Jerry Xia

Practice Areas

Intellectual Property

Technology Transactions

Dispute Resolution

Merger & Acquisition

Regulatory Compliance

Policy Advocacy

Career

· Partner, AnJie Broad Law Firm

· Deputy General Counsel & Chief IP Counsel, APAC, Honeywell

· Associate, Baker & McKenzie

· Legal Manager, Datang Mobile

· Legal Consultant, Sino-EU Technology Transfer Center

Publications

• Get The Deal Through (GTDT) - China and Global Trade Secret Guide, 2020-2023 published by Lexology

• CHINA: Heavier Penalties for IP Crimes, published by INTA Bulletin on March 3, 2021

• Trademark litigation forum shopping in China: what data tells us? Published by the World Trademark Review in July 2020

• China Patent: Assessing the Implications of US China Phase One Trade Deal，by Managing IP, 2020.3

• Companies should attach importance to IP compliance，publish by China Business Law Journal, 2019.2.22

• China Amends Technology Transfer Regulations Amidst Trade Disputes, by Managing IP, 2019.5.23

Personal

Mr. Jerry Xia is the managing partner of GEN Law’s Shanghai Office and splits time between China and the US. With more than 20 years of legal experience (both private and in-house), his practice focuses on providing strategic advices to international and domestic clients on a broad range of legal issues relating to intellectual property protection (both contentious and non-contentious), brand licensing & technology transactions, commercial dispute resolution, regulatory compliance, government affairs, etc. Before returning to private practice, Mr. Xia served as Honeywell’s Deputy General Counsel and Chief IP Counsel in Asia Pacific for almost a decade.

Among others, Mr. Xia is particularly known for his expertise and achievement in IP enforcement and litigation. He has handled numerous award-winning IP lawsuits in China, including e.g. history-making preliminary injunctions in patent infringement litigation, a landmark trademark retrial win before the Chinese Supreme Court, a unique design of an industrial product obtaining trade dress protection under unfair competition law, and a pioneering criminal conviction of a trade secret stealer based on the remedial cost incurred by the owner.

Mr. Xia frequently speaks at international conferences organized by the World IP Organization (WIPO), the China National IP Administration (CNIPA) & local IP offices, the US Patent & Trademark Office (USPTO) as well as world leading universities and research institutes and publish professional articles.

Mr. Xia is widely recognized in the industry. As one of the IP experts in the industrial and information technology field selected by the Chinese Ministry of Industry and Information Technology (MIIT), he has received numerous awards, including “Global In-house Counsel of the Year” and the “Asia Pacific IP Individual of the Year”. He is also listed on “China Client Choice” by Asian Legal Business (ALB), “A-List: Top 100 Legal Elites in China” by the China Business Law Journal (CBLJ) and the “World’s Top 300 IP Strategists” by the Intellectual Asset Management (IAM) magazine.

Professional Memberships

Shanghai IP Protection Center – Recognized Expert for Overseas IP Disputes Resolution

Jiangsu Provincial IP Protection Center – Recognized Expert for Overseas IP Disputes Resolution

Zhejiang Provincial Administration for Market Regulation – Recognized Trade Secret Protection Expert

Shenzhen IP Protection Center – Recognized Expert for Overseas IP Disputes Resolution

Ningbo IP Protection Center - Recognized Expert for Overseas IP Disputes Resolution

China Behavior Law Association 2017 – Present: Expert Committee Member and Guest Professor

Oriental Intellectual Property Club (OIPC) 2018 – Present: Vice Chairman

Peking University Law School IP Alumni Association 2016 – Present: Deputy Secretariat

China Business Law Journal (www.cblj.com) 2016 – Present: Editorial Board Member

National IP Training Base (Wenzhou) and Wenzhou IP School 2015 – Present: Guest Professor

Shanghai University School of Law / IP 2019- Present: Guest Researcher

Southwestern University of Finance and Economy, Guest Researcher, since 2019

Beijing University of Chemical Technology IP Alumni Association 2018 – Present: Vice President

Peking University – Tsinghua University Shanghai IP Alumni Club 2011 – Present: Founder & Standing Committee Member

Shanghai Lishui Chamber of Commerce, Legal Consultant, since 2019

Experience

Helped a leading US agricultural sciences company obtain a historic pre-suit preliminary injunction against a local infringer for patent infringement in China

Represented a leading energy company in successfully prosecuting a trade secret stealer under criminal law based on remedial cost incurred by the right holder (first of its kind even before the US-China Phase One Trade Agreement and the subsequent judicial interpretations by the SPC codified the same rule)

Helped US and EU clients successfully get back a patent stolen by its former employee with an unprecedented damage award

Helped a leading Fortune 500 MNE obtain a history-making preliminary injunction against a local infringer for a chemical process patent

Helped a major US company in civil actions successfully obtain a preliminary injunction against a former employee taking away trade secrets without approval

Represented Douyu v. Panda in an unfair competition lawsuit successfully forcing the plaintiff to dismiss the case

Helped Honeywell win the ever first defensive patent lawsuit in Japan

Honeywell's patent invalidation cases recognized Top 10 Cases of the Year by the Patent Review Board of the China IP Administration

Helped Honeywell win a landmark trademark retrial before the PRC Supreme Court and a trademark infringement case with a damages award of RMB3.5M (exceeding the maximum statutory damages under the old trademark law before 2019)

Honeywell v. Shangchen (2018) - unique design of an industrial product enjoyed trade dress protection without design patent

Honeywell v. Zhoudian (2016) - an unprecedented case where an infringer’s affiliate was held jointly liable for damages under the “pierce the corporate veil” doctrine

Honeywell v. Huafeng (2008) – Top 10 IP Cases of the Year 2008 selected by the PRC Supreme Court; successful crack-down and criminal conviction of an international counterfeiting group of Honeywell “Bendix” brake pads

Handled the IP agreements involved in the C919 Big Aircraft project ($11B value in total) and the IP protection program for the related joint ventures on behalf of Honeywell

Handled the license of standard essential patents (SEP) between Datang, Huawei, ZTE and other companies relating to TD-SCDMA, the 3G telecom standard developed by China, and served as the co-chair of IPR group for the TD Industrial Alliance

Languages Spoken

English

Chinese

Education

Awards