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.
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;