Firm / Organisation

LexField Law Offices

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This content is provided by LexField Law Offices.

Managing Partners: Jan Liu, Hongyi Jiang
IP professionals: 84 (including lawyers, patent agents, IP specialists and patent engineers)
Number of lawyers: 33  
Number of partners: 14  
Number of counsels: 3
Languages: Chinese, English, Japanese

Firm Overview:
LexField is a Beijing-based law firm focused on intellectual property, with diversified clients from the US, Europe, Japan, China and other jurisdictions in a broad array of industries. Over the years since its inception in 2004, the firm has earned deep respect and trust from clients for its steady services and stellar results delivered, a good example being the preliminary injunctions it obtained in China for Qualcomm against Apple in their global patent wars.

Practice Areas:
Trademark Prosecution & Portfolio Management
Trademark Enforcement & Dispute Resolution
Patent Prosecution & Portfolio Management
Patent Enforcement & Dispute Resolution
IP Litigation
IP Licensing & Transaction
Copyright
Anti-Unfair Competition & Antitrust
Regulatory & Compliance
Other Intellectual Property Legal Services

Main Areas of Practice:

Intellectual Property:

Trademark Prosecution & Enforcement:
6 partners, 42 professionals based in Beijing
Impressive work:
■ The firm obtained well-known recognition for three trademarks owned by foreign clients in 2018, including one B2B brand
■ The firm keeps the record of a high win rate for oppositions and invalidations for international clients, successfully persuaded TRAB with arguments, and achieved a breakthrough in persuading TRAB to transcend its normal criterion on similarity of goods/services to make protection across classes and to restrain bad-faith trademark squatting
■ The firm has successfully claimed copyrights in invalidation cases to prevent third parties form pirating device marks or stylised word marks on dissimilar goods, and formulated an efficient strategy of using prior copyrights to prevent simulation of device marks on any goods or services
Key Clients: Over ten multinationals from USA, Europe and Japan and about 200 various medium-sized and startup companies worldwide
Contact: Jan Liu
Email: [email protected] IP Litigation &

Dispute Resolution:

6 partners, 26 professionals based in Beijing
Impressive work:
■ The firm has successfully secured preliminary injunctions for Qualcomm against Apple for distribution of certain models of iPhones in China
■ The firm has handled and won 4 patent infringement lawsuits where the court awarded damages over RMB 20 million
■ By the end of 2016, the firm has won more than 30 IP second-instance or retrial suits before the Supreme People’s Court
■ Three cases handled by the firm were listed by the Supreme People’s Court as the Chinese Top 10 IP Lawsuits of the Year in multiple years
■ The firm won 5 landmark cases before the Supreme People’s Court which helped define basic patent infringement determination doctrines
■ The firm has been deeply involved in many SEP or NEP patent infringement cases in the telecommunication industry in the last two years, including Qualcomm v. Apple, Huawei v. Samsung, Nokia v. Apple, and several other high-profile disputes
■ Lawyers were frequently invited to participate in the drafting and discussion of new judicial interpretations by the Supreme People’s Court and patent infringement determination guidelines by the Beijing Higher People’s Court
Key Clients: 20 multinational companies from USA, Europe and Japan, and over 150 small and medium-sized companies from China, USA, Europe and Japan
Contact: Hongyi Jiang
Email: [email protected]

Patent Prosecution:
2 partners, 16 professionals based in Beijing
Impressive work:
■ By presenting rigorous analyses on inventiveness, particularly on why the prior arts cited by examiners could not be readily combined or persons in the art would not be motivated to perform the combination, the firm persuaded examiners to withdraw inventiveness rejections against applications of various clients and secured allowances of the applications
■ The firm proactively devised localised strategy to restructure Chinese design patent applications based on drawings filed for US or European priority applications for the maximum protection scope
■ The firm took over a patent application of a Scottish client facing difficult inventiveness rejections in the health supplements industry, and brought the application to allowance through careful amendments to the claims (which are not unreasonable concession of scope), negotiation with the examiner and restructuring supplemental experiment data
■ The firm helped two US clients block the grant of patent applications filed by their competitors by filing opposition arguments
■ The firm helped two domestic companies, one in online gaming and digital entertainment industry and one in Internet/software industry, establish internal invention mining and disclosure policies, perform industry patent landscaping and draft new patent applications
Key Clients: Over 12 multinational companies from USA, Europe and Japan and various medium-sized and startup clients inside and outside China
Contact: David Huang
Email: [email protected]