Legal Career Briefs

 

Mr. Bill has been practising Chinese intellectual property laws including trademark, patent and copyright in two top tier Chinese IP law firms in their Beijing headquarter offices and Chinese commercial laws in three well-known international law firms - Pillsbury Winthrop Shaw Pittman LLP, Thelen Reid Brown Raysman & Steiner LLP and CMS Bureau Francis Lefebvre, in their Shanghai representative offices, and as the General Legal Counsel of a famous multi-national company in its China head office for more than seven years after his graduations. Mr. Bill’s practice exposure extends from negotiating, reviewing and drafting various agreements, to involvement in major merger and acquisition, foreign direct investment, joint venture transactions, initial public offering, dispute resolution, anti-trust filing in cross-border merger and acquisitions, and corporate governance/restructuring as well as employment matters. In addition, he is also well versed in the contentious and noncontentious aspects of intellectual property prosecution and enforcement, license and transfer as well as audit and due diligence.

 

Before joining China Sunbow & Associates, Mr. Bill has already accumulated substantial experience in Chinese intellectual property and commercial laws practice, particularly in foreign direct investments in China, especially in Shanghai and its neighboring Zhejiang and Jiangsu Provinces, merging and acquiring equity or assets of Chinese enterprises by foreign investors, international trade, employment and labor, corporate compliance, governance and restructuring as well as resolving various commercial disputes through mediation, arbitration and litigation in China. During working in the three international law firms, Mr. Bill had advised many joint ventures and wholly foreign owned enterprises on their commercial legal business and intellectual property issues in China. He had assisted many foreign investors in establishing and maintaining their business and operation in China, accessing into Chinese markets, applying for various governmental permissions, approvals and licenses, etc. He had extensive involvement with structuring and maintaining foreign investments in many main business regions throughout China. He had also dealt with many China related cross-border transactions for domestic and international clients and had drafted various legal documents in English and Chinese required for such transactions.

 

Apart from practice in international law firms for Chinese commercial laws for many years, Mr. Bill had also accumulated substantial experience in and practised Chinese intellectual property laws with more focus on prosecution of Chinese trademarks and patents, IP protection strategies, transfer, license and custom recordal, protection of technology and know-how, IP enforcement through administrative and juridical methods, IP audit and due diligence during the cross-border merger and acquisition, IP investigation and anti-counterfeit, etc. He had represented many foreign enterprises and individuals in registering and prosecuting various Chinese trademarks, patents, copyrights and software. He had successfully raided many Chinese infringers for counterfeiting trademarks of our foreign clients. He had also successfully counseling and assisting several foreign enterprises in identifying their trademarks as well-known trademarks with the China Trademark Office. Moreover, he had advised many Chinese and foreign enterprises on importing and exporting technology to or from China.

 

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Representative Matters

 

-         FOREIGN DIRECT INVESTMENT

 

· Advising a foreign automobile manufacturing enterprise on their joint ventures with several Chinese automobile component manufacturing enterprises;

· Advising a foreign company to establish a joint venture company with a Chinese government based enterprise, including counseling the appropriate deal structure;

· Counseling a foreign consulting company to established their consulting WFOE in Shanghai; and

· Advising a foreign company to prepare for various documents for establishing a joint venture with its Chinese counterpart in the power industry.

 

-          MERGE & ACQUISITION

 

·Advising a leading foreign copper manufacturer to merge and acquire equity of a Chinese group company in the same industry, including due diligence for the group company and its subsidiaries;

· Counseling and counseling a foreign media company to design the deal structure to indirectly engage in certain business and operation strictly restricted and forbidden under Chinese investment policy through series of complex commercial arrangements, such as mergers and acquisitions of Chinese domestic enterprises, and domestic joint ventures;

· Advising a foreign software company in its acquisition of a Chinese entity in the same industry as well as regulatory issues; and

·Counseling a foreign enterprise in chemist field in its acquisition of assets of a major Chinese player in the same industry, including conducting due diligence on it, analyzing various risks in the acquisition.

 

-          DISPUTES RESOLUTION

 

· Advising a foreign company to resolve commercial disputes arising from its international goods purchase and sales contract with a Chinese counterpart through litigation against the Chinese counterpart with Chinese people’s court, including advice on collection of evidence formed overseas, notarization and consularization thereof in the foreign country;

·Advising a Chinese company in application for dissolution of a joint venture partnership with its foreign counterpart through initiation of litigation against its foreign counterpart; and

· Counseling and assisting a foreign company in applying for recognition and enforcement of an arbitration award made by a foreign arbitration tribunal in China.

 

-          COPORATE GOVERNANCE

 

· Counseling a foreign invested holding company on its daily governance and the investment activities as well as employment issues in China;

· Counseling a foreign company in designing its employment policies and drafting employment agreements for it;

· Advising a foreign invested enterprise on properly handling payment for overtime work of its employees in China; and

· Advising a Chinese listing company to prepare for its code of ethics, employee complaint procedures for accounting and auditing.

 

-          TECHNOLOGY & INTELLECTUAL PROPERTY

 

· Counseling for several foreign enterprises on licensing technology and software to China from offshore;

·Advising a foreign enterprise on the ownership of invention and creation jointly developed by its oversea and Chinese R&D centers, application of patents to the developed technologies, transferability and export of the technologies developed by its Chinese R&D center; and

· Advising many foreign enterprises on registering trademarks and patents in China, including professional analysis on registerability of their marks or devices and the patentability of their technologies.

 

-          BOOKS

 

·Currently drafting a very comprehensive handbook “Guidance on Doing Business in the People’s Republic of China under Its Legal Frames” for foreign investors’ consideration when entering into Chinese market. The handbook composes of 15 chapters involving investment vehicles, direct investment, M&A, intellectual property enforcement, foreign trade, employment and environment protection issues, anti-trust, technology transfer, tax, and disputes resolutions, etc.

 

-          PROFESSIONAL CHINA LEGAL WATCH ARTICLES

 

·Legal Representatives, Company Supervisors and their Roles and Responsibilities in Foreign Invested Enterprises in China;

·China’s Anti-monopoly Commission Has Clarified Definition to Relevant Market for Antitrust Enforcement and Its Impact on Mergers and Acquisitions;

·China’s Supreme People’s Court Has Clarified Certain Rules for Trial of Civil and Commercial Contractual Disputes in Current Economic Situations;

·China’s Supreme People’s Court Has Clarified Four Types of IP Related Administrative Cases To Be Heard By Special IP Tribunals;

·Litigation and Arbitration in China;

·China’s State Administration for Industry and Commerce Issued Working Rules for Identifying Well-known Trademark to Strengthen Administration to Well-known Trademark Identification;

·China’s Supreme People’s Court Issued Opinions on Strengthening IP Protection in Current Global Economic Crisis;

·Effectively Resolving Your IP Related Disputes through Litigation and Arbitration in China;

·China’s Supreme People’s Court Solicits Public Opinions on Recognizing and Protecting Well-Known Trademark;

·China Revised Its Patent Law to Improve Patentability Thresholds, Strengthen Patent Protection and Promote Technology Spreading and Development;

·China’s Supreme People’s Court Clarifies Litigation Rules for Applying the Administrative Procedural Law with Trial to Antitrust-based Administrative Cases;

·China Published New Anti-Trust Enforcement Structure and Concentration Declaration Threshold and Its Impact on Foreign M&A Transactions;

·China Revised Foreign Exchange Regulations to Ease Foreign Exchange Reserve, Prevent Inflow of Hot Money and Encourage Outbound Investment;

·China Revised Its Investment Industrial Policies and Its Impact on Foreign Investment;

·New Regulations on Commercial Franchising in China; and

·Further Openness of China’s Construction Design for Foreign Industry for Foreign Investors under Impact of WTO.

 

Mr. Bill had also co-authored the following articles while with his former international law firms:

 

·PRC’s Anti-monopoly Law Has A Long Way to Go, which was subsequently published by the New York based Portfolio Media Inc.’s Competition Law360;

·China’s Supreme Court Broadens Mandatory Application of PRC Laws to Foreign-related Contractual Disputes, which was interviewed and quoted by Xinhua Financial Network Ltd.;

·China Encourages Development of High and New Technology Enterprise by Offering Favorable Tax Treatment, which was published by Practical Asian Tax Strategies; and

·China Taxes Real Profits from Virtual World Transactions, which was subsequently published by the Virtual Economy Research Network.