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Introduction
Henry Wheare, a highly experienced and respected solicitor with a practice spanning decades in the field of intellectual property enforcement and rights management, is a partner in Nixon Peabody CWL in Hong Kong. He represents global clients in Hong Kong, mainland China, and elsewhere in Asia. He also has a particular interest in the intersection of antitrust and competition law with intellectual property law.
My focus
Intellectual Property
I focus on IP dispute resolution in cases involving patents, trademarks, copyright, designs and confidential information, with an emphasis on cross-border solutions using both civil remedies and work with anti-counterfeiting enforcement agencies spanning Greater China and other jurisdictions. I also engage appropriately in alternative dispute resolution for compromising, mediating and arbitrating IP disputes.
I also have hands-on experience in structuring and negotiating transactional IP matters such as licenses, technology transfers, regulatory issues and other legal challenges associated with new technologies. I have broad ranging interests in the life sciences, technology, media, communications, fashion, music and entertainment industries.
Competition Law
I advise on legal aspects of anti-competitive conduct and compliance, especially where there is an overlap with intellectual property (i.e., in relation to patent licensing), and work with both professional and industry associations to promote awareness in these sectors.
Looking ahead
Hong Kong will become even more central to the development and advancement of intellectual property in the region, with significant reforms due to come into force in the near future.
Representative experience
- Hong Kong Court of Final Appeal on interpretation of infringement provisions of Trade Marks Ordinance and the scope of dilution claims in passing off
- Hong Kong Court of Final Appeal on the extra-territorial scope of delivery up orders
- Patent and regulatory advice in relation to originator and generic drugs
- Patent dispute involving Hong Kong and mainland China cross-border strategy
- Cross-border seizure and asset freezing orders in support of anti-counterfeiting strategy
- Representing U.S. pharmaceutical company in patent infringement and regulatory disputes for a range of pharmaceutical products
- Acting in a multi-jurisdictional copyright claim involving functional works
- Handling successful mediation of copyright claim against a leading U.S. sportswear company
Admitted to practice
England and Wales
Hong Kong
Solicitor of the High Court of Hong Kong
Solicitor of the Supreme Court of England and Wales (non-practising)
Education
University of Cambridge, Jesus College, M.A.
Professional activities
- Member of the Hong Kong Institute of Patent Practitioners and Hong Kong Institute of Trade Mark Practitioners
- Honorary Secretary and Treasurer of the Hong Kong Group of the Asian Patent Attorneys Association
- Member of the Law Society of Hong Kong’s Committee on Competition Law
- Honorary Legal Adviser to the Hong Kong Association of Pharmaceutical Industries
- Served from 2009-2012 at the Polytechnic University of Hong Kong as an Adjunct Professor Competition and Intellectual Property Law
Recognition
- Named as leading IP lawyer, Asia Legal 500, 2018 (“Vastly experienced… is very well respected particularly for matters at the intersection of IP and competition law”).
- Chambers Asia-Pacific, 2019 (a reviewer in a previous edition commented “I can call him any time and he’ll ring me back, we can discuss until we find a solution and he is very efficient”).
- World Trademark Review, 2017 (“Henry Wheare takes a big-picture perspective” and “adeptly shepherds brand owners through the complexities of Southeast Asian markets and beyond”).
- Recognized for many years by Managing Intellectual Property as an “IP Star” for Trademark and Patent (“Henry ably manages our expectations and offers business-feasible solutions”).
- Selected by Chambers Global 2022 as a “Leader in the Field” for Intellectual Property, as well as in previous years.
- Recognized by IAM Patent 1000 as one of the world’s leading patent practitioners (2017-2020).
- Named a “Litigation Star” by Benchmark Litigation in its 2020 edition.
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View AllSeth D. Levy
Partner / Leader, Intellectual Property Practice / Co-chair, Life Sciences Practice- Los Angeles
- Office:213.629.6161
- slevy@nixonpeabody.com
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