Regional Patent Attorney - International IP Firm with significant Asia Pacific operations

Fast growing international IP firm with significant Asia Pacific operations, seek a regional patent attorney to be based in its Asia Pacific business. The business has a number and variety of legal entities to facilitate its trade as a law firm, brand protection agency and patent and trade mark practice in China, Hong Kong, Indonesia, Vietnam, Thailand and Philippines. The position will be based in Hong Kong, but involve substantial Asian travel, at least initially.

The Role

Reporting to the patent agency International Services Head in Europe and the Asia Pacific practice head, this role comprises managing and developing the Group’s patent services in Asia (esp. China, Indonesia, Hong Kong, Thailand , Philippines, Vietnam & India). It includes supervising local patent attornies and the administrator/paralegal teams, skills and capacity development and training, client management and marketing. The job involves:

# working closely with the patent agencies International Services Head and the Asia Pacific practice head, as well as national country managers to strengthen existing patent practices (Phase 1) and marketing and development of new patent clients (Phase 2), including working on and implementing a business plan agreed with the patent agency International Services Head
# overall responsibility for all patent agency work in Asian offices
# local capacity and skills development and assistance to country managers on training and development of local patent expertise and an international business approach
# working with a large diverse team around Asia, as part of a larger IP focused business
# working with commercial and litigation attorneys in patent matters in Asia
# working as part of the international patent agency group in relation to other client matters outside Asia as appropriate

The ideal candidate will:-

# be a European, US or Australasian qualified patent attorney
# have at least 2-5 years professional experience in a well known practice; with in house experience desirable, and demonstrating an expert understanding of international patent practice and issues and considerable direct client experience
# be capable of handling a range of technical disciplines, with a strong specialization in one or more, with electronics/software/telecoms an advantage give such focus in Asia
# substantial high quality drafting experience
# experience in national and PCT filings in Asia, with understanding of local issues in one or two markets an advantage
# expertise in PCT work
# substantial experience in patenting strategy and procurement
# be an enthusiastic traveller and have good cultural awareness
# want to work in an informal but entrepreneurial and fast growing environment
# have demonstrable people skills and an ability and desire to work cooperatively and in a team environment
# capable of working with a high degree of independence and handling communications and work in a dispersed organization

This is a great opportunity for further information in complete confidence, please contact sandra.godbold@hays.com.hk

Allens Arthur Robinson IP

Allens Arthur Robinson’s IP Practice has received the following awards:

* Leading Australian IP Firm 2008 – Chambers Global: The World’s Leading Lawyers
* Leading Australian Patent Litigation Firm 2007 – Managing Intellectual Property
* Leading Australian Trademark and Copyright Litigation Firm 2007 – Managing Intellectual Property
* Leading Australian IP Firm 2007 – PLC Which Lawyer? Yearbook
* Leading Australian IP Firm 2007/08 – Asia Pacific Legal 500

Allens Arthur Robinson’s intellectual property practice gives you access to a streamlined service from some of the world’s top intellectual property practitioners. They are known for their pragmatic, commonsense approach. Allens Arthur Robinson combines the skills of our commercial and litigation intellectual property lawyers with those of their integrated Patent & Trade Marks Attorneys firm allowing them to offer a comprehensive intellectual property service. Allens Arthur Robinson has successfully acted for clients in major litigation proceedings relating to infringement of patents, trade marks, copyright and designs rights, as well as breaches of confidence and information technology rights. Their experience extends throughout the region, particularly in China, but also in Singapore, Thailand, Japan, Taiwan, Malaysia, India, the Philippines and South Korea. Clients include Pfizer, Sony and FOXTEL.

IP Partners in Allens Arthur Robinson

Justine Beaumont (Special Counsel)
Chris Bird
Andrew Butler
Fred Chilton
Dr Trevor Davies
John Dieckmann (Special Counsel)
Jim Dwyer
Tim Golder
Richard Hamer
Philip Kerr
Sarah Matheson
Jackie O’Brien
Miriam Stiel
Andrew Wiseman
David Yates

Investigations Manager / Anti-Counterfeit Unit Manager (Shanghai or Guangzhou) - International Company

* International Company
* Management Opportunity

PExpatriate or PRC National with at least conversational Mandarin and fluent English required. The position will be at Manager or Senior Manager level as appropriate to experience and will report to China management team. The candidate will be responsible for team of investigators and enforcement staff. The candidate will be taking over an established and fully functioning department, and will benefit from a gradual induction under the current manager. The candidate should have at least 4 years experience in field of IPR enforcement in China, specifically including experience in managing IP related investigations and administrative, criminal and civil enforcement cases. Legal qualification in PRC or overseas jurisdiction is not essential but favoured.

The candidate should have an ability to independently advise clients on enforcement strategies and have a track record in effectively managing a team of staff. The position is available in either Shanghai or Guangzhou. Interested Candidates, please forward your detailed CV to sandra.godbold@hays.com.hk

Intellectual Property Lawyer - International IP Practice

* International IP Practice
* Contentious & Non-Contentious
* Travel to China

Our client’s intellectual property department is a key practice area and great importance is attached to the further development of their IP capabilities around the world. Overall, they have over 75 lawyers and attorneys specialising in IP. With a significant number of international clients operating in China and expanding their operations in China. They want to use their world-class rankings within the Life Sciences and TMT sectors to broaden their relationships with these clients.

You will have experience in PRC intellectual property laws and procedure, in particular in the Life Sciences and/or TMT areas. (Life Sciences includes pharmaceuticals, biotechnology, medical devices and consumer healthcare.) The ideal candidate will have gained such experience at a local or international firm in China and will have experience in contentious and/or non-contentious matters. Experience of being involved in litigating (or the supervision litigation of) patents is useful (but not essential).

You must be highly motivated with an excellent academic background. A scientific background would be preferable. Candidates must be fluent in Mandarin and be able to read/write Chinese and have a fluent level of English. If you are keen to learn more and to be a part of a successful and dynamic team, please send your CV to lisa.barker@hays.co.hk

IP Lawyer - Hong Kong

* Top Ranking IP Practice
* Unique Opportunity
* Hong Kong

Our client offers a global intellectual property consultancy through its regional practices in Europe, the Middle East, North Africa and India, China, and South East Asia. We provide a full range of intellectual property services, from the implementation of global investigation, enforcement and protection strategies, to the provision of commercial IP services, including filing, research, management and data protection.

The Hong Kong associated law firm is now inviting applications for the following position:-

The ideal candidates will be admitted to practice in Hong Kong, with up to 2 years post qualification experience gained substantially in IP. This position requires fluent written and spoken English and Cantonese. Ability to communicate in Mandarin will be an added advantage.

Interested parties should send their CVs, in complete confidence, to Lisa Barker at lisa.barker@hays.com.hk.

In the Shadow of the China-Australia FTA Negotiations

Free public seminar from IPRIA in association with Australia China Business Council

Speakers: Kimberlee Weatherall and Jongsay Yong

Since early 2005, Australia and China have been negotiating a Free Trade Agreement (FTA) which may include a minor but important chapter on Intellectual Property (IP). IPRIA recently completed a research project on the intellectual property (IP) aspect of the Australia China Free Trade Agreement. The survey provided information on the importance of IP across industries, as well as the relative importance of IP for the success of their Chinese business dealings.

Despite general claims that IP is a ‘critical issue’, the survey results revealed that among Australian businesses which have direct dealings with China, IP issues (registration, examination and enforcement) are of less concern than Chinese regulations and legal transparency. Less surprisingly, among the IP issues covered in the survey, IP enforcement poses the greatest problem for Australian businesses.

In this seminar, two of the researchers involved in the study will explain the study, present some of the results – and discuss its implications for how Australia should approach IP negotiations with China.

Melbourne – Wednesday 20th February 2008
Sydney – Thursday 21st February 2008
Brisbane – Thursday 28th February 2008

In the Shadow of the China-Australia FTA Negotiations: What Australian Business thinks about IP.

Dr Martin O’Brien - Unjustified threats of legal proceedings

Dr Martin O’Brien, Principal at Spruson & Ferguson, reviews Occupational and Medical Innovations Limited (ACN 091 192 871) v Retractable Technologies Inc [2007] FCA 1364 (31 August 2007) in which Occupational and Medical Innovations Limited (OMI), an Australian company and patentee of a patent directed to retractable syringes, alleged that Retractable Technologies Inc (RTI), an American company with Australian and US patents in the same field of technology, had made unjustified threats of patent infringement proceedings. In 2004 and 2006 OMI was the recipient of several letters written on behalf of RTI which stated, among other things, that RTI: ‘is prepared to take any legal action necessary to protect its patented and unpatented technology, its products and its proprietary position with respect to [RTI’s supplier] and any company with which [the supplier] or its affiliates may be dealing.’

Dr Martin O’Brien notes that the RTI letter did not explicitly assert infringing conduct in Australia nor did it explicitly refer to the commencement of infringement proceedings. Nevertheless, the reference in the RTI letter to “protecting patented technology” was interpreted by the Court to “suggest infringement proceedings or, perhaps, an application to revoke [OMI’s] patent with the intention that infringement proceedings follow”.

Accordingly, the Court was satisfied that “a recipient in the position of [OMI] would have understood the letter to threaten enforcement or similar proceedings in Australia, pursuant to an Australian patent held by RTI, in connection with the importation into, and/or other exploitation in, Australia of retractable needles manufactured in China.” The Court therefore held the letter referred to above included unjustified threats.

Unjustified threats of legal proceedings

Minter Ellison - Recent Developments in Intellectual Property in China

Minter Ellison has released its update on Recent Developments in Intellectual Property in China.