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Henry J. H. Wheare



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, China and elsewhere in Asia. He also has a particular interest in the intersection of antitrust and competition law with intellectual property law.

What do you focus on?

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.

What do you see on the horizon?

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 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.

Contact

Henry J. H. Wheare

Partner

Hong Kong

Phone: +85 2 21716450


Fax: +85 2 25210220

University of Cambridge, Jesus College, M.A.

England and Wales

Hong Kong

Solicitor of the High Court of Hong Kong

Solicitor of the Supreme Court of England and Wales (non-practising)

Henry is named as leading IP lawyer in many legal directories, including 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”); and 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”). He has been 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”). He was selected by Chambers Global 2019 and 2018 as a “Leader in the Field” for Intellectual Property. Henry is recognized by IAM Patent 1000 as one of the world’s leading patent practitioners (2017-2019)

Henry is a member of the Hong Kong Institute of Patent Practitioners and Hong Kong Institute of Trade Mark Practitioners. He is the Honorary Secretary and Treasurer of the Hong Kong Group of the Asian Patent Attorneys Association. He is also a member of the Law Society of Hong Kong’s Committee on Competition Law and Honorary Legal Adviser to the Hong Kong Association of Pharmaceutical Industries.

He served from 2009-2012 at the Polytechnic University of Hong Kong as an Adjunct Professor Competition and Intellectual Property Law.

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