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License Executive Society USA & Canada

IP Licensing in China

  • 20 Jun 2019
  • 12:00 PM - 1:30 PM

IP Licensing in China
Thursday, June 20, 2019
Sheraton Hotel,  Palo Alto

11:30 a.m. – 12:30 p.m. – Registration & Networking Lunch
12:30 p.m. – 2:00 p.m. – Program

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China – because of its market size, its goals of technological advancement, and its government’s willingness to intervene in the marketplace – offers unique opportunities and challenges to those involved in licensing.  China has actively used anti-trust enforcement to influence licensing.   We will be discussing the status of these activities, including the settlement between China and Qualcomm and more recent enforcements.   Since so many of the world’s goods are manufactured in China, and because of the importance of its markets, any efforts by its courts or regulators to influence royalty rates will have worldwide implications.  We will be reviewing China’s perspective on what would effectively be global rate setting, including rate setting for standard essential patents.  We will discuss licensing dos and don’ts in light of these legal and regulatory changes.  Finally, if there has been any progress or new setbacks in the trade negotiations between the US and China, we will offer our perspectives on the implications for licensing.  1.5 MCLE credits available.

Mark Cohen, Senior Fellow, Director and Lecturer, Berkeley LawMark joined Berkeley Law in 2017 as a Senior Fellow and Director of BCLT’s Asia IP Project. With over 30 years’ experience as a law firm attorney, in-house counsel, government official, and adjunct and visiting professor of law, Cohen was previously Senior Counsel and Senior Advisor to the Undersecretary of Commerce/Director of the USPTO. He is widely recognized as the leading expert in the U.S. on intellectual property law in China.  As Director of the BCLT Asia IP Project, Cohen is working with BCLT sponsors and faculty directors to develop collaborative relationships with academic institutions and other partners in Asia, including organizing workshops, conferences, and other events that bring data-driven insight to the complex IP landscape in China and other Asian fora.  Mark hosts the popular blog, serves as an advisor to the IP database, and has published books and articles on China’s IP system, antitrust law in China, civil and administrative enforcement of IP,  and foreign law firms practicing law in China.

Matthew Laight, Bird & Bird, China Office
Matthew heads Bird & Bird’s Intellectual Property Group in Asia.  With more than 20 years of experience in representing multinational companies in China and across Asia, Matthew advises on all aspects of IP covering both contentious and non-contentious matters including licensing and monetizing IP.  He has represented some of the world’s leading companies in the life sciences and electronics sectors. His life sciences experience includes matters such as patent, trade mark and unfair competition litigation; and commercial work such as clinical trials agreements, joint promotion and joint marketing agreements, collaboration and development agreements. In the electronics sector, Matthew has been heavily involved in standards issues and the interplay between standards and patents. He has been involved in some of the leading cases relating to standard essential patents.

Chen Gu, Senior IP Counsel, Intellectual Property Department, Tencent America
Chen worked for twelve years as an engineer for Intel Corporation, then for two years as a legal analyst for the same company.  He is a member of the Virginia Bar and practiced patent law in various law firms in the DC area, as well as having worked for a short stint as a patent examiner at the USPTO.  He subsequently worked as in-house counsel for Western Digital.  Currently, Chen Gu is a Senior IP Counsel for Tencent America, supporting US patent prosecution and management of a standard essential patent portfolio covering video coding technology.

Ben Wang, former VP and chief IP counsel, ZTE
Ben was formerly vice president and chief IP counsel at ZTE in the United States, where he provided strategic and tactical guidance relating to IP licensing and litigation issues. Before ZTE, Mr. Wang established and led Unilever’s patent group in Shanghai for over five years, building patent portfolios, managing patent litigation, and counseling on legal and IP policy issues in China and globally. Before relocating to China, Mr. Wang practiced law in the United States for over 10 years.

Moderator: Stephen Schott, Schott Law Office
Stephen advises clients on joint development, licensing, patent sales, and the IP-aspects of corporate transactions, as well as on design around and offensive and defensive patent activities. He oversees patent prosecution on behalf of clients and has significant experience dealing with non-US intellectual property issues.  He has advised clients on IP issues related to semiconductor manufacturing processes and equipment, integrated circuits and discrete semiconductor devices, biomedical, automotive, alternative energy, consumer products and jewelry.  He was the Director of Patents at Fairchild Semiconductor Corporation for eight years, as well as an associate and of counsel in two top-tier law firms. Since 2009 he has had his own practice.

CLE: 1.5 hours CLE available.

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