Understanding. DLA Piper Full-service intellectual property services in Asia. 01
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1 Understanding Intellectual Property DLA Piper Full-service intellectual property services in Asia 01
2 Intellectual Property Asia DLA Piper has an unrivalled commitment to providing a dedicated full service intellectual property (IP) capability across Asia. Whether you are an international brand owner looking to protect, exploit or enforce your rights in Asia, or an Asian based company looking to expand into global markets, our dedicated IP team can help you minimise risk and maximise the value inherent in your important IP assets. The protection of IP rights and their effective exploitation is critical for organisations in Asia as they strive to achieve international standards in the technology, media, telecommunications, hospitality, and manufacturing and retail sectors. For incoming investors, protection of their valuable IP rights is of paramount concern. Asia is becoming increasingly consumer oriented and is a burgeoning market for international licensing and franchise opportunities. While the region has been traditionally reliant on technology transfers and licensing in of IP, as regionally based operations grow and become more sophisticated in their brand offerings, significant opportunities have also arisen for the export of IP. In Asia, IP is one area of law in which it pays to invest in sophisticated, yet locally attuned professional legal advisers to protect your valuable IP assets. A myriad of related laws span the IP space, covering trade marks, copyright, patents, designs, consumer protection, distribution and agency arrangements and the conduct of e-commerce, all of which need to be understood and applied in order to effectively protect your IP. While the IP laws in Asia contain principles which are familiar to many Western companies, their interpretation and application are distinctly regional. Furthermore, as many countries in Asia have Court systems which have no formal recognition of legal precedent, it is crucial to ensure that the foundations of your IP portfolio are laid down properly from the outset. DLA Piper s IP team is based across Asia from where it provides market leading legal services to the entire region in a culturally sensitive yet commercial and practical manner. Most importantly, our lawyers and IP professionals are literate in English, Chinese, Japanese and Thai, enabling our clients to rest assured that we are best placed to support their IP needs at every stage of the IP life cycle. 02 Understanding Intellectual Property
3 The DLA Piper difference We believe the features of our IP offering that differentiate us from our competitors are as follows: We have world class IP counsel based in Asia who understand both the local and global environments We can deliver commercial yet sophisticated and culturally attuned advice to our clients at all stages of the IP life cycle We have built our IP capability in response to the types of legal support that our clients and our experience in Asia have told us is required IP is an integral part of DLA Piper s global business plan, which is reflected in the strength of our offering We have lawyers and IP professionals who are literate in English, Chinese, Japanese and Thai, the key languages in the region We understand how local IP laws are applied in practice in Asia and can work with our clients to manage risk and achieve more commercial outcomes We have a detailed understanding of the IP needs of companies across a wide range of industries including FMCG, telecommunications and IT, pharmaceuticals, media, sports, entertainment and leisure, property and financial services We can support IP-specific transactions of a regulatory, finance, or M&A nature anywhere throughout Asia and the rest of the world Our experience is multi-jurisdictional and enables us to deliver forward thinking and value-added solutions to our clients Our partnership structure makes us a highly accessible provider of global legal services we can consistently provide greater value for money than our genuine competitors Our IP team is prepared to invest its skills and time to develop a long-term business relationship with you our aim is to become business partners with you, adding value to your operations and helping you safeguard and develop product markets and revenues We can offer you a dedicated IP team that is truly passionate about what it does 03
4 Our Intellectual Property Services Our Asia Intellectual Property practice is part of our fully integrated and global Intellectual Property and Technology Group which is made up of specialist technology, telecommunications, media, sport, intellectual property and commercial lawyers. With more than 400 specialist lawyers including 80 partners, the group is recognised by its peers and by industry as one of the leading specialist groups of its kind. We have an unrivalled understanding of the converging technology, media and communications sectors. Our Intellectual Property and Technology Group offers clients a full service IP capability and with offices throughout Asia, Europe, the Middle East and the United States we have the geographic footprint our clients require, be they local, national or multinational. Our clients include some of the world s leading technology, communications, multinational media and entertainment companies, owners of well-known international brands and patents, sports governing bodies, internet service providers, e-business enterprises, government departments, regulatory authorities and major financial institutions. Specifically, our IP expertise in Asia covers: Trade marks Patents Copyright Registered and unregistered design rights Domain names Passing off and unfair competition Trade secrets and confidential information Advertising law We have a holistic approach to our practice in each of these areas of IP law, because we see our role as trusted advisers to our clients at all stages of the IP life cycle, from registration to commercialisation and enforcement. 04 Understanding Intellectual Property
5 Registration and Protection A valuable IP portfolio is only as strong as its foundations. We provide a full range of services covering trade marks, copyright, designs, patents and domain names across Asia either directly, or through our co-ordinated network of group firms and specialist IP agents. We provide proactive, strategic advice on IP protectability. We understand the importance of establishing and maintaining strong, well defended brands. Whether you are investing into, or outside, Asia, we can support and provide seamless protection and related advice for your IP portfolios throughout the region and also globally. In particular, the breadth of our trade marks practice enables us to execute worldwide filing strategies advice on complex transactional arrangements and cross-border disputes. Our Asia IP team members are experienced in managing IP portfolios for large companies throughout the region. Successful management of IP rights in Asia requires a specialised understanding of local laws and practices and effective communication with governments and administrative authorities. Where necessary, we work with local counsel to ensure that our clients receive the seamless, sophisticated and commercially sensitive advice they require. Our expertise includes: IP strategy and counselling IP mark filing strategies IP watch services Searching, clearance and freedom to operate opinions Prosecution applications for registration of trade marks, copyright, patents, designs and domain names Merchandising, advertising and packaging advice 05
6 Exploitation and Commercialisation We understand that our clients ability to leverage the commercial opportunities that flow from IP ownership is essential in creating and building value in their IP assets. We help clients maximise the value of their IP rights and work together with them to manage exposure, risk and revenue from their effective exploitation. The success of consumer brands and businesses in Asia today is dependent on emerging, yet complex networks of distribution and franchise relationships. Of necessity, these networks operate in both a traditional retail context as well as in e-commerce arrangements. We offer expertise in the drafting and negotiation of agreements such as licences, franchise documents and distribution agreements to ensure that IP assets are being protected and effectively exploited on sound terms. We also provide M&A due diligence support to verify the nature of, and any risks associated with, valuable IP assets being acquired and post-completion support in transferring ownership and advising on licensing structures. Our expertise includes: Licensing in and out of IP Distribution, supply and franchise agreements Sponsorship, talent agreements and character licensing Domain name and website development Brand growth including IP audits and portfolio management IP due diligence in transactional matters 06 Understanding Intellectual Property
7 Understanding Intellectual Property Enforcement We understand the importance of establishing and maintaining strong, well-defended IP rights. Asia has a number of major hubs for import and export and the transshipment of goods worldwide. Counterfeiting and piracy activities in Asia are at internationally unacceptable levels and are increasing. We provide advice on all aspects of infringement including the establishment and delivery of effective enforcement strategies using our in-depth knowledge of the local legal, governmental and administrative framework within which any action must be taken. In Asia these enforcement strategies primarily include criminal and civil proceedings, administrative actions and ensuring effective border protection measures are in place with the Customs and Ports authorities. The strength of our global network and the depth of our experience makes us trusted advisers on multi-jurisdictional IP disputes. We pride ourselves on our commercially focused approach to IP dispute resolution. We are creative can do lawyers with vast experience across all forms of regional and international IP dispute resolution, including litigation, arbitration and mediation. Where possible, we work with mutual clients to resolve disputes on a commercial basis. As a truly global legal services organisation, DLA Piper is well positioned to assist multinational companies with their IP enforcement needs across Asia. Our expertise: Administrative action involving authorities such as the Police, Customs and AICs IP infringement litigation IP attachment applications Trade mark opposition and cancellation actions Patent invalidity proceedings Criminal investigations Regulatory investigations Unfair/illegal competition and breach of consumer protection laws 07
8 Experience throughout Asia Our clients highly prize our local and global IP experience. The experience we offer you will not be academic entries on a deals list but that which has been derived by our lawyers located directly in the region ready to work side by side with you on a daily basis. In the field of IP, experience and expertise are everything. Our clients are rightly insisting they have access to world class IP counsel based in Asia who not only understand the local IP environment but also the global IP environment. We recognise that the experience we can offer you is only as meaningful as our ability to apply it to your assignment. Our operational mandate involves pooling together all of our regional (and international) IP expertise and then focusing it on your assignment. This insight and understanding, combined with our international capabilities, allow us to provide clients, both in Asia or seeking to invest in Asia, with an unbeatable service. We can provide you with comprehensive details of our experience that demonstrates that our lawyers have a proven track record of providing the highest quality IP services. 08 Understanding Intellectual Property
9 Your key contact Edward Chatterton Partner (Foreign Legal Consultant) & Head of IP, Asia 17th Floor, Edinburgh Tower The Landmark 15 Queen s Road Central Hong Kong T edward.chatterton@dlapiper.com If you have finished with this document, please pass it on to other interested parties or recycle it, thank you. This publication is a general overview and discussion of the subjects dealt with. It should not be used as a substitute for taking legal advice in any specific situation. DLA Piper hong kong accepts no responsibility for any actions taken or not taken in reliance on it. If you would like further advice, please call us on T DLA Piper is a global law firm operating through various separate and distinct legal entities. Further details of these entities can be found at A list of offices can be found at In the People s Republic of China, we are restricted for regulatory reasons (as are all international law firms) from practising local law. This means we work with local law firms if a matter needs advice on local law (e.g. the production of local law legal opinions). In Singapore, we are restricted for regulatory reasons (as are most international/foreign registered law firms) from practising local law. This means that if a matter needs advice on any Singapore law issues we will arrange for this advice to be provided and issued by a separate local law firm. Copyright 2011 DLA Piper. All rights reserved. JUN IPT Tech
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