China IP Counsel Forum

Monday, February 13 to Tuesday, February 14, 2012

Le Royal Meridien Hotel Shanghai, Shanghai

8:00 Registration Begins and Morning Refreshments

9:00 Conference Co-Chairs Opening Remarks

Oliver Lutze
Head of IPR
Bayer China (Shanghai)

Elizabeth Chien Hale
Director, Asia Pacific IP Legal Affairs
Eaton (Shanghai)

9:15 Ensuring Your Employment Remuneration Policy Can Withstand Potential Employee Lawsuit Challenges

Ye Hua
Senior Corporate Counsel, Intellectual Property
Pfizer (Shanghai)

Zack Zhao
Chief IP Counsel
Dow Chemical (Shanghai)

• What can be learned from recent employees lawsuits on remuneration disputes
• Discussing SIPO and judicial system’s position on multinationals’ internal corporate remuneration policy
• What standards for “reasonable compensation for employees” will be accepted by Chinese courts
• Budgeting employment invention remuneration in your R&D plan
• Strategies to persuade the employee to buy-in the internal policy
• Mitigating potential risks when the employee files the lawsuit in labor court

10:15 Coffee Break

10:30 How to Get R&D Funding and Tax Benefits:

Aligning Tax Planning with Intellectual Property Related Investment in China

Kenneth Chan
Regional IP Counsel, Asia
Corning (Shanghai)

DingFa “David” Liu
Corporate and Tax Partner
Jun He Law Offices (Shanghai)

• Examining the interaction of tax and IPR policies in China
• Identifying potential tax benefits and incentives for your organizations in China

- High and New Technology Enterprises status
- Advanced Technology Service Enterprises status
- Incentives for high technology industries in China’s new five-year plan

• Understanding China’s R&D investment role in your global tax planning
• Structuring corporate R&D framework in China to be qualified for tax incentives
• What the definition of “core IP” really means for your
industry
• Examining core IP’s impact on tax incentives
• Discussing tax benefits for offshore IP centers in China

11:30 Patent Infringement Establishment: Beijing High People’s Court’s Guideline, Key Changes and Impact on Multinational Patent Litigation Practice

David Shen
Regional Legal Counsel
AstraZeneca (Shanghai)

Ronald Xie
Litigation Director- Greater China Region
Microsoft (Beijing)

Hong Ai
Partner
ZY & Partners (Beijing)

Hao Ma – Panel Moderator
President
CCPIT Patent and Trademark Law Office (Beijing)

• Using independent claims to expand the scope of protection and existence of infringement
• Understanding the importance of technical features in the claims from the accused product
• Establishing application of doctrine of equivalent for infringement claims
• Balancing on the claims and interpretation of the specifications for claim construction
• Trade secret information is no defense for disclosure of evidence

12:45 Industry Networking Luncheon for Speakers and Attendees

During lunch, attendees and speakers will have the opportunity to sit at the “industry table” of their choice (manufacturing, life sciences, chemical, high technology). This exclusive luncheon format will offer unique networking with other IP attorneys and R&D executives from China, North America, Europe and Asia.

14:00 Resolving IP Ownership Challenges in Collaborative Research with Chinese Universities:

How to Create a Win-Win Working Relationship

Claudia Xu
Director of Technology Transfer Center
Hong Kong University of Science and Technology
(Hong Kong)

Oliver Lutze
Head of IPR
Bayer China (Shanghai)

Ben Wang
Head of Patents
Unilever (Shanghai)

Connie Carnabuci – Panel Moderator
Partner
Freshfields Bruckhaus Deringer LLP (Hong Kong)

• Examining the legal framework governing IP ownership in China
• Discussing the pros and cons of various IP ownership agreements in the collaborative research context
• Understanding universities’ mindset regarding IP ownership
• Indigenous innovation research projects: assessing the
indigenous innovation policy’s impact on contract negotiation
• Discussing government’s role in IP ownership in government-funded research projects
• How to deal with inventor remuneration and publication issues
• Resolving IP ownership of “improvement” and “third party materials”

15:15 Refreshment Break

15:30 Protecting Trade Secrets: Effective Strategies to Prevent Leakage and Maximize Damage Claims

Alp Bayramoglu
CTO, IP Director
TPK Touch Solutions (USA)

Xiang Wang
Partner
Orrick, Herrington & Sutcliffe LLP (Beijing)

• Examining the relevant law governing trade secret protection and enforcement environment in China
• Discussing effective physical security actions to prevent IP leakage
• Taking proactive IT security measures to restrict information flow in the open R&D environment
• Preventing employees and suppliers trade secret theft:
what works, and what doesn’t
• Conducting investigation and gathering evidence once the trade secret is stolen
• Making a realistic assessment on what and how you can achieve through litigation
• Strategies on building up legal basis and damages claims
• Lessons learned from recent litigation cases

16:15 Effectively Working with China Government Authorities to Initiate Anti-Counterfeiting Raids

Dr. Edward Haijiang Yang
Senior Manager, Brand Protection Greater China Office
Nokia (Hong Kong)

Bradley Yu
Partner
Unitalen (Beijing)

• Choosing the right timing to present your case in front of government authorities
• Understanding the pros and cons of raids from police department and administration for industry and commerce
• Building up initial evidence on the criminal threshold to get police department interested
• Practical tips for organizing the criminal raids: Do’s and don’ts
• Following up with prosecutors after the criminal raids

17:15 Co-chairs’ Recap and Conference Adjourns
for the Day

9:00 Co-Chairs Opening Remarks

9:05 Exclusive Panel - Meeting of the China IP Minds

Jack Chang
Senior IP Counsel, Asia
General Electric (Shanghai)

Shuai Zhang
IP Specialist
TaoBao (Hang Zhou)

Elizabeth Chien Hale – Panel Moderator
Director, Asia Pacific IP Legal Affairs
Eaton (Shanghai)

This exclusive panel session will bring together senior members of the China IP Bar, and will be an open and interactive forum on China’s IP landscape, opportunities and challenges.

Attendees will have an opportunity to ask questions to the panel
of experts.

10:00 Enforcing Patent Rights Against Infringement at Trade Fairs in China

Roberto Dini
Founder
Sisvel (Italy)

Elliot Papageorgiou
Executive Partner
Rouse (Shanghai)

• Critical steps to take before participating in the trade fair
- Identifying the IP assets that need protection and setting
up a concrete goal to achieve in advance of the trade fair
- Preparing the required documents for the raids
• Proactive measures to implement during the trade fair
• Setting up the follow up plan after trade fairs
- Evidence gathered or actions taken at the trade fair
- Following up with authorities and conducting
investigations into whether the infringer halted
infringing activities
- Meeting new requirements from government authority
on filing patent infringement lawsuits between trade fairs
- Initiating further enforcement action if necessary
• Lessons learned from recent successful enforcement cases

11:00 Coffee/Tea Break

11:15 Preparing for 3rd China Copyright Amendment: How to Adjust Copyright Protection and Business Strategies

Matthew Cheetham
Regional Legal Counsel, Asia-Pacific
Motion Picture Association (Singapore)

George Fu
Partner
Watson & Band Law Offices (Shanghai)

• Highlighting key Amendment revisions which would affect those doing business in China
- The amount of statutory damages will possibly be raised
- Doctrine of “Safe Harbor” is likely to be changed
- Doctrine of “fair use” will be restricted or explicitly provided
- The attribution of copyright ownership will possibly be changed
- Revisions on determination of infringement will be done in adaptation to the Tort Law
• Influences of the Amendment on enforcement
- How requirement for right holders’ burden of proof against ISPs will be lowered
- Which current business models in China will be discouraged

12:00 Resolving Complex IP Licensing Challenges in China: Compliance & Royalties

Azir Haque
Managing IP Attorney, China Region
3M (Shanghai)

Benjamin Bai
Partner
Allen & Overy LLP (Shanghai)

• Examining legal and regulatory framework for licensing in China
• Preventing non-compliance with mandatory Chinese laws
• How to conduct effective pre-licensing due diligence
• Ensuring the contract terms are valid and enforceable
• Contract safeguards – terms to include in your licensing agreement
• Discussing ownership of improvement on licensing technology
• Enforcing royalty fees in China

13:00 Networking Luncheon for Speakers and Attendees

14:15 Secrecy Examination: Developing and refining your filing strategy for China

James Kellerman
Senior Patent Counsel
GlaxoSmithKline (USA)

Tina Tai
Assistant General Manager, Patent Attorney
China Patent Agent (Hong Kong)

• Filing requirements for invention made in China and cross-border collaboration research
• Statistics of FFL requests filed with SIPO
• Pros and Cons – Threes routes to obtain FFL
• Time frame of FFL

15:00 Impact of Proposed Amendment to the PRC Trademark Law on Registry and Enforcement Strategies

Michael Yu
IP Office Manager
Johnson & Johnson (Shanghai)

Joseph (Joe) Simone
Partner
Baker & McKenzie (Hong Kong)

• Main challenges posed by current legislation and policies with respect to registration, protection and licensing of trademarks in China
• Overview of latest draft amendment to the Trademark Law and industry views thereon
• Industry proposals for changes in the IP provisions of China’s Criminal Code
• Latest court decisions and government initiatives in
intermediary liability, including with respect to landlords of retail and wholesale markets and internet trading platforms
• Best practices under current law in addressing bad faith trademark piracy, online counterfeiting and generating positive results from enforcement programs

15:45 Refreshment Break

16:00 Distinguishing “Similarity” with “Likelihood of Confusion” to Prevent Trademarks Infringement

Paul Ranjard
Of Counsel
Wan Hui Da IP Agency (Beijing)

• Legal basis for potential trademark infringement in TRIPS and Chinese trademark law
• Discussing the supreme court of PRC’s position on the connection between “similarity” and “likelihood of confusion”
• When does a trademark determined similar to another may be determined as not infringing because of no likelihood of confusion
- The time factor
- The use of another name or sign
- Impact of use, or non-use, of the prior registered trademark
- Export
- Luxury goods
• How to enforce your trademark rights in case of potential infringer claims no likelihood of confusion despite of similarity

16:30 Interactive Q&A Session with Speakers

Take this opportunity to ask your most pressing questions and concerns to the live panel of IP experts during this open format, interactive practical Q&A session. A great opportunity to gain best practices on how to protect and litigate your IP in China, and get the answers you need from a senior-level group of your peers experienced in dealing with these issues on a day-to-day basis.

17:00 End of the Conference

Brochure

- click image for pdf -

- Actions -

- Share -

Location:
Le Royal Meridien Hotel Shanghai
Shanghai