Mr. Zhang began his legal career in2003 inSIPO and joined Liu, Shen & Associates in
October 2013.
Mr. Zhang specializes in patent (including invention, utility model and
design) prosecution, invalidation, litigation and counseling, including
infringement, validity and FTO analysis in the technical fields of Biotechnology;
Pharmaceuticals; Life Sciences; Chemistry; and medical devices.
Mr. Zhang worked in the Pharmaceutical and Biotechnology Appeal
Division of the Patent Reexamination Board (PRB) from 2007 to May 2013. He
served as the chairman of a panel over 5 years, handled a number of important
invalidation and reexamination cases including one case chosen to be the Top 10
IP cases of China courts in 2016, and two cases chosen to be the Top 10 cases
of PRB in 2010 and 2012. He represented the PRB in patent administrative
litigation before Beijing courts, and provided legal and technical expert
counseling relating to patent infringement. After joining Liu, Shen &
Associates, he takes charge of the cases finally rejected or entering into the
reexamination procedure, and several invalidation and litigation cases.
Mr. Zhang received his bachelor degree and master degree in Cell
Biology fromNanjingNormalUniversityin 2000 and 2003. He finished the postgraduate diploma programmes from China
University of Political Science and Law.
He received training from John Marshall Law School in 2009, and AIA
practice training from Scully, Scott, Murphy & Presser, P.C. in 2016.
Representative cases that Mr. Zhang has led or
participated include
- Novozymes vs.
Shandong Longda Bio-products Co., Ltd. for patent invalidation dispute. One of
the Top 10 IP cases of China courts in 2016 and one of the Top 10 cases of PRB
in 2012. Presiding member of the panel representing the PRB, making the
invalidation decision, which maintained the validity of technical solutions
defined by structure, sequence homology and source, and winning the suit in the
Supreme Court. (2016) Zuigaofa Xing Zai No. 86.
- Rohm & Haas v. Cabot Microelectronics, invalidation,
involving a Chemical Mechanical Polishing composition. On behalf of patentee
maintaining the validity of the patent right.
- Total Petrochemicals v. Versalis, invalidation,
involving a foamed material. On behalf of petitioner invaliding the patent
right in whole.
- Arkema v. Chemours
Company for patent invalidation dispute (ZL200980116200.0). On behalf of petitioner invaliding the patent right in whole.
- Tianhepeng vs.
Unilever for patent invalidation dispute (ZL200580031702.5). On behalf of petitioner
invaliding the patent right in whole.
- Tianjin Super
Biotechnology Developing Co., Ltd vs. Academia Sinica for patent invalidation
dispute (ZL200480040177.9). On behalf of patentee maintaining the validity of
the patent right.
- Xi ZHANG vs. ALIBABA
Group Holding Ltd for patent invalidation dispute (ZL201620847681.X). On behalf
of petitioner invaliding the patent right in whole.
- Contec vs. ChoiceMMed
for patent invalidation dispute. On behalf of petitioner invaliding the patent right in whole.
- Jianqiao Medicine Dev
Co., Ltd vs. Beijing Holleycotec Medicine Co., Ltd. for patent invalidation
dispute. One of the Top 10 cases of PRB in 2010. Presiding member of the panel,
representing the PRB in patent administrative litigation before Beijing courts,
and winning the suit. (2010) Gao Xing Zhong Zi No. 14.
- Guangzhou Welman
Pharma Co., Ltd vs. PRB for patent invalidation dispute. Presiding examiner of
the panel making the decision and winning the suit in the Supreme Court. (2012)
Zhi Xing Zi No. 5.
- Guangzhou Welman
Pharma Co., Ltd vs. PRB for patent invalidation dispute. Presiding examiner of
the panel making the decision and winning the suit. (2011) Gao Xing Zhong Zi
No. 299.
- Ipsen pharma Biotech
vs. PRB for patent invalidation dispute. Presiding examiner of the panel making
the decision and winning the suit. (2010) Gao Xing Zhong Zi No. 301.
- Merck vs. Hangzhou
Minsheng Pharma for patent invalidation dispute. Presiding examiner of the
panel making the decision and winning the suit. (2008) Gao Xing Zhong Zi No.
524.
- Due Diligence regarding the patent applications of one
Biotech company in Wuhan.
- Due Diligence regarding the product and patent (including
patent applications) of one Medical Device company in Shanghai.
- Due Diligence regarding the product and patent (including
patent applications) of one Biotech Pharma company in Shanghai.
- Due Diligence regarding the ownership of patent (including
patent applications) of one Biotech Pharma company in Hangzhou.
- Due Diligence regarding the product and patent (including
patent applications) of one Medical Material company in Qinghuangdao.
- FTO analysis of Stora Enso.
- FTO analysis of Total Group.
- Arkema France v. Chemours, invalidation, involving a
refrigerant.
- Celanese v. Daicel, invalidation, involving acetic
acid preparation method.
- Arkema France v. Honeywell, invalidation, involving a
refrigerant.
- EA pharmaceutical co., LTD v. PRB, administrative
litigation, involving a composition.
Publications that Mr. Zhang has authored include
- “China’s Antibody Patent Examination Standards
and Reasonable Applicable Proposals in Conjunction with Industry Status”,
Chapter 21, p319-341, Biotechnology inHong Kong(Volume II), December 2014.
- 杭州民生药业集团有限公司请求宣告默沙东公司(美国)发明专利无效纠纷案—关于“创造性判断中技术启示”问题的典型案例》,专利名案解读(二)-20起典型专利纠纷案例评析,知识产权出版社,2011年4月.
- 《医药生物领域复审和无效典型案例评析》,编委,知识产权出版社,2014年11月.
- 《权利要求得不到说明书支持—味之素相关赖氨酸专利被宣告无效》,《中国医药报》专利商战风云录栏目,2011年5月.