dewan & Co• singh & singh• subramaniam, nataraj &

Associates

TIER 3• Amarchand & Mangaldas &

suresh A shroff & Co• DePenning & DePenning• Khurana & Khurana• Lall Lahiri & salhotra

TIER 4• ALMT Legal• Chadha & Chadha• IndusLaw• K Law/Krishnamurthy & Co• Majmudar & Partners

TRADEMARKS/COPYRIGHTTIER 1• Anand and Anand• Remfry & sagar• saikrishna & Associates

TIER 2• Amarchand & Mangaldas &

suresh A shroff & Co• Khaitan & Co• Lakshmikumaran &

sridharan• Lall & sethi• Lall Lahiri & salhotra• Luthra & Luthra• R K Dewan & Co• subramaniam, nataraj &

Associates

TIER 3• DePenning & DePenning• Krishna & saurastri

Associates• K Law/Krishnamurthy & Co• Majmudar & Partners

INDIA


PATENTSTIER 1• CCPIT Patent and Trademark Law

Office• China Patent Agent (HK)• King & Wood Mallesons• Liu shen & Associates

TIER 2• China sinda• Fangda Partners• Zhongzi Law Office

TIER 3• An, Tian, Zhang & Partners• Dacheng Law Offices• HFG Law Firm & IP Practice• Hylands Law Firm• Jun He Law Offices• Unitalen Attorneys at Law

TIER 4• Cn-KnowHow IP Group• Guantao Law Firm• Hengdu Law Offices

TRADEMARKS/COPYRIGHTTIER 1• CCPIT Patent and Trademark Law

Office• China Patent Agent (HK)• King & Wood Mallesons• Liu shen & Associates

TIER 2• An, Tian, Zhang & Partners• China sinda• Fangda Partners• Hylands Law Firm• Jun He Law Offices• Unitalen Attorneys at Law• Wintell & Co• Zhong Lun Law Firm• Zhongzi Law Office

TIER 3• Cn-KnowHow IP Group• Dacheng Law Offices• Guantao Law Firm• Hengdu Law Offices• HFG Law Firm & IP Practice

CHINA DOMEsTIC CHINA FOREIGnPATENTSTIER 1• Baker & McKenzie• Bird & Bird• Jones Day• Orrick, Herrington & sutcliffe• Rouse

TIER 2• Allen & Overy• Deacons• Hogan Lovells• Mayer Brown JsM

TIER 3• DLA Piper• Finnegan, Henderson, Farabow,

Garrett & Dunner• Morrison & Foerster• Ropes & Gray• Vivien Chan & Co• Wilkinson & Grist

TIER 4• Ella Cheong• Freshfields Bruckhaus Deringer• Perkins Coie• squire sanders

TRADEMARKS/COPYRIGHTTIER 1• Baker & McKenzie• Bird & Bird• Hogan Lovells• Mayer Brown JsM• Rouse

TIER 2• Deacons• Jones Day• norton Rose Fulbright• Wilkinson & Grist

TIER 3• CMs, China• DLA Piper• Freshfields Bruckhaus Deringer• Vivien Chan & Co

TIER 4• Clifford Chance• Ella Cheong• squire sanders


INDONESIAPATENTSTIER 1• Hadiputranto, Hadinoto &

Partners• Rouse & Co. International/

suryomurcito & Co.

TIER 2• AMR Partnership• Biro Oktroi Roosseno• Intra Patent Bureau

TIER 3• Assegaf Hamzah & Partners• sKC Law

TRADEMARKS/COPYRIGHTTIER 1• Hadiputranto, Hadinoto &

Partners• Rouse & Co. International/

suryomurcito & Co.

TIER 2• Biro Oktroi Roosseno• Inter Patent Office• sKC Law

TIER 3• Assegaf Hamzah & Partners• HeruLukito & Partners• Makarim & Taira s.• Tilleke & Gibbins

MALAYSIAPATENTSTIER 1• shearn Delamore• skrine• Wong & Partners/Baker

McKenzie

TIER 2• Marks & Clerk• shook Lin & Bok

TIER 3• Lee Hishamuddin Allen &

Gledhill• Rahmat Lim & Partners• Raja Darryl & Loh• Wong Jin nee & Teo

TRADEMARKS/COPYRIGHTTIER 1• shearn Delamore & Co• skrine• Wong & Partners/Baker

McKenzie

TIER 2• Raja, Daryl & Loh• shook Lin & Bok• Tay & Partners• Wong Jin nee & Teo

TIER 3• Lee Hishamuddin Allen &

Gledhill• Rahmat Lim & Partners• Marks & Clerk


PATENTSTIER 1• Abe Ikubo & Katayama• Mori Hamada & Matsumoto

TIER 2• Anderson Mori & Tomotsune• nagashima Ohno &

Tsunematsu• nakamura & Partners• TMI Associates

TIER 3• Atsumi & sakai• nishimura & Asahi• Ohno & Partners• Ryuka IP Law Firm• sugimura International

Patent and Trademark Attorneys

TRADEMARKS/COPYRIGHTTIER 1• Mori Hamada & Matsumoto• nakamura & Partners• TMI Associates

TIER 2• Anderson Mori & Tomotsune• Atsumi & sakai• nagashima Ohno &

Tsunematsu• nishimura & Asahi

TIER 3• Abe Ikubo & Katayama• Ohno & Partners• Ryuka IP Law Firm• sugimura International

Patent and Trademark Attorneys

JAPAN DOMEsTIC

Nakamura & Partners, established in 1914, is one of the largest intellectual property law firms in Japan. The scope of the firm’s practice is very extensive and includes both the prosecution of industrial property rights and litigations and other legal affairs centering on intellectual property law. Specifically, the firm handles patent applications, utility model applications, design applications, trademark and service mark applications, oppositions, and

NAKAMURA & PARTNERS PATENT TRADEMARK & LEGAL AFFAIRS ��

SHIN-TOKYO BUILDING 3-1, MARUNOUCHI 3-CHOME

CHIYODA-KU, TOKYO 100-8355 JAPAN

TELEPHONE: 81-3-3211-8741 FACSIMILE: (Patent) 81-3-3214-6358�6359 (Trademark) 81-3-3213-8694 (Legal) 81-3-3214-6367 E-MAIL: (Patent) [email protected] (Trademark) [email protected] (Legal) [email protected] WEBSITE: www.nakapat.gr.jp

The firm’s legal practice also includes a wide range of counseling and infringement litigations and other types of litigations related to intellectual property laws (Patent, Trademark, Design, Utility Model, Trade Secret, Unfair Competition Prevention, Copyright, etc.), drafting and negotiations related to joint ventures, licensing, mergers and acquisitions, international business transactions and general corporate affairs.

trials before the Japanese Patent Office, and renders expert opinions relating to these industrial property rights.


PATENTSTIER 1• Finnegan Henderson

Farabow Garrett & Dunner• Hogan Lovells• Morrison & Foerster

TIER 2• Foley & Lardner• Ropes & Gray

TIER 3• Baker & McKenzie• Quinn Emanuel Urquhart &

sullivan• squire sanders

TRADEMARKS/COPYRIGHTTIER 1• Hogan Lovells• Morrison & Foerster

TIER 2• Baker & McKenzie• Finnegan Henderson

Farabow Garrett & Dunner• Foley & Lardner

TIER 3• squire sanders

JAPAN FOREIGn

We focus on proactive communication, attention to detail, rapid turnaround, and client objectives. With these values as our guide, we strive to continue learning and improving for the benefit of our clients.

Electronics, Software, Semiconductors and Electronic Materials, Optics, Telecommunications, Information Processing, Mechanical Engineering, Information Technology, Semiconductor, Chemical, and Biotech

L Tower 22nd fl., 1-6-1 Nishi-shinjuku, Shinjuku, Tokyo, 163-1522, JAPAN

TEL: +81-3-5322-6375 FAX: +81-3-5339-7790 [email protected]

SPONSORED ARTICLE 25WWW.LEGALBUsInEssOnLInE.COM: @ALB_Magazine : Connect with Asian Legal Business

OHNO & PARTNERS

Seiji Ohno

From April 1, 2012, the New Act is in force which includes an article with respect to the survival of license rights following the sale or assignment of patents. The New Act drastically increases the importance of patent due diligence in Japan. There are potential risks in relation to both licensee’s and licensor’s positions.

Under the Old Act, a purchaser of patent rights was not affected by outstanding license lights unless such license rights were recorded before the JPO. Under the Japanese patent licensing practice, it was extremely difficult for a licensee to record the license rights because the licensee is relatively weak in patent licensing negotiations. In fact, there is very small number of recorded license rights before the JPO. If a company wishes to purchase patents, there was very small risk of unexpected restraints to the patent rights even without any patent due diligence.

The New Act has changed such practice completely. Under the New Act, it is the duty of a prospective purchaser of patents to inform

himself of the nature of the pre-existing licensee’s ownership and the extent of his rights. If the prospective purchaser fails to do so, he cannot complaint that the patentee has misled him. Under the New Act, the prospective purchaser needs to perform patent due diligence to avoid unexpected restraints to the acquired patent rights.

Even if the prospective purchaser performs such patent due diligence and decides to purchase the patents, the purchaser shall face the next legal issue, i.e., whether the purchase will affect pre-existing license agreement, on which the New Act is silent.

With respect to this issue, there are a lot of discussions in the academic circle in Japan. So far, however, there is no authority. Under the New Act, a prospective purchaser of Japanese patent rights will be confronted with uncertain conditions. The prospective purchaser should perform patent due diligence at an early stage in patent transactions.

PATENT DUE DILIGENCE IN JAPANNew Act Increases The Importance Of Patent Due Diligence

LICENSOR

LICENSEE

PURCHASER

LICENSOR

LICENSEE

PURCHASER

Is a patent enforceable or not?

Is the Licensor’s position succeeded or not?

T: (81) 3 5218 2330 F: (81) 3 5218 2332 E: [email protected] W: http://www.oslaw.org/en/

PHILIPPINESLeading Firms forPatents/TrademarkS• ACCRALAW• Castillo Laman Tan Pantaleon & san Jose• Quisumbing Torres/Baker & McKenzie• Romulo Mabanta Buenaventura sayoc & De Los Angeles• syCip salazar Hernandez & Gatmaitan


PATENTSTIER 1• Allen & Gledhill• ATMD Bird & Bird• Drew & napier• Marks & Clerk singapore• spruson & Ferguson

TIER 2• Amica Law• Baker & McKenzie.Wong &

Leow• Lee & Lee

TIER 3• Rajah & Tann• Ravindran Associates• Rodyk & Davidson

TRADEMARKS/COPYRIGHTTIER 1• Allen & Gledhill• ATMD Bird & Bird• Drew & napier• spruson & Ferguson

TIER 2• Amica Law• Baker & McKenzie.Wong &

Leow• Ella Cheong• Rajah & Tann• Rodyk & Davidson

TIER 3• Lee & Lee• Ravindran Associates• RHTLaw Taylor Wessing• WongPartnership

SINGAPORE

THAILANDPATENTSTIER 1• Baker & McKenzie• Domnern somgiat &

Boonma• Tilleke & Gibbins

TIER 2• Rouse• satyapon & Partners• siam Premier International

TRADEMARKS/COPYRIGHTTIER 1• Baker & McKenzie• Domnern somgiat &

Boonma• Tilleke & Gibbins

TIER 2• Rouse• satyapon & Partners• siam Premier International

| www.rodyk.com

Premier Singapore law firm since 1861.

INTELLECTUAL PROPERTY & TECHNOLOGY


Hanjin Building 63 Namdaemun-ro, Jung-gu Seoul 100-770, KoreaTel +82 2 772 4000 Fax +82 2 772 4001/2 www.LEEKO.com

Lee & Ko

We are the most respected and trusted law �rm in Korea

Knowing Our Clients,Finding Solutions

We are a team of renowned experts in every �eld

As the leading law firm in Korea with more than 450 professionals, Lee & Ko has been and continues to be the firm of choice for the largest companies and global institutions for more than 35 years.

Lee & Ko's practice groups and specialized teams have consistently been ranked Tier 1 or Band 1 by leading global publications and professional associations, including IFLR, Bloomberg, Chambers Asia, Asia Pacific Legal 500 and Thomson Reuters.

Lee & Ko was named "National Law Firm of the Year" by Chambers Asia for 2013.

Many of our partners and experts have been recognized by local and international professional associations and legal publications as "Leading Individuals"and the best in their respective fields.

We strive to provide not only the most precise legal advice taking into account the uniqueness of each particular industry but the best practical solutions for our clients.

We make it our highest priority to build lasting relationships with our clients by being responsive to each client뭩 specific needs in every matter entrusted to us.

SOUTH KOREAPATENTSTIER 1• Kim & Chang• Lee & Ko• Yulchon

TIER 2• Bae, Kim & Lee• Lee International IP & Law Group• shin & Kim

TIER 3• Central International Law Firm• Cho & Partners• Kim, Choi & Lim• Muhann Patent & Law Firm• Yoon & Yang• You Me Patent & Law Firm• YP Lee Mock & Partners

TRADEMARKS/COPYRIGHTTIER 1• Kim & Chang• Lee & Ko

TIER 2• Bae, Kim & Lee• Lee International IP & Law Group• shin & Kim• Yoon & Yang• Yulchon

TIER 3• Cho & Partners• Central International Law Firm• Kim, Choi & Lim• Muhann Patent & Law Firm• You Me Patent & Law Firm• YP Lee Mock & Partners


IP

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C. ℡: 886-2-25856688 �: 886-2-25989900/25978989

ProsecutionInfringement Litigation

[email protected]

IP



[email protected]

IP



[email protected]

IP



[email protected]

PATENTSTIER 1• Jones Day• Lee and Li• TIPLO

TIER 2• Baker & McKenzie• Formosa Transnational• saint Island International

Patent & Law Offices• Tsar & Tsai

TIER 3• Deep & Far• Finnegan Henderson

Farabow Garrett & Dunner• Winkler Partners

TIER 4• Cn-KnowHow IP Group• Guantao Law Firm• Hengdu Law Offices

TRADEMARKS/COPYRIGHTTIER 1• Baker & McKenzie• Lee and Li• TIPLO• Tsar & Tsai

TIER 2• Formosa Transnational• Jones Day• saint Island International

Patent & Law Offices• Winkler Partners

TIER 3• Deep & Far

TAIWAN


FOLLOW US ON TWITTER!

With its portfolio of leading titles, online services, Law Awards and In-House Legal Summits, ALB provides authoritative and unbiased insights, and unmatched networking and business

development opportunities, to legal professionals throughout Asia Pacific and the Middle East.

@ALB_MagazineIP



[email protected]

VIETNAMPATENTSTIER 1• Baker & McKenzie• Pham & Associates• Tilleke & Gibbins

TIER 2• Hogan Lovells• InVEnCO• Rouse• Vision & Associates

TRADEMARKS/COPYRIGHTTIER 1• Baker & McKenzie• Hogan Lovells• Tilleke & Gibbins

TIER 2• InVEnCO• Pham & Associates• Rouse• Vision & Associates

TIER 3• Phuoc & Partners

18 cover story asian legal business may 2014 · 18 cover story asian legal business may 2014 alb...

Documents