About the Course:
With more than a billion people and blistering economic expansion, China is an attractive destination to direct the licensing of technology. Chinese inventors are becoming among the world’s most prolific filers of patents. Indeed, China is now the world’s fourth most active filer of patents with the number of patent filings having grown by 56.2% in 2010. Thus, China represents a highly coveted market for both licensors and licensees. However, there are a variety of laws, regulations and currency control features that licensing professionals must be familiar with before they embark on licensing programs with Chinese counterparts.
Among the issues discussed during this session are:
- Which technologies are prohibited, restricted or permitted to be licensed into China
- Keeping your inventions confidential when negotiating with Chinese counterparts
- Structuring warranties and indemnifications
- Managing joint-development agreements with Chinese companies
- Understanding imperative issues related to the recordation of license agreements with the proper Chinese authorities
- Assessing the extent of withholding taxes on royalty payments
- Becoming familiar with the restrictions that apply to transferring improvements
- Learning about restrictions on the transferee acquiring competitive or similar technology from third parties
Course Leader: Steven Rizzi, Partner, Foley & Lardner LLP & Catherine Sun, Partner, Foley & Lardner LLP
Steven Rizzi is a partner in the IP Litigation Practice of Foley & Lardner LLP and is chair of the firm’s China Practice. He focuses his practice on patent litigation and counseling. Mr. Rizzi has represented clients in numerous patent litigations involving electrical, mechanical and computer-related disciplines, with a particular emphasis on matters involving the Internet, telecommunications and television-related technologies. He has experience in all aspects of patent litigation, including primary responsibility in patent litigations for numerous major corporations.
Catherine Sun, Partner, Foley & Lardner LLP
Catherine Sun is the managing partner of the Shanghai Office of Foley & Lardner LLP and chair of the firm’s Asia Practice. Ms. Sun is a member of the firm’s Intellectual Property Litigation and International Practices, and is also a member of the firm’s Life Sciences, Entertainment & Media and Automotive Industry Teams. She works with the firm’s clients on IP strategy, counseling and IP litigation in the United States (U.S.) and China, cross border M&A related IP, international technology transfer, licensing and portfolio management.