Yanfeng Xiong

Industry Sector Expertise

Manufacturing & Industrials, Automotive, Transportation & Logistics, Optics & Instruments, Healthcare Tech, Clean Energy & Advanced Materials, Consumer Goods & Smart Tech, Computer and Network Technology, Communication, Artificial Intelligence and Big Data, Semiconductors and Microelectronics, Image Processing, Optoelectronic Technology, Electrical Engineering, Electronic Engineering

Practice Areas

Patent Application Consultation, Patent Search, Patent Mining, Patent Map, Patent Portfolio Planning, Patent Application Strategy Formulation, Patent Application Procedure Management, Drafting Patent Application Documents, Reporting and Responding to Office Action , Patent Administrative Reconsideration, Patent Reexamination, Patent Invalidation, Patent Administrative Litigation, Patent Infringement Litigation, Patent Civil Litigation, Third Party Opinions/Public Opinions, Patent Validity Analysis, Patent Infringement Analysis, Free to Operation Analysis (FTO), Administrative Investigation and Handling of Patent Infringement, Patent Ownership Disputes, Patent Maintenance, Patent Licensing/Assignment, Intellectual Property Strategy Consulting, Intellectual Property Protection Strategy, Intellectual Property Training, Intellectual Property Assignment, Intellectual Property Licensing, Intellectual Property Operation, Intellectual Property-Related Legal Advice, Intellectual Property Infringement Risk Assessment, Intellectual Property Infringement Analysis, Intellectual Property Infringement Investigation, Intellectual Property Due Diligence, Intellectual Property Contract Drafting and Review, Risk Management and Loss Control, Other Legal Matters Related to Intellectual Property, Preparing and Filing Patent Application (Including Domestic Patent Applications, PCT Applications and Foreign Patent Applications), Intellectual Property Contract Drafting and Review, Risk Management and Loss Control, Intellectual Property-Related Dispute Resolution, Negotiation, Mediation and Arbitration

Career

2002-2005, 2007-present China Patent Agent (HK) Ltd

Professional Memberships

Council Member of the Chinese Group of AIPPI, Member of All-China Patent Attorneys Association, Council Member of China Intellectual Property Society, Member of Licensing Executives Society China, Vice Chairman of ICC China Commission on Intellectual Property, Chairman of the Standing Committee Q224 （Enforcement） of the Chinese Group of AIPPI

Publications

Selected Publications：

- The book of "Research on the Costs and Strategies of Chinese Applicants Obtaining Patent Protection Overseas", Intellectual Property Press, April 2017

- Enforcement of Computer-Implemented Patents in China, Managing IP, August 2016

- Protection of software related inventions——"means for" limitations, China Patents and Trademark, May 2014

- Analysis on Beijing High Court's Guideline for Patent Infringement lawsuits, China IP Magazine, December 2013

- Study on the ex officio practice in Chinese patent reexamination, China Patents and Trademark, June 2013

- US and China, comparative study on "means-plus-function" limitations, China Patents and Trademark, April 2012

- Explanation and Analysis of the Supreme People Court's Judicial Interpretation of Several Issues Concerning Application, China Patents and Trademark, October 2009

- The Book of "100 milestone IP litigation cases in China", May 2009

Selected Presentations：

- Moderator, AI-related Patent Issues, AIPPI Trilateral Meeting, Tsingtao, China, July 2023

- Moderator, License Negotiation Strategy, CIPF, Shanghai, China, July 2021

- China Practice on SEPs, International Intellectual Property Business 2018 Forum, Beijing, China, September 2018

- Infringers Without Borders – Current Issues in Contributory Infringement, AIPPI, Milan, Italy, September 2016

- Updates on China Patent Practice, Nordic IPR Summit, Stockholm, Sweden, March 2014

- Chinese Recent Patent Development, IQPC Patent Global Congress, Copenhagen, Denmark, September 2013

- Chinese IP Litigation Statistics and Case Studies, IQPC Patent Global Congress, Copenhagen, Denmark, September 2012

Work Highlights

Mr. Xiong has extensive experience in handling both contentious and non-contentious IP matters. Particularly, Mr. Xiong represents Clients, ranging from startups to Fortune 500 companies, in their IP matters before the China Patent Office, the Patent Reexamination Board, the IP Courts, the High Courts, and the Supreme People Court and has achieved satisfactory records. A number of his cases have been selected as annual leading cases by the Chinese courts.

Representative IP Validity Cases:

- Successfully reversed lower decisions on the validity of an invention patent, specifically the patent inventiveness, at the Supreme People Court on behalf of a Fortune 500 MNC. The case is recognized by the Supreme People Court as one of the IP yearly cases.

- Successfully reversed lower decisions on validity of an invention patent, specifically concerning the new matter issue as per Article 33 of patent law, at the Beijing High Court on behalf of a European-based patent applicant. The case is recognized by the Beijing High Court as one of the IP yearly cases.

- Representing a Fortune 500 MNC in the telecommunications industry, Mr. Xiong has achieved high successful rate in several series of invalidation actions during the last decade before the Patent Reexamination Board, the Beijing IP Court, the Beijing High Court, and the Supreme People Court concerning standard essential patents in the telecommunications industry, among which a few cases are recognized by the courts as IP yearly cases.

Representative IP Enforcement Cases:

- Representing a Fortune 500 MNC plaintiff, successfully enforced a standard essential patent in telecommunication area in a multi-million level (USD) patent infringement case.

- Representing a Fortune 500 MNC defendant, successfully defended a multi-million level (USD) patent lawsuit concerning an invention patent before the Shanghai IPR Court.

- Representing a European-based plaintiff, succeeded in a patent contributory infringement case against a device component provider concerning an invention patent before the Beijing IPR Court and the Beijing High Court. The case is recognized as one of the Top 10 IP Protection Cases of the Beijing courts.

Experience

Mr. Xiong joined China Patent Agent (H.K.) Ltd in 2002. His practice focuses on patent prosecution, invalidation and litigations in the fields of electronics, telecommunications and mechanics fields. In particular, he has rich experience in handling Standard Essential Patent (SEP) litigation and invalidation for multinationals in telecommunication field. Mr. Xiong has satisfactory records at the Chinese courts as well as Patent Reexamination Board, and a number of his patent litigation cases were recognized by the Supreme People's Court and Beijing High Court as representative cases.

Mr. Xiong was invited to provide the Chinese courts, including the Supreme People's Court, with opinions regarding the judicial interpretation on patent related matters. He participated in AIPPI’s comparative studies on patent indirect infringement and patent non-obvious issues. He has more than 10 publications on various aspects of patent on magazines including Managing IP, China Patent and Trademark, and China IP Magazine.

Awards