PERSONAL SUMMARY:
Mr. Xiaofan Chen
joined Liu, Shen & Associates in 2008, and is mainly involved in patent
prosecution, litigation and client counseling work relating to patent rights.
His technical fields cover mechanical engineering and manufacturing, laser
imaging and printing technology, computer science, internet technology, and
business method etc. In addition to filing applications and securing patents on
behalf of large number of international clients before the SIPO, Mr. Chen also
assists some domestic applicants in securing their patent rights before some
major patent offices in other jurisdictions.
Mr. Chen has been
admitted for practice before the SIPO since 2006, and is one of the first
patent litigators officially
registered with the Supreme People’s Court of China. Apart from practice in
patent prosecution, Mr. Chen has successfully represented international and
domestic clients in winning some patent invalidation, patent infringement and
administrative cases. Moreover, Mr. Chen frequently provides clients with
opinions on patent validity search, patent infringement and freedom-to-operate
analysis, and advises on agreements for transferring or licensing patents,
non-disclosure agreements and commercial aspects of patent rights.
Mr. Chen graduated
in 1994 from Xi’an University of Technology (Institute of Printing and
Packaging Engineering) with a B.Eng. degree, and subsequently obtained a Master
degree in Publishing Studies from University of Stirling (UK) and a LL.M.
degree (IP Law) from The University of Edinburgh (UK). Mr. Chen also studied a
Graduate Diploma in Common Law (GDL) in 2008 in The College of Law of England
and Wales (York). Before joining Liu, Shen & Associates, Mr. Chen worked
with another top-tier IP law firm in China for several years, and also worked
in the Beijing Office of a US based laser imaging technology supplier as a
technical specialist.
HIGHLIGHTS:
Recent typical
cases:
- Representing
a US company of projection imaging technology in winning a patent invalidation
case and the subsequent administration case relating to the validity of an invention
patent of the company;
- Successfully
defending a Canadian sport equipments manufacturer in an infringement
litigation case raised by a Chinese competitor;
- Representing
a European MNC of water environment technology in winning a patent invalidation
case against a utility model patent of a Chinese infringer.
Publications
“An Analysis of
Prior Art Defense: In View of the Latest Judicial Interpretation”
(Paper of
Excellence presented at the First IP Forum of All-China Patent Agents
Association held in Beijing in Year 2010)
“Legislation
Arising from Landmark Cases: A Review of Copyright Protection in Context of
Internet”, China Internet, April 2004.
Book Translation: Intellectual Property Strategy,
Chongqing University Press, November 2015.
Green Light for Business Method Patents, CHINA IP FOCUS 2017,
MIP
WORKING LANGUAGE:
Chinese,English
MEMBERSHIP:
All-China Patent Agents Association (ACPAA)
Member of Experts Consulting Committee of IP Case Law Guidance and
Studies Center (Beijing) of the Supreme People's Court