Spring 2010 Eye on China Newsletter

With unprecedented growth in and influence over the global market — coupled with an ever-evolving legal landscape — China presents as much complexity as opportunity. With internationally recognized IP capabilities and extensive hands-on experience in the Chinese business market, Foley is well positioned to provide legal insight to U.S., Asian, and European companies preparing to do or doing business in China. Moreover, China’s fast-growing industries and businesses are seeking to expand their international reach. With more than 160 years of experience, 18 offices in the United States, and a network of international partners, Foley is equally well positioned to assist Chinese companies as they expand globally.

We are pleased to offer Foley Legal News: China Quarterly Newsletter, Eye on China, designed to offer companies helpful insight as they successfully navigate China’s complex and ever-changing legal and regulatory environment.

• East Meets West — Current Topics in the United States 
• West Meets East — Current Topics in China 
• Staying Connected 

Current Topics

East Meets West — Current Topics in the United States

• U.S. District Court Forums for Patent Litigation: How Plaintiffs Choose and Defendants Move (Part 2 of 2), by Mary Calkins, Foley & Lardner LLP
  
  If you have been sued as the defendant in a patent action in the United States, then the plaintiff has already chosen the district court for you. This article details options available to transfer the litigation to a different district when someone brings a patent action against you in a district that is undesirable to you. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6947
• Trademark Clearance Practice in the United States, by Diane Grace Elder, Foley & Lardner LLP
  
  Prior to the adoption and use of a trademark in any jurisdiction, it is vital that appropriate trademark clearance be conducted to determine whether a mark is available for use and registration. This article outlines some trademark clearance best practices in the United States. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6949
• Eight Simple Way to Improve Your U.S. Patent Application (While Also Reducing Your Costs), by Marshall J. Brown, Foley & Lardner LLP
  
  Due to differences in patent laws between the United States and other countries, claims from a foreign priority application are often not optimally suited for the United States. This article discusses a number of simple things that can be done to make foreign priority patent claims more in accordance with U.S. practice, while also potentially saving money in the process. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6951

West Meets East — Current Topics in China

• The Hong Kong Patent: To File or Not to File, by Marshall J. Brown and Yan Zhao, Foley & Lardner LLP
  
  When companies evaluate whether to pursue patent protection in individual countries, the issue of patent protection in Hong Kong is often a source of particular confusion. This article examines some of the potential benefits and drawbacks to filing in Hong Kong as well as some practical considerations that can be taken into account when deciding whether Hong Kong patent protection is necessary and/or desirable. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6953
• Proactive and Pragmatic Strategies Against NPEs, by Michael D. Kaminski and Vid S. Mohan-Ram, Foley & Lardner LLP
  
  Non-practicing entities (NPEs) — companies that do not practice the technology in their own patents but aggressively assert their patent rights against others — can create many difficulties for companies that provide goods and services in similar technological areas. This article provides a number of suggestions for proactively dealing with such NPEs. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6955
• Trademark Considerations for U.S. Trademark Owners Working With Chinese Manufacturers or Distributors, by Danielle T. Brink, Foley & Lardner LLP
  
  Trademark ownership disputes between dealers and their Chinese manufacturers and/or distributors often present difficult problems. This article explores strategies U.S. companies can employ to protect their trademarks under Chinese law, both before and after the termination of their relationship with Chinese manufacturers or distributors. View full article: http://www.foley.com/publications/pub_detail.aspx?pubid=6957

Staying Connected

Please Join Us — Future Events
Foley’s Global Marketplace: Eye on China series programs are designed to offer companies helpful insight as they successfully navigate China’s complex and ever-changing legal and regulatory environment. Upcoming events include:

• Eye on China: Workshop Series, Building Company Value Through Global Partnership
  We are proud to sponsor and host ChinaBio’s 2010 Executive Workshop, which will address critical topics for life sciences executives, entrepreneurs, and investors wishing to leverage global partnerships to help fund the growth of their companies. Learn how to secure and manage global partners, raise funding, and generate global intellectual property rights from speakers who have successfully put their principles into practice.
  
  When: Wednesday, April 14, 2010
  Where: Guangzhou, China
  View Event Page or Register: http://www.foley.com/news/event_detail.aspx?eventid=3246

In Case You Missed It — Recent Events and Activities

• Eye on China: Workshop Series, Recent Developments in the IP Landscapes of China and the U.S.
  Foley was again pound to sponsor Asialaw’s 7^th Annual Asia-Pacific In-house Counsel Summit as the exclusive presenter of the China IP Workshop. The workshop, held on March 16, 2010 in Hong Kong, featured an interactive panel discussion of hot topics related to IP protection and enforcement in both China and the United Sates. Foley Asia Practice Chair Catherine Sun moderated the discussion. She was joined by Jon Dudas, Foley Partner and former Under Secretary of Commence for Intellectual Property and Director of the USPTO, Steve Rizzi, Foley China Practice Chair, and Yan Zhao, Foley IP Senior Counsel as presenters.
  
  When: Wednesday, March 16, 2010
  Where: Hong Kong, China
  View Event Page and Presentation Materials: http://www.foley.com/news/event_detail.aspx?eventid=3220

Legal News: China Quarterly Newsletter, Eye on China is part of our ongoing commitment to providing legal insight to our clients and our colleagues preparing to do or doing business in China. If you have any questions about this publication or would like to discuss the topics presented here, please contact your Foley attorney or the following:

Steven J. Rizzi
Chair, China Practice
New York, New York
212.338.3543
[email protected]

Catherine Sun
Office Managing Partner, Shanghai
Chair, Asia Practice
Shanghai, China
86 21 6100 8900
[email protected]

James F. Ewing
Vice Chair, Chemical, Biotechnology & Pharmaceutical Practice
Boston, Massachusetts
617.342.4088
[email protected]

Yan Zhao
Senior Counsel, Intellectual Property Department
Shanghai, China
86 21 6100 8900
[email protected]

Foley & Lardner LLP is licensed to operate in China as a foreign law firm. Under Ministry of Justice regulations, foreign law firms in China are permitted to advise clients on certain aspects of international transactions and to provide consultation concerning the impact of the Chinese legal and regulatory environment; foreign law firms in China are not permitted to practice Chinese law. The content of this communication does not constitute an opinion on Chinese law nor does it constitute legal advice, but is based on our research and our experience advising clients on international business transactions in China.