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Helen CHENG
Equity Partner / Shanghai
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Tel +86-21-6061-3058
Email helencheng@zhonglun.com
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Practices
IP Licensing & Enforcement, Litigation & Arbitration, Antitrust & Competition
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Industries
Energy & Power, Information & Intelligence Technology, Pharmaceuticals & Life Sciences, Education & Training, Media-Sports & Entertainment
Helen CHENG
Helen’s practice encompasses all aspects of intellectual property, including patent and trademark litigation, licensing and technology transfer, IP due diligence and client counseling on IP enforcement strategy.
She has extensive experience in assisting multinational companies in structuring and negotiating cross-border IP and technology-related transactions, such as licensing, strategic alliances and joint ventures. She regularly provides IP counseling to multinational companies in acquiring technology and developing IP strategies for R&D activities in China, including advising IP policies for R&D related activities, strategies for trade secret protection, and IP enforcement strategies in China.
Helen has received numerous awards for her professional achievements. Chambers & Partners states that she has "deep professional knowledge and very solid methodology." She is praised by clients for “her business acumen as well as her communication skills and strategic approach” and "her understanding as well as quick and accurate grasp of key points, [which] helped her clients achieve their goals."
Representative Matters
IP Litigation
1.Represented a leading US semiconductor manufacturer in a lawsuit in China involving trade secret violation on complex integrated circuit lay-out design and unfair competition dispute arising from the competing business set up by its former employees in multiple locations in China and US, coordinating with parallel litigation procedures in the US to assist investigation and lawsuit in China, and achieved a favorable settlement for the client.
2.Represented a well-known chemicals company, conducted in-depth investigations on the patent infringement of multiple domestic dyestuff manufacturers and filed patent enforcement lawsuits, and successfully handling patent invalidation proceedings initiated by multiple alleged infringers and maintained validity of the patents in dispute. In view of the fact that the enforcement actions involve long-term, continuous infringement and huge amount of damages, the enforcement actions have attracted the attention from the intellectual property counselor of the United States in China, Sino-US trade chamber of commerce and many other industrial organizations.
3.Represented a to-be-listed manufacturing enterprise in handling the malicious lawsuit and public relations crisis initiated by patent pirates during the listing process, and successfully forced the plaintiff's voluntary offer for settlement and paved way for the successful listing through litigation strategies and auxiliary schemes such as transfer of jurisdiction, discovery of major evidential defects and filing of patent invalidation.
4.Represented a leading German auto part manufacturer, investigated multiple companies that manufactured infringing ultrasonic metal welding products, filed lawsuits against multiple infringers for manufacturing, selling, and offering to sell infringing products in multiple courts at different locations, successfully handled the patent invalidation proceedings initiated by the infringers, and obtained favorable judgments in all cases filed.
5.Represented a well-known US wireless telecommunication chip manufacturer to file lawsuit against a domestic mobile phone manufacturer with respect to disputes over license terms on standard essential patents, including designing litigation and public relations strategies, illustrating connotation of FRAND obligation, reverse hijack, patent stacking, etc., in combination of industry practice, and finally obtained a favorable settlement.
6.Represented a leading Swiss pharmaceutical company, provided legal service on the enforcement strategies for its best-selling drug after the expiration of compound patent, including performing validity and enforceability analysis for the secondary patent of the drug, performing infringement analysis of the generic drug, designing litigation strategies in combination with drug pricing strategies.
7.Represented a leading US pharmaceutical company in its patent infringement lawsuit against a Changzhou-based pharmaceutical company with respect to a neuroleptic drug throughout the first instance proceedings before Jiangsu High People’s Court and the second instance proceedings before Supreme People’s Court.
8.Represented a famous mobile phones application developer, provided long-term legal service for series of design patent and copyright protection matters in China, including obtaining favorable decisions in 28 design patent invalidations and subsequent administrative lawsuits.
9.Represented a European company in multiple trademark infringement actions throughout China, designed and executed a successful enforcement plan against multiple counterfeiters in different locations, which resulted in clearance of market and criminal proceedings against one infringer that engaged in volume manufacturing of counterfeit products.
IP Transactions
1.Represented a state owned enterprise in a high profile Theme Park Project, providing full spectrum legal services for multi-type and multi-level intellectual property licensing matters as the client’s chief IP counsel. This project is one of the pillar projects of Beijing Municipality which is specially approved by State Counsel. The cross-border intellectual property licensing and related transactions therein requires comprehensive consideration of corporate structure, project operation, land development, park construction, financing, financial evaluation and other multiple factors, which combined together attributed to a rare project in the industry in terms of deal size, complexity and complication.
2.Represented a famous British consumer products company in its acquisition of a listed Chinese company (including its several subsidiaries located in different places) by providing comprehensive legal services for IP related issues, such as conducting IP due diligence, and evaluating the legal risk of, advising on and providing business solutions for all kinds of IP issues in the acquisition.
3.Represented a leading US software company in an IP asset transfer and in-licensing transaction, involving formulating IP transaction framework, designing ownership of rights and types of IP transaction according to business needs, such as transfer, licensing, cross-licensing and reverse licensing, drafting legal documents and participating in negotiations.
4.Represented a leading optical transceiver module designer and manufacturer, provided legal services on designing intellectual property protection system, formulating a full set of intellectual property system, reviewing development agreements, license agreement, procurement agreements, sales agreements and other types of intellectual property related agreements, assisting R&D personnel in performing patent analysis and freedom to operate analysis on core technology.
5.Represented a leading US energy company in an IP asset transfer and in-licensing transaction relating to photovoltaic power generation systems at Inner Mongolia, advising IP contribution as in-kind capital investment, IP assets evaluation, technology control, IP due diligence and licensing issues.
6.Represented a famous investment corporation in its acquisition of a geothermal energy project in California, including conducting IP due diligence, designing the IP transaction framework and drafting and reviewing legal documents.
7.Represented a well-known Chinese biopharmaceutical company in its initial public offering and listing in the United States, including conducting legal due diligence, providing legal advice on matters such as in-license of drug R&D projects, drug registration categories and risk disclosure, clinical trials, and issuing PRC legal opinion.
8.Represented a state-owned venture capital in its acquisition of a world leading pharmaceutical company’s R&D center and the consequent incorporation of a joint venture in mainland China, including providing legal advices from designing the transaction plan, conducting legal due diligence, assisting with deal negotiation, drafting, reviewing and revising transaction documents till deal closing.
9.Represented a famous Chinese pharmaceutical company in its “licensing-in" of the fifth-generation cephalosporin antibiotics of “ceftobiprole", providing legal advice on multi-center clinical trials, protection of clinical data, procurement of raw materials, and other regulatory matters throughout the project.
Honors and Awards
For Individual
Recognized in 2014 by Chambers Asia Pacific as an “Outstanding Young Partners”
Invited by China’s Supreme People’s Court as a committee member of Consultation Committee for China’s Guidance IP Cases from 2015 to 2019
Recognized in 2016 by Asian Legal Business as one of the “China Top 15 IP Lawyers”
Recognized by Chambers Asia Pacific for consecutive six years from 2014 to 2022 as a “Leading Lawyer for IP litigation”
Recognized by Intellectual Asset Management for consecutive four years from 2016 to 2022 as an “IAM Patent 1000"--The World’s Leading Patent Professionals
Recognized from 2018 to 2022 by Legal 500 as a “Highly Recommended Lawyer” for both “IP litigation” and “IP Transaction”
Recognized the 7th Outstanding Female Lawyer of Shanghai Bar
Association and Shanghai Female Lawyers Association in 2022
Memberships & Affiliations
Adjunct professor of the Koguan School of Law, Shanghai Jiaotong University
Adjunct professor of East China University of Politics and Law
Alternative Dispute Resolution Committee, International Association for the Protection of Intellectual Property (AIPPI )
International Trademark Association (INTA)
All China Lawyers Association (ACLA)
All China Patent Agents Association (ACPAA)
Publications
"Trends and Developments in Life Sciences"",Chambers and Partners (Life Science practice guide), April 2020.
“Trends and Developments in Pharmaceutical Advertising” Chambers and Partners (Global Practice Guide), March 2020.
“Border Copyright Guide - CHINA 2019”, Terralex Cross, January 2019.
“Trends and Developments in the Compliance Regulations of Healthcare Big Data Industry"", China Law Insight, December 2018.
“Brief analyze of protection for online games by adaptation right"", Legal Person, July 2018.
“Commentary on the Definition of ‘Malicious Intent’ in Malicious Patent Ligations from the Perspective of Judicial Practices"", Legal Person, June 2018.
“Trade Dress Protection to Well-known Commodities – Commentaries on Disputes between Wong Lo Kat and Jiaduobao"", China Law Insight, May 2018.
“Corporate Intellectual Property Management and Challenges in the Era of ‘Internet Plus’”, Zhong Lun Review, October 2017.
“2017 Annual Review of Intellectual Property Litigation"", Financier Worldwide Magazine, September 2017; China Business Law Journal, October 2017.
“Determination and Standards for Ties-in under the Chinese Anti-Trust Law, Indications of Wuxiaoqin vs. Shanxi Broadcasting & Television Group”, China Law Insight, March 2017.
“Seeking Injunctions for Standard Essential Patents in China”, Zhi Chan Li, March 2016.
“Cross-border Copyright Guide 2016"", TerraLex, January 2016.
“Tips of Intellectual Property Protection in China, co-author"", China Intellectual Property, January 2013.
“How the Chinese Supreme Court has Changed Patent Litigation"", China Law & Practice, Vol. 26, No.3, April 2012.
“The Scope of Protection of Process Claims and the Reversal of the Burden of Proof for Process Patents for Producing ‘New’ Products"", Allen& Overy: PRC Litigation Review, Winter 2011.
“What Multinational Companies Need to Know about Patent Invalidation and Patent Litigation in China"", Northwestern Journal of Technology and Intellectual Property, Vol. 5, No.3, Summer 2007.
“Patent Litigation in Chinese Courts"", Global Intellectual Property Asset Management Report, Vol. 8, No.5, May 2005.
“Are Your Chinese Patents at Risk? "" Intellectual Property Today, December 2004; China Law & Practice, Vol. 18, No.10, December 2004/January 2005.
Related
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Articles Related
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Deals Related
Zhong Lun Helps "怡宝" and "C'estbon" Trademarks Obtain Judicial Certification and Protection as Well-known Trademarks
This case was handled by Zhong Lun team led by partner Helen Cheng, and team members included associate Joseph Feng.
2022-07-04 -
Events Related
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Awards Related
114 Lawyers from 39 Practice Areas of Zhong Lun Recognized in Chambers Greater China Guide 2024
Zhong Lun Lawyers Garner 136 honors and 39 practice areas are recommended
2024-08-02
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Bar Admissions/Professional Qualifications
Admitted to practice in the People’s Republic of China and New York State
Admitted to the Chinese Patent Bar -
Education
LL.M., Stanford Law School
LL.M., East China University of Politics and Law
Master of Science in Bioengineering, China Academy of Medical Sciences
Bachelor of Science in Biochemistry, Lanzhou University -
Professional Experience
Partner, Zhong Lun Law Firm, Shanghai Office, 2013.3-present,
Counsel, Allen & Overy LLP, Shanghai Office, 2011.3-2013.3
Associate/Senior Associate, Jones Day, Shanghai /New York, 2004.9-2011.2,
Associate, Leading Chinese IP boutique firms, 1999.2-2004.8, -
Languages
Chinese
English