Intellectual Property

Market Status

Professional Staff

Technology

Innovation

Services offered

Costs

Intellectual Property

Deacons provides the full range of intellectual property services required by multinational businesses. The Department is organised into practice groups covering trade marks, patents and designs, litigation and enforcement and commercial exploitation of intellectual property (including entertainment, media and internet-related issues).

Through our representation of international and Hong Kong-based companies throughout Asia and worldwide, our lawyers have developed both the experience and the contacts necessary to represent clients’ interests both effectively and economically.

Market status

Deacons has achieved the highest ratings of any Hong Kong law firm in patents and trade marks over the past several years in the annual surveys conducted by Managing Intellectual Property magazine (a Euromoney publication). The Department handles the largest trade marks portfolio in Hong Kong and has a busy patents practice. The Hong Kong litigation practice group successfully represented the plaintiffs in some of the most significant legal actions decided in recent years. Deacons also handled the last Hong Kong case ever heard before the Privy Council.

Deacons acts for 44 of the world’s leading 75 brands (as identified by Interbrand PLC). We represent the world’s largest companies in the electronics, construction, hotel, chemical, pharmaceutical, food and beverage, petrochemical, media/entertainment, business software, computer hardware and mobile phone industries (source: Fortune Global 500/The Economist).

From registering Hong Kong’s oldest trade mark in 1874, to making the first ever e-filings in Hong Kong, Deacons has become an institution in Hong Kong intellectual property.

Professional staff

The Intellectual Property Department employs 25 professional staff, almost all of whom are bilingual or trilingual. The staff includes three qualified patent attorneys, two PhD graduates and eight of the staff are qualified as engineers or scientists. All our attorneys are native to Hong Kong or Mainland China and/or qualified in Hong Kong.

Technology

The Intellectual Property Department has installed Hong Kong’s most sophisticated intellectual property management database and the Department employs two full-time computer programmers. The computer systems of the Department provide clients with the convenience of comprehensive extranets and e-billing facilities and our staff have instant access to sophisticated file location and accounting facilities. Operations are entirely computerised and many procedures are “paperless”. All professional and support staff have access to both email and Internet/Intranet facilities.

Innovation

Deacons is a leading innovator in intellectual property in Hong Kong. Deacons filed the first trade mark application under Hong Kong’s new Trade Marks Law, the first multiple class trade mark application ever filed in Hong Kong, made the first e-filings of trade mark, patent and design applications in Hong Kong and also made the first interactive electronic filing with the Hong Kong Trade Marks Registry.

Services offered

The four core service areas of the Intellectual Property Department are Litigation/Enforcement, Registration, Exploitation and Entertainment & Media: 

• The Litigation/Enforcement practice concentrates on the enforcement and defence of intellectual property rights through the civil or criminal courts, customs or other administrative agencies. Attorneys within this group have played a leading role in the development of jurisprudence and procedures in the enforcement of intellectual property rights in Asia.  
  

• The Registration practice focuses on the registration, defence or cancellation of intellectual property rights before patent, trade mark or other relevant Registries, and before the courts or other administrative agencies.
  

• The Exploitation practice advises on the commercial exploitation of intellectual property rights, including conducting IP audits, licensing, franchising, assignment, manufacturing and distribution agreements, joint ventures, technology transfers and due diligence on the sale and purchase of businesses. Attorneys in the practice area also advise on information technology and Internet issues, including software licensing and development.
  

• The Entertainment & Media practice provides business-orientated and creative solutions and advisory services in all aspects of the film, music and publishing industries. Attorneys in this practice area have extensive industry-based legal and business knowledge and diverse entertainment experience. Please click here for further information.

Costs

Our attorneys are well aware of current economic pressures. Although specialisation and economies of scale already render Deacons’ services extremely cost-effective, a highly flexible approach is taken with regarding to billing.