Beijing
Patent
Mechanical Engineering,Material Science,Semiconductor
Chinese,English
Allen Tao is an attorney at law and patent attorney in China, and a partner at the law firm of Liu, Shen & Associates.
Mr. TAO specializes in patent invalidation, litigation and dispute resolutions before administrative agencies and the courts, and counseling on IP strategies and patent clearance search. He also specialized in patent prosecution works on material, semiconductor, display, and mechanical engineering. Since 1998, he has handled dozens of patent related proceedings before the Courts and some cases relating to trademarks, trade secrets, and copyright issues. Mr. TAO has represented a number of multi-national corporations for litigation cases to defense and enforce their IPs in China. Mr. TAO also specialized in contractual issues, licensing, and other IP related issues for the foreign companies’ business in China.
Mr. TAO received his bachelor degree and a master degree in material science and technology from University of Electronics Science and Technology of China (UESTC) in 1988 and 1991. He received professional training at the law firm in Germany in 1997 and further obtained a master of law degree (LLM) from The John Marshall Law School in the United States in 2001 and a master of law degree from Huazhong University of Science and Technology (HUST) in 2004. Mr. TAO had worked in a research institute for four years and then joined the law firm, Liu, Shen & Associates in 1995.
1.Esco v Fumei, patent and trademark infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stop infringement and pay damages to the plaintiff. (2008)
2. Staubli v Changshu Textile, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stop infringement and pay damages 0.66m. (2007)
3.Feng Yong v Microsoft, trade secret litigation, Wuhan Intermediate Court and Hubei High Court, representing the defendant. Wuhan Intermediate Court found no trade secret of the plaintiff and Hubei High Court mediated the case. (2003)
4.Dai Peijun v GE, utility model patent infringement litigation, Beijing No. 1 Intermediate Court, representing the defendant. The case was dismissed after the answer from the plaintiff. (2003)
5.Li Dan v Microsoft, patent infringement litigation, Beijing No. 1 Intermediate Court, representing the defendant. The case was dismissed after the answer from the plaintiff. (2003)
6.Kone v Suzhou Fujia Enke, patent infringement litigation, Suzhou IntermediateCourt, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008)
7.Kone v Zhejiang United, patent infringement, Hangzhou Intermediate Court, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008)
8.Siemens v Beijing Lida Huaxin, patent infringement litigation, Beijing No. 1 Intermediate Court, representing the plaintiff. The case was mediated before the court and the defendant pay damages RMB 4m. (2008)
9.Esco v Ningbo Fumei, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stops the infringement and pay damages. (2008)
10.Esco v Ningbo Huicheng, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stops the infringement and pay damages. (2008)
11.Esco v Tianjin Woda, patent infringement litigation, Tianjin Intermediate Court, representing the plaintiff. The court mediated the case and the defendant stops the infringement and pay damages. (2009)
12.Xu Shichang v. Samsung, patent infringement litigation, Shenzhen Court and Guangdong High Court, representing the defendant, successfully defending for no infringement. This case was designated as the Top 10 Intellectual Property Cases in Guangdong in 2012. (2012)
13.Staubli v. Changshu Textile, patent infringement litigation, Suzhou Court and Jiangsu High Court, representing the plaintiff. The court decided for patent infringement and the defendant was ordered for injunction and damages. This case was designated as the Top 10 Intellectual Property Cases in Jiangsu in 2013.
14.Goertek v. Knowles, patent infringement litigation, Weifang Court, representing the plaintiff. Damages RMB 37.2 million. (2014/4/22)
15.Author of book "Patent Reexamination & Invalidation Practice" (2013)
16.Author of paper "Amendment Rules after Grant of Patent" (2004)
17.Author of chapter "Indirect Infringement in China" of book "Patent Infringement Worldwide - Claim Interpretation - Infringement - Damages" Edited by Jan Bushche et al Carl Heymanns Verlag (2010)
18.Honored as 'Leading Patent Attorneys in China' by SIPO in 2014
Beijing
Patent
Mechanical Engineering
Chinese,English
Education:
Department of Mechanics and Engineering Science, Peking University, Master’s Degree of science, with major in Theoretical and Applied Mechanics
Department of Mechanics and Engineering Science, Peking University, Bachelor’s Degree of science, with major in Fluid Mechanics
China University of Political Science and Law, Civil, Commercial and Economic Law School, Study Program of Master’s Courses, major in Intellectual Property Law
Training:
Scully, Scott, Murphy & Presser, P.C., Summer training on US Patent Law and related, June 13~July 13, 2019
Qualification: Patent Attorney (2012);Attorney at Law (2017)
Ms. TAN began her legal career in patent laws and joined Liu Shen & Associates in June, 2011. She specializes in patent enforcement including patent prosecution, re-examination, patent validation and litigation in the technical field of Mechanical Engineering, Automotive Engineering, Medical Devices and so on. Ms. TAN’s services also include providing opinions and strategy consultations for corporations, and providing legal advice.
Before joining Liu Shen, Ms. TAN worked as a researcher on Natural Language Processing and Information Retrieval at Canon Information Technology (Beijing) Co. Ltd, specializing in algorithm study on multi-language Segmentation, Automatic Summarization, Keyword Extraction, Named Entity Recognition, Language models, Character Encoding Techniques and Recommendation System.
I. Civil and Administrative Litigations
Ms. Tan has been engaged in multiple patent infringement litigations and all results of the cases are good, including, typically, a series of infringement litigations of WAGO as the patentee, infringement litigation of KOBOTA as the patentee, which was selected to be one of "Ten Representative Cases of IP Litigations of Janpanese Cooperations in China within Three Years".
Ms. TAN has been also engaged in mutiple administrative litigations related to re-examination and invalidation cases. In an administrative litigation related to invalidation with KOBOTA as the patentee, the adverse results in the invalidation procedure and the first instance were reversed and the case finally won in the second instance in the supreme court.
II. Invalidation Cases
Ms. TAN has represented more than then invalidation cases and achieved good results in most of the cases, including multiple cases as to invention of KOBOTA, cases as to utility model of Leili group, cases (including a case in Taiwan) as to utility model of Conjoin, case as to invention of WAGO, case as invention of VALEO Schalter und Sensoren GmbH, etc.
III. Consultations
- IP Due Diligence to a before investing medical device company, sensing device company, as requested by a venture capital
- Project of constructing IP system for a well-known domestic enterprise L: patent mining, strategy for IP protection
- Project of patent patent portfolio for a well-known international enterprise: searching, strategy for filing, drafting applications
- Providing infringement studies for domestic and international companies, including battery, bump, vehicle parts, medical device, farm machinery, etc.
- Providing validity studies for domestic and international companies
- Providing FTO studies for domestic and international companies
- Software copyright registration/training
- Certification of Hi-tech enterprise
v. Publications
- "The Boundary Element Method (BEM) solving the water wave effect on the aerodynamics of a vehicle flying close to the water surface", Journal of Hydrodynamics, 2003.4, second author.
- “What are the advantages and pitfalls of administrative enforcement?” on Managing Intellectual Property –China IP Focus 2019
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Others
Be selected in the talent database for foreign matters of ACLA in 2021
Be selected in the expert database for IP protection of ACPAA
Beijing
Trademark
Chinese,English
Ms. Tian joined Liu, Shen & Associates in 2004 as trademark attorney and became a qualified attorney at law in 2006. Before joining Liu, Shen & Associates, Ms. Tian worked in Tax and Legal Service section of PriceWaterhouseCoopers Beijing Office and has been qualified as China CPA since 2001.
Her expertise includes providing full-range service on trademark prosecution, including availability search and analysis, filing, licensing, assignment, opposition, and invalidation; representing clients before courts in administration litigation on authorization and determination of trademark rights; counseling services in respect of trademark strategy and comprehensive trademark issues; as well as domain name dispute cases.
EDUCATION:
LLM, University of Sydney, Australia
B.A. of English Linguistics and Literature, Peking University
B.A. of Economics, Peking University
Typical Trademark opposition/invalidation & Litigation Cases
- Ms. Tian represented a renowned British company famous in designing and producing household electric appliances in hundreds of oppositions and invalidation actions, and successfully opposed/invalidated third parties’ trademarks designating dissimilar goods/services based on well-known status of client’s house mark. The said case series won the third place in the top ten outstanding cases of non-litigation trademark disputes selected by the Intellectual Property Professional Committee of the All China Lawyers Association in 2023.
- Ms. Tian represented a renowned French company famous in designing and producing outdoor sports/works gears in hundreds of oppositions, invalidation actions, non-use cancellation actions and domain name dispute cases, and successfully removed those marks and domain names maliciously filed by a group of affiliated trademark squatters.
- Ms. Tian represented a renowned German company famous in manufacturing protective films for industrial use in a number of opposition and invalidation actions in which the adverse party and their affiliated repeatedly filed various forms of marks imitating their stylized mark out of bad faith on similar and dissimilar goods/services.
- Ms. Tian represented a British company famous in designing and producing socks and stockings in series opposition/invalidation and litigation cases based on prior copyright over their stylized logo mark and the close relationship between the goods although classified in dissimilar classes.
- Ms. Tian represented famous Australian company manufacturing building materials in series opposition cases based on the close relationship between the goods and services and the business relationship between the two parties.
- Ms. Tian represented famous fashion design company in litigation against the opposed mark based on close relationship between the goods falling in dissimilar sub-classes.
- Ms. Tian represented an Australian beverage company in defending against the opposition and litigation cases in which the adverse party claimed well-known status of their cited mark in luxury products.
- Ms. Tian represented a renowned German company famous in designing and manufacturing cooking utensils in invalidation action and the successive litigation case against their Chinese dealer based on their business relationship.
- Ms. Tian represented a renowned Chinese company famous in food industry especially in Beijing area against their competitor from Suzhou in an invalidation case and successfully defended the client’s trademark right during the invalidation action, successive first and second instances before Beijing IP Court and Beijing High Court.
Typical Counseling Cases
- Comprehensive IP counseling including trademark, copyright and domain name protection for a multi-national corporation and its WOFE in China for over ten years
- Trademark counseling services for five European based companies for ten years.
Awards:
The 3rd place in the top ten outstanding cases of non-litigation trademark disputes selected by the Intellectual Property Professional Committee of the All China Lawyers Association in 2023.
All-China Lawyers Association (ACLA)
China CPA
Beijing
Patent
Bio & Pharmaceutical,Life Science
Chinese,English
Dr. Tu assists clients in all aspects of patent related matters, including drafting and prosecution of patent applications, re-examination and invalidation procedures, validity/patentability analysis, freedom-to-operate opinions, landscape analysis and due diligence, with a profession in the fields of life science, especially biotechnology, biopharmaceutical and immunotherapy.
Dr. Tu started his IP career with Liu, Shen & Associates in 2015. Prior to joining Liu, Shen & Associates, Dr. Tu obtained his Ph.D. of Cell Biology from University of Chinese Academy of Sciences in 2015, and B.S. of Biology from Wuhan University in 2009. During His Ph.D. research, Dr. Tu focused on identification of target molecules and development of therapeutic antibodies for cancer treatment.
From 2015 to 2021, Dr. Tu majors in drafting, prosecution and reexamination of patent applications in a variety of technical fields of biopharmaceutical and biotechnology, including immunotherapy, antibody/ADC drugs, vaccines, gene therapy, gene editing, stem cell, enzymatic science, transgenic animals and microbiology, before multiple patent offices (CN, US, EP, JP, KR and others). He has gained in-depth understanding in Chinese IP laws and patent practice, as well as laws and practice under other major jurisdictions.
From 2018 to 2021, Dr. Tu has done significant work in patent invalidation and pre-litigation analysis, validity/patentability analysis, freedom-to-operate opinion, landscape analysis, trade secret and due diligence for foreign and local enterprises, including a number of programs relating to antibody/ADC drugs, immunotherapies and gene therapies.
Representative cases that Dr. Tu has participated include
- Assisting a pharmaceutical company in Beijing in a license-in agreement of two bi-specific antibody related projects from an international enterprise (2019);
- Assisting a pharmaceutical company in Shanghai in its IPO, providing IP related due diligence on its product pipelines (2020);
- Assisting a pharmaceutical company in Beijing in a license-in agreement of an antibody-drug conjugated (ADC) related project from an international enterprise (2020);
- Assisting an investment corporation in investing multiple ADC related projects of several pharmaceutical companies in Beijing and Zhejiang (2020-2021);
- Providing freedom-to-operate opinions for an international pharmaceutical company regarding its two therapeutic polypeptide related products (2020);
- Assisting an investment corporation in investing a microbial fermentation related project of a company in Beijing (2020-2021);
- Assisting an investment corporation in investing a T cell therapy related project of a company in Beijing (2021);
- Assisting a pharmaceutical company in Beijing in its IPO, providing IP related due diligence on the product pipelines (2021);
- Assisting an investment corporation in investing an oncolytic virus related project of a pharmaceutical company in Zhejiang (2021);
- Providing freedom-to-operate opinions for an oncolytic virus related project for a pharmaceutical company in Guangdong (2021);
- Assisting an investment corporation in investing several cell-based therapy projects of a pharmaceutical company in Guangdong (2021);
- Providing landscape analysis regarding a therapeutic peptide product for an international enterprise (2021).