Intellectual Properties

downloadIntellectual Properties

Scope of Practices:

Leezhao intellectual properties business covers areas of patents, trademarks, proprietary technologies, copyrights, name-marking rights, trade secrets and domain names etc, and covers industries of electronics, electric, chemistry, software, semiconductor, construction, e-commerce, media and other traditional industrial fields. In addition to regular intellectual property business, Leezhao can provide effective intellectual property protection schemes for our clients, and has extensive experience in the implementation of schemes and remedies.

Leezhao provide the following services for Intellectual properties business:

Application and registration of intellectual property rights;
Transfer and licensing of intellectual property rights;
Assisting clients to establish intellectual property protection system;
Infringement investigation and dispute settlement of intellectual property.

In addition, Leezhao has been recorded as the trademark agency of the Trademark Office of the State Administration for Industry and Commerce.

Achievements (Typical cases)：

Leezhao’s achievements in intellectual properties

Leezhao has long provided intellectual property legal services to clients, and many partners and lawyers have accumulated extensive experience in dealing with intellectual property matters, especially in the areas of infringement investigation and dispute settlement. Leezhao also maintains a good relationship with administrative organs and judicial organs in some regions. At the same time, Leezhao also selects a number of patent/trademark agencies with good qualifications, strong capabilities and fine reputation as long-term partners to provide clients with an overall intellectual property services.

In recent years, under the engagement of the clients, typical cases handled by Leezhao in the area of intellectual property mainly include:

Key word	Typical cases
The first anti-trust case in China (IP rights related) technology barrier; unfair competition; lawsuits.	A battery enterprise in China Sichuan sued a Japanese well-known electrical appliance enterprise (fortune 500) and one of its subsidiaries in China to Shanghai No.1 Intermediate People’s Court. The battery enterprise alleged that the Japanese company and its subsidiary have abused their dominant market position by using so-called Intelligent Key Identification System in the lithium ion battery used in the cameras, video cameras which were produced and sold by them so as to establish an exclusive dependency relationship between the battery and cameras, video cameras, and implement unfair competition actions like tied sale. The battery enterprise also claimed that the Japanese company has constituted technology monopoly by abusing IP rights which create technology barrier and exclude competition. Since the case was accepted when the Law of Anti-trust were still under legislation review, the whole trail got high attention from the media, academics and judicial offices, and the case was called as “the first anti-trust case in China”. After studying and investigating cautiously, Leezhao, as the agent of the Japanese enterprise and its subsidiary, submitted full and accurate evidences to the court proving that the plaintiff was the counterfeiter of the involved products, rather than an equal competitor, and proving that the evidences submitted by the plaintiff are defective and defending against the plaintiff’s argument that the defenders had market dominant position, and proving that the battery products used by the defenders were embedded with many invention rights and industrial design patents, as well as software copyrights, know-how and other IP rights. Leezhao explained and illustrated related patents papers to the court, proving that the technologies were novel, useful and reasonable and defended against the plaintiff’s allegation that the defenders have abused IP rights, implemented technology monopoly, or constituted unfair competition, and finally won the support of the court. The trail lasted for three years, Leezhao finally helped the clients to win the case and the case was selected into the Intellectual Property Cases Selection written by the Shanghai Municipal Higher People’s court.
Joint development; patent disputes; CIETAC arbitration	An elevator manufacturer established in China by a famous European elevator company cooperated with one enterprise in Shenyang, China to develop and produce a motor product, and according to the agreement, the patent rights of the core components of related products and related know-how belong to the Shenyang enterprise. After the completion of joint development, the parties signed a sales agreement, stipulating that the European elevator company would purchase relevant motor products from the Shenyang enterprise. After the termination of the sales contract, the elevator manufacturer outsourced the production of its motor products to other manufacturers, but the Shenyang enterprise submitted arbitration to the China International Economic and Trade Arbitration Commission, claiming that the elevator manufacturer violated the contract, disclosed the know-how and infringed its patent rights and exclusive rights to the know-how. Leezhao represented the elevator manufacturer in the arbitration trial, and through presenting evidence and cross-examination, Leezhao proved to the arbitral tribunal that the elevator manufacturer did not violate intellectual property clause on the ownership or the duty of confidentiality, nor infringed patent rights of Shenyang enterprise. In the course of the trial, for some issues of patent infringement, Leezhao, based on the comparison and interpretation of the related products and the related patent documents, successfully applied the theory of the equivalent principle in the patent infringement determination to prove that the core components of the products produced or outsourced by the elevator manufacturer did not infringe the patent rights of the Shenyang enterprise. After the trial, the arbitral tribunal finally supported all the claims of Leezhao and rejected all requests of Shenyang enterprises. Leezhao helped the clients to win a sweeping victory and avoid tens of millions of monetary losses.
Service Invention, Infringement Investigation	A Japanese comprehensive company (fortune 500) planed to invest in a new company jointly with a Shenzhen enterprise which produces tea powder and tea concentrate, with the fund from the Japanese company, and the production technology from the Shenzhen enterprise. However, during the negotiation on joint venture, a third party sued the Shenzhen enterprise for infringement, claiming that the production technology was developed by the Shenzhen enterprise personnel during his employment with the third party. Leezhao, as the special authorized agent, conducted a thoroughly investigation on patent infringement disputes, and studied validity of related patented technology, whether it belongs to service invention, and impact on joint venture project, to assist Japanese company in making investment decisions.
Trademark disputes, abuse of generic names, domain names disputes, CNNIC arbitration	The trademark of a Japanese chemical company has been long abused as a generic name for such products. The trademark has been registered in China, but a Chinese company has registered the English name of the trademark as a domain name. Leezhao, as the agent ad litem of this Japanese company, submitted the domain name dispute to China International Economic and Trade Arbitration Commission, claiming that Chinese company’s domain name is the same as trademark name, which hindered the Japanese company registering its trademark as a Chinese domain name and seriously infringed legitimate rights and interests of Japanese company, so the domain name shall be transferred to the Japanese company. In the end, arbitral tribunal decided to transfer the domain name to Japanese company.
Typeface(character database) copyright	 Entrusted by a Japanese electrical company, Leezhao negotiated and settled with the right holder of specific Chinese fonts which were used on the website and product packaging by the company.
Product exclusive name, counterfeits	Entrusted by a Japanese chemical company, Leezhao defended its rights against a Chinese company who use its product’s exclusive name and use counterfeit/inferior chemical ingredients in product.
Counterfeit product infringement investigation, administrative remedies	Entrusted by a Japanese-funded enterprise engaged in the tool manufacturing business, Leezhao successfully handled the product counterfeiting and infringement through administrative remedy, which involves companies in China and the Middle East.
Trademark registration	Entrusted by a Japanese information media company, Leezhao provided full service for its trademark registration in China.
Patent license	Entrusted by a Japanese electronics company, Leezhao provided full services for its patent licensing in China.
technological license, trademark licensing, OEM arrangement	Entrusted by a Japanese audio equipment manufacturer, Leezhao provided full service for technology license/trademark license/OEM arrangements with a well-known Chinese OEM company.
Technology transfer, trademark license, foreign exchange payment, tax arrangement	Entrusted by a Japanese mining company, Leezhao provided full services for technology transfer/trademark license, corresponding payment of foreign exchange and tax arrangements, which is related to the establishment of joint ventures in China.
JETRO research report, Intellectual property administrative procedures investigation report	Entrusted by the Japan External Trade Organization (JETRO), Leezhao investigated, researched, and organized the Investigation Report on Administrative Procedures Relating to Intellectual Property Rights. The report is about 140,000 words, and investigates the experience and deficiencies of the Chinese administrative authorities of intellectual property rights, and proposed recommendations.
JETRO lecture, intellectual property lecture, the recognition of high-tech enterprises	Entrusted by the Japan External Trade Organization (JETRO) Leezhao give lectures on intellectual property rights for some Japanese-funded companies in Shanghai (including lectures on basic knowledge, on high-tech enterprise recognition, etc.).
Intellectual property management rules, intellectual property created during employment	Entrusted by a Japanese chemical company, Leezhao formulated Rules for Management of Intellectual Property Achievements, which stipulates intellectual property created during employment, or other intellectual property, etc
Design and operation procedure	Entrusted by a large manufacturing company, Leezhao conducted legal review and provide relevant legal opinions on the Operation Procedures on Invention and Design.
Internet TV, copyright infringement	Entrusted by a Japanese electrical appliance company, Leezhao provided legal advice on the feasibility of developing Internet TV and related copyright infringement issues.
Intellectual-property protection, trade secret, competition restriction	Entrusted by considerable Japanese-funded companies, Leezhao provided comprehensive services on intellectual-property management and warning, as well as trade secrets protection and competition restrictions regarding employees.