Academic Qualifications:
- 1998, J.D., Syracuse University College of Law/Columbia
Law School, Syracuse, N.Y./New York, N.Y., U.S.A. Certificate,
Technology Transfer and Management; Goldie Memorial Award
- 1995, Master of Arts (Chinese Studies), Honors Graduate,
University of Hawai'i, Honolulu, Hawai'i, U.S.A.
- 1991, Bachelor of Arts (History, Biology), Honors Graduate,
Wingate College (now Wingate University), Wingate, North
Carolina
Professional Qualifications:
Admitted to practice law:
- New York (January 1999)
- New Jersey (January 1999)
- United States District Court, NY
Southern and Eastern Districts (January 1999)
Key Experience:
- IP Acquisitions - Lead lawyer in multi-jurisdictional
teams involved in acquisitions of major multinational brands
and other intellectual property assets with deal values
ranging from US$2 million to US$20 million. In one acquisition,
my due diligence uncovered several unsecured "future
markets" for client's edible oil business which seller
had misrepresented resulting in a substantial purchase price
decrease in favor of client. On another deal, I shadowed
advice from buyer client's New York lawyers advising proceeding
with a polymer technology acquisition and advised against
the buy owing to seller's incomplete disclosure regarding
inventorship and commingled state owned assets resulting
in my further advice for stronger warranties and undertakings
from buyer along with further disclosure and assignment
agreement with past involved technicians.
- Licensing and Assignments - Strategic structuring, negotiating
and drafting IP licensing and assignment deals including
letters of intent, sale and purchase, confidentiality and
non-disclosure with focus on acute awareness of client's
goal while creating win-win situations rather than one-sided
agreements which inevitably end up with licensees breaching
terms in order to make up for imbalances imposed under license
terms.
- JV Establishments - Advising and assisting in-house counsel
at Fortune 100 multinationals in their joint venture establishments
with Chinese and Hong Kong entities where my interpersonal
skills and Mandarin speaking skills were critical in negotiations
and completions with deal values ranging from US$500,000
to US$1.3 billion. After successful establishment of one
JV in Shanghai, client further instructed me on buying out
Chinese partner which was the first post Circular 101 deal
in Shanghai for open bidding of state assets pledged to
JVs. Circular 101 was Beijing's response to the Shanghai
pension fund corruption scandal of 2006. Open bidding terms
were agreed with Chinese partner and the State Owned Assets
Valuation Office and client acquired the state assets.
- IP Due Diligence - Fieldwork and Data Room coordinator,
report drafting and strategic curing of discovered defects
prior to IP and other asset acquisitions.
- Clinical trials, site selection, informed consent and
data ownership/assignment.
- Supply, Distribution, IP and Compliance Audits - Developing
new and localizing existing audit protocols for various
industries and getting local management buy-in to insure
smooth conduct of audits. Report drafting and corrective
strategies developed and implementation coordinated and
checked.
- IP Litigation - Handling attorney in numerous civil litigations
involving trademark, copyright, patent, unfair trade competition
and domain names for Fortune 100 multinationals in China,
Hong Kong, South Korea and the Philippines.
- IP Administrative actions - Handling attorney for administrative
actions in China, Hong Kong, Macau, Japan, South Korea,
Thailand, Malaysia, Indonesia, the Philippines and Vietnam.
Causes of action included various IP infringements and regulatory
infractions such as labelling, advertising, product handling/warehousing,
product registration, taxation and import/export violations.
Two cases were precedential including one in China which
adopted the "separability doctrine" distinguishing
the functional from the aesthetic elements of a copyright
work and the first successful "administrative pipeline
protection" pharmaceutical case in China.
- Regional investigations - Coordinating numerous Asia Pacific
investigation and legal firms for IP investigation and IP
enforcement.
- IP Registrations, Oppositions, Cancellations, Invalidations,
Clearances and Co/Re-branding including Patent FTOs and
Infringement Assessments.
Experience and Description
of Major Areas of Legal Work Handled:
- Senior Associate/Partner Invitee, Commercial Intellectual
Property Department, Rouse & Co International, Shanghai/Hong
Kong, September 2002-November 2007
- Head of the Commercial IP Department in Hong Kong
after serving as senior foreign lawyer within the China
IP Commercial Department in Shanghai.
- Associate, Intellectual Property/Information Technology
Group, Lovells, Hong Kong/Shanghai, February 1999-July 2002
- Handled IP registration, enforcement/litigation and
commercial matters in Hong Kong and China.
- Lawyer, Legal Group, Goldman Sachs & Co, New York,
August 1998-February 1999
- Junior regulator on swaps/derivatives trading desk
dealing primarily with Chinese trades.
- Material Transfer Agreements Specialist, NYU Medical
Center Office of Industrial Liaison, New York, January 1998-May
1998
- MTA negotiator and draftsman for technologies coming
into and going out of NYU laboratories.
- Summer Associate, Lovell White Durrant (now Lovells),
Hong Kong, Ho Chi Minh City, May-August 1997
- IP registration, IP litigation, IP commercialization,
IP enforcement support to IP Group including daily visits
to Legislative Council to collect freshly amended legislation
in run-up to Hong Kong handover to PRC.
- Legal Intern, US-China Business Council, Hong Kong,
May-August 1996
- Researched and wrote Members Guide to Hong Kong IP
legislation changes post-1997 handover to PRC including
interviews with Members on their positions to changes
for White Paper to Hong Kong Government.
- Legal Intern, Carlsmith, Ball, Wichman, Case, and Ichiki,
LLP, Honolulu, September 1994-August 1995
- Worked with Chinese-American partner in deal facilitation
and interpretation with visiting Chinese business groups
for State of Hawai'i.
Professional Experience:
- Non contentious
- Acquisitions of global trademark and intellectual
property portfolios including sale and purchase agreement
negotiation and drafting, due diligence, post completion
assignment recordals globally, post completion licensing,
manufacturing and distribution structuring and agreement
drafting
- IP licensing, trademark assignment and co-existence
agreements including local recordal of agreements with
relevant authorities; non-disclosure of business secrets
and confidentiality agreements
- Joint venture establishments in China in such sectors
as industrial lubricants, wood preservatives, nickel
foam and polymers
- Patent and trade secret due diligence on various technologies
and portfolios including pharmaceuticals, polymers,
chemicals, electric power tools, electronic sensors
and nickel foam
- Drafting and negotiating a Memorandum of Understanding
with the Beijing Intellectual Property Conference to
provide special treatment for US technology client's
know how, trade secret and patent to facilitate client's
US$1.3 billion facility establishment
- Supply chain audits and management including manufacturing
and distribution agreements
- Hong Kong JV establishment, retail operations establishment
in China and global distribution and retail agreements
for Japanese luxury goods company during one year secondment
- Clinical trial regulations and protocol vis-a-vis
the Helsinki Declaration
- Intellectual property registrations, oppositions,
cancellations, clearances and re-branding
- Technology transfer agreements for such sectors as
electronics, software, aerospace, telecommunications
and petrochemicals
- Infringement Assessment and Freedom to Operate reports
and Statements of Confirmation
- Computer software escrow and provision licenses
- Y2K legal audit for a major public transport company
in Hong Kong
- Contentious
- Copyright/applied art administrative action in China
for US computer accessories designer/manufacturer (China's
first successful case)
- Trade secret China actions for industries including
paper, railways and electrical motors
- PRC patent litigation administration including evidence
collection and notarization, infringement assessment,
sample analysis, interlocutory injunction preparation
through to litigation (agrochemicals and polyvinylchloride
patents)
- Trademark and unfair competition infringement civil
suits in PRC Intermediate People's Courts for US sunglass
manufacturer and US food products manufacturer
- Trademark infringement and unfair competition civil
suit
- Copyright infringement civil suit for Spanish figurine
manufacturer
- Domain name recoveries throughout Asia Pacific
- Cancer therapy drug enforcement action handled for
major US pharmaceutical company in three PRC cities
through State Food & Drug Administration
- Anti-cholesterol drug administrative "pipeline"
protection action handled for Japan's largest pharmaceutical
company through the PRC State Food & Drug Administration
(first successful in China)
- Trademark, copyright, patent, design and unfair competition
administrative and Public Security Bureau IP enforcement
actions in the PRC for clients in sectors including
software, pharmaceuticals, chemicals, auto parts, luxury
goods and toys. Administrative agencies worked most
closely with include local, provincial and State Administrations
for Industry & Commerce, National Copyright Administration,
State Intellectual Property Office, Quality and Technical
Supervision Bureau, Ministry of Health, State Food &
Drug Administration, and PRC Customs
- Handled Hong Kong civil actions including preparation
of pleadings, affirmations and other court documents
Membership in Professional
Societies and Other Organizations:
- New York State Bar Association
- New Jersey State Bar Association
- Inter Pacific Bar Association
- AIPPI (International Association
for the Protection of Intellectual Property)
Honors/Recognitions:
- Identified
by the AsiaLaw Leading Lawyers Survey as one of Asia's
leading business lawyers in the area of Intellectual Property,
2005, 2006, 2007, 2008
- Honorary Professor, Beijing Communications
University
Books and Articles:
- "Quality
Matters", World Intellectual Property Review,
November/December 2008
- "Caveat Emptor! Acquiring Asian technology",
IP World, WORLDextra: IP Supplement, September 2008.
- (With Siraprapha Rungpry and Nguyen Thi Phi Nga), "Pharmaceutical
industry in Asia", Intellectual Property in
Asia, BNA International, August 2008.
- (With Siraprapha Rungpry), "Thailand
Pharmaceutical Update", Life Sciences Intellectual
Property Review 2008, published in June 2008.
- (With Rebecca Ordish), China's IP Challenges &
Solutions: An Essential Business Guide, published
by John Wiley & Sons (Asia) Pte Ltd, March 2008
- "Top 10 Pitfalls in Asian IP Deals",
Global Intellectual Property Asset Management Report, October
2007
- (With Nicholas Redfearn), "IP Acquisitions in
Asia", Asialaw, June 2007
- "Art of the State: Acquiring Chinese Technology",
China Business Review, March-April 2007
- (With Nicholas Redfearn), "Made for Sharing?,
Copyright World, April 2007
- "China Franchising", Asia Franchise &
Business Opportunities, January-March 2007
- "Intellectual Property", The China
Business Handbook 2007; The China Business Handbook
2008
- (With Nicholas Redfearn), "Trade Secret Protection
in China and the Asia Pacific Region", Journal
of the Japan Intellectual Property Association, Volume 6
No 2
- "Music Industry Increasingly Aggressive in Protecting
IP Rights in HK and China", e-commerce law &
policy, February 2006
- "Copyright, music and the net: Baidi.com...China's
Grokster?", e-commerce law & policy, October
2005
- "Solutions for exporting R&D from China",
Managing Intellectual Property, July/August 2005
- "Commercialization of IP in China", Global
Intellectual Asset Management Report, February 2004
- "Opportunity Knocks for IP Owners in China",
Intellectual Asset Management, February/March 2004
- "Updating IP: Shanghai Addresses its own IP Concerns",
China Law & Practice, July/August 2003
- "Getting Tech Transfer Right in China",
Managing Intellectual Property, March 2003
- (With Henry JH Wheare), "Competition 2001: An
Asian Perspective", International Financial Law
Review, 2001
- (With Douglas Clark), "Intellectual Property in
China", IP Profiles 2001, Asia Law & Practice,
2001
- (With Gabriela Kennedy), "Licensing and Pledging
of Intellectual Property Rights in China", China
Troubleshooter, Asia Law & Practice, 2000
- (With Henry JH Wheare), "An IPR Overhaul A look
at Hong Kong's revamped copyright, patent, and design laws"
(http://www.chinabusinessreview.com/members/9801/adcock.html),
1999
Recent Professional
Speaking:
- "Acquiring Asian Technologies", IP Law
Asia Summit, Singapore, November 25, 2008
- "PRC Patent Enforcement and Litigation: Understanding
the Legal & Commercial Realities before Deciding to
Fight", Quality Brands Protection Committee (QBPC)
Annual Meeting, Beijing, April 11, 2006
- "Beyond the Law: Building Relationships and Establishing
Goodwill as Keys to Effective IP Enforcement in China and
Abroad", American Conference Institute Conference
on Anti-Counterfeiting & Branding Integrity Protection,
New York , July 13, 2006
- "Internal Measures to Safeguard Trade Secrets",
China Intellectual Property Summit, Shanghai, October
24, 2006
"China Franchising: Seeing the IP Angle",
International Franchise Academy, Beijing Normal University,
Zhuhai, November 12, 2006
- "Effective Approaches to Protect Your Intellectual
Assets", Hong Kong Intellectual Property Department
Conference on Intellectual Asset Management (IAM), Hong
Kong, November 22, 2006
- "Strategic R&D Management and Product Innovation",
Avail Corporation Conference Series, Shanghai, February
5-6, 2007
- Panelist, IBC Legal Conference: Protecting & Enforcing
IPR in China, London, February 8, 2007
- "China IP and Asian Regional Considerations",
Inter-Pacific Bar Association 17th Annual Meeting &
Conference, Beijing, April 20-23, 2007
Practice Areas:
Intellectual
Property; Commercial
E-mail:
Telephone:
+66 2653 5871
Facsimile:
+66 2653
5678
(November
2008) 
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