Tony Chen is a former co-chair of the IP subcommittee of the American Chamber of Commerce in Shanghai and has represented clients in complex cross-border intellectual property matters relating to China since 2004. Multinational companies turn to Tony for protecting their IP rights in China's patent office and courts and for reducing IP risks in China-related technology transactions. Chinese clients enlist Tony for managing patent and trade secret litigation overseas and for licensing technology and creating IP assets on a worldwide basis.
Tony has led Jones Day's China IP team and local counsel in representing clients from a variety of industries in patent invalidation and infringement disputes before China's patent reexamination board and IP courts, including Celgene (pharmaceutical), Cree (semiconductor), SharkNinja (consumer electronics), Lowes (household goods), and Milliken (chemicals). He has guided western companies in navigating China's myriad regulations relating to technology import and export, high and new technology enterprises, cybersecurity, foreign patent filing, and human genetic materials. Tony has worked with Jones Day's litigators in the United States and Europe in representing Chinese companies in litigation involving patent infringement, ITC 337 investigation, trade secret misappropriation, and economic espionage prosecution.
Tony is a leader in public policy projects promoting strong IP protection in China. He is an advisory member of the U.S.-China IP Cooperation Dialogue organized by the U.S. Chamber of Commerce and Renmin University of China. He was an advisor to Shanghai Pudong New Area and Suzhou BioBay on the development of biotechnology industry.
Video
Experience
Recent representations include:
Defending a global 500 company in a patent infringement lawsuit in China and invalidating the opponent’s Chinese patent;
Representing a global top 10 pharmaceutical company and a global top 10 biotech company in patent invalidation actions in China.
Assisting a global top 10 biotech company in fighting drug counterfeiting in China.
Assisting global top 10 pharmaceutical companies and biotechnology companies in contract research, R&D collaborations and drug development partnerships in China.
Representing Chinese biotechnology companies in patent licensing and technology transfer agreements with U.S. companies and universities.
Defending Chinese technology companies in patent infringement lawsuits in the U.S. in federal district courts and the International Trade Commission.
Additional Publications
- May 2011
Benefitting from China Booming Market without Losing Control of Your Crown Jewel: IP Issues for Foreign Business in China, Aspatore Press, Inside the Minds Series - October 2010
Patents, yes; ideas, maybe, Economist - September 2010
Who is afraid of IP lawsuits in the US?, CTV9 Dialogue - July 2010
China’s Indigenous Innovation Policy, Law360 - 2009
The Radical Third Amendment, 2009 China IP Focus, Managing Intellectual Property - April 2008
850,000 Lawsuits in the Making, Economist - March 2008
New Patent Approach is Needed for Pharmaceutical Research in China, PharmAsia - Fall 2006
From Infringer to Competitor: Recent Changes in IP Protection in China, Jones Day IP Perspectives - 2006
Declaration of Non-Infringement: Forum Shopping Comes to China, China IP Focus, Managing Intellectual Property - November/December 2004
Keeping China Healthy, China Business Review - September 8, 2004
Crackdown on IPR Bandits, Financial Times - July 21, 2004
Western Ways, Good and Bad, Financial Times
Additional Speaking Engagements
- January 26, 2016
CLE Academy Shanghai 2016 - January 18, 2016
Fee Shifting Strategies for Patent Troll Litigation and IP Review in M&A Transactions - 2016年1月18日
知识产权研讨会——专利流氓诉讼的费用转移策略与并购交易中的知识产权审查 - 2016年1月18日
知識產權研討會——專利流氓訴訟的費用轉移策略與併購交易中的知識產權審查 - June 7, 2013
Fortune Global Forum: Can Intellectual Property Be Kept Safe? - 2013年6月7日
财富全球论坛：知识产权能被安全保护吗？ - 2012年10月25日
在华投资研讨会：外商对华投资新的挑战和机遇 - October 25, 2012
China Inbound Seminar: New Challenges and Opportunities for Foreign Investments in China - October 24, 2012
Outbound Seminar "Managing Legal Risks in Global Expansion of Chinese Companies" - October 23, 2012
Life Science Legal Drama - "Mr. Big in Wonderland" - 2012年10月23日
生命科学法律剧 - April 7, 2011
JDialog: Investments in China - Current Developments and Challenges - April 5, 2011
JDialog: Investments in China - Chances & Challenges - November 2009
Securing Your Market Position in China with a Proactive Patent Strategy, 1st DIA China Annual Meeting - October 2009
Biotech Patenting Developments in China, Biotech Patenting Conference - September 2009
Winning Patent Litigation Strategies for China, IBC Legal Conference on International Patent Litigation in London - September 2009
Winning Patent Litigation Strategies for China, Seminar for high-technology companies in Taiwan - April 2009
Wind of Change - 3rd Amendment to Chinese Patent Law, AmCham Shanghai Seminar on the Amended China Patent Law - April 2009
How to Maximize International Patent Protection While Minimizing Costs – Patent Drafting and Prosecution Tips, Jones Day & Suzhou BioBay IP Seminar - September 2008
Promises & Pitfalls Obtaining & Enforcing Biotech Patents in China, 15th Forum on Biotech Patenting - September 2008
Evaluating The Regulatory Framework In China To Ensure A Successful Transition To Partnerships in the Region, BioBusiness Network - June 2008
Biofuel Development in China; The Wild, Wild West is Moving . . . East, 2008 BIO International Convention - April 2008
Incorporating International Business Strategies into Collaborative Agreements, 2008 ACI Pharma/Biotech Collaborations conference - April 2007
IP Due Diligence Review for Venture Capital Investment, Shanghai International Biopharma Financial Investment Forum 2007 - April 2007
Patent Strategy for Chinese Life Science Companies, the 9th (2007) China Venture Capital & Private Equity Forum - November 2006
Technical Standards and Patent Issues in China, In-House Congress Shanghai - November 2006
How to analyze U.S. Patents, Shanghai IP Association - October 31, 2006
November 1, 2006
Life Science Venture Capital in China: Opportunities and Challenges - October 2006
How to Protect Pharmaceutical Inventions in China – Reality and Prospect, CHI Pharmaceutical Strategy Series - October 2006
How to Successfully Structure Licensing Agreements and Protect Your Competitive Advantage in China, C5 Conference - September 2006
Licensing Strategy for Emerging Asia Biotech Companies, BIO KOREA 2006
"Instrumental in negotiations and is very effective in complex situations" — Chambers Asia
- Harvard University (J.D. 1993); University of Science and Technology of China (B.S. in Cell Biology 1987)
- California and registered to practice before the U.S. Patent and Trademark Office
Legal 500 (2018) and Chambers Asia (2018): recognized as a leading intellectual property and life science practitioner in China; clients say he is "excellent" and "very sharp"
Managing IP: "IP Star" in patent strategy and counseling (2017)
IAM Patent 1000: The World's Leading Patent Professionals in IP transaction, prosecution, and litigation in China (2017)
- Chinese and English