LIU SHEN & ASSOCIATES

SHAO,Yali

Partner | Patent Attorney | Attorney at Law

TECHNICAL FIELD:

Telecommunication , Computer Science , Internet Technology , E-commerce , Artificial Intelligence , Electrical Engineering , Electronics Engineering

TEL: 86-10-6268 1616

FAX: 86-10-6268 1818

EMAIL: ylshao@liu-shen.com

PERSONAL SUMMARY:

Ms. Yali SHAO is a partner at Liu, Shen & Associates. She is also double qualified as patent attorney and attorney at law with years of experiences. She joined in the firm in 1997 and mainly specializes in patent prosecution, re-examination, patent invalidation, patent licensing, IP litigation, and client counseling with a focus on electrical engineering, automatic control, telecommunication, electronics, computer science, the internet, business methods, big data, and artificial intelligence.


Ms. Shao also leads various legal service projects and legal research, including:

·     Patent Analysis Services: including patent infringement analysis, patent searches, and invalidation possibility analysis;

·     Patent Licensing Services: including SEP (Standard Essential Patent) licensing under the FRAND (Fair, Reasonable, and Non-Discriminatory) framework, and various non-SEP licensing services;

·     Patent Protection Research: including patent protection research in specific technical fields such as artificial intelligence (AI), Internet of Things (IoT), 2G/3G/4G/5G telecommunication standard technologies, Wi-Fi standard technology, and audio/video codec technology;

·     Patent Legal Research: various researches on patent law and related regulations, with suggestions for law and regulations amendments.


Ms. SHAO had a master's degree in automation from Beijing Jiaotong University in 1995. Before joining this firm, Ms. SHAO worked as a teacher at Beijing Institute of Technology for two years. She received training from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington D. C. in 2004.

HIGHLIGHTS:

Representative cases that Ms. Shao handled or participated:

-     2023-2024, representing a major foreign company in patent licensing negotiations and related disputes with a major Chinese company, involving patent screening and analysis, and a series of patent invalidation cases;

-     2020-2023, representing a major foreign company in patent licensing negotiations and related disputes with several major Chinese companies, involving patent screening and analysis, litigation strategy analysis, licensing fee and FRAND dispute analysis, etc.;

-     2016-2019, leading the team representing Samsung Electronics in a series of litigation and invalidation cases against Huawei, involving the determination of standard essential patent (SEP) infringement, calculation of SEP patent licensing fees, FRAND determination, and issues of injunctions for SEP and non-SEP patents;

-     In the patent infringement case of Wang Jianbo v. Microsoft (China), representing Microsoft in patent invalidation, the case finally settled with the plaintiff Wang’s withdrawal of his lawsuit;

-     In the patent invalidation case of Chint v. Schneider, representing Schneider and winning the final judgment in the Beijing High Court.


Representative Articles authored/co-authored by Ms. Shao include:

-     "SEP Licensing Negotiation Framework and Litigation Strategy in the Automotive Industry," Co-author, Liu Shen Newsletter, May 2023;

-     “SEP related Patent Litigation and Invalidation Strategy Analysis,” First author, IPLEAD, November 2023;

-     “Protecting AI-related Innovations in China,” Co-author, Managing IP, Summer 2020;

-     “Building Global High-value Patent Portfolios, - From China to the World (Part I & II),” China Patent Agency, Issues 1 & 2, 2019;

-     “Best drafting practices for background section of patent applications,” Intellectual Asset Management (IAM), August 2017;

-     “Import and Export of Inventions,” Managing IP, China IP Focus 2012;

-     “Drafting Best Functional Technical Features in China”, Asia IP, April 2016;

-     “Latest Patent Law Changes Analyzed,” Managing IP, Asia-Pacific Focus 2007;

-     “Software-related inventions,” Managing IP, Asia-Pacific Focus 2008;

-     “Patentability of Inventions Concerning Business Methods,” China Patent Agency, Issue 1, 2006;

-     “Patentability of Inventions Concerning Computer Programs,” China Patent Agency, Issue 4, 2005.


Representative Speeches made by Ms. Shao include:

-     “Obtaining Strong Patents Internationally – from China to the World”, CPAC-AIPPI Session, August 2018, Beijing;

-     “Patentability of Business Method related Inventions in China,” All-China Patent Agents Association (ACPAA) and the Chartered Institute of Patent Attorneys (CIPA) Joint Meeting, November 2017, Beijing;

-     “What’s the (technical) problem?”, AIPPI World Congress 2017, October 2017, Sydney.


Representative Researches led and participated by Ms. Shao include:

-     A series articles on SEP (9 articles in total), 2023;

-     Report on Intellectual Property Protection for Artificial Intelligence (in Chinese and English), 2021;

-     Report on Intellectual Property Protection for Artificial Intelligence, 2019;

WORKING LANGUAGE:

Chinese,English

MEMBERSHIP:

Member of All-China Lawyers Association (ACLA)

Member of All-China Patent Agents Association (ACPAA)

Patent Committee member & Programme Committee member at Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)

President of Patent Committee at AIPPI China Group