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Jones Day

World IP Survey Coverage: Print-friendly version

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United States

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Texas

Editorial coverage

United States

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the US. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington DC and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the US Court of Appeals for the Federal Circuit. On August 16 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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China

Jones Day's presence in China dates back to 1999 with its first office in Shanghai. The firm opened its Beijing office in 2003 and in October 2012 the firm established its first IP agency to meet the growing demand for trade mark and copyright registration services. There are five partners who focus their time on China IP matters. Typical clients of the firm include well known international and China-based companies.

In late 2011, Daniel Mao was promoted to partner. Mao represents Chinese companies in their US patent prosecution and litigation disputes. Horace Lam's addition to the firm in 2011 has bolstered its trade mark and copyright capabilities, and this year the team continued to be active with many existing and new clients.

Haifeng Huang, based out of the Hong Kong office but practicing mostly in China is a name often mentioned by other lawyers as an outstanding and experienced IP practitioner.

In patents, managing partner Tony Chen led the team in obtaining a favourable ruling for Milliken in patent litigation. The action concerned enforcing a Chinese patent relating to telecom equipment against two local companies before the Beijing High Court. The judgment was in favour of Milliken, with the court issuing an injunction and damages.


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France

US firm Jones Day's IP team's "excellent reputation" in trade mark litigation derives from the work of Emmanuel Baud, who is also recommended in copyright. From the firm's Paris office, Baud leads a team of three associates which covers the full range of IP advice. BMW, Mini, Rolls- Royce, Abercrombie & Fitch, Dell and Heinz are some of its clients.

Strong peer feedback sees the firm move into tier 2 for trade mark contentious. "Emmanuel Baud is an excellent lawyer and he has some very big clients. Since he joined [from Latham & Watkins] Jones Day is much more present in the major cases," remarks one litigator.


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Germany

Jones Day has established a good name in patent litigation. The US firm's IP practice spans two offices in Munich and Frankfurt staffed by IP teams of 17 and eight lawyers respectively. It covers litigation, licensing and prosecution of all intellectual property in addition to unfair competition. Frankfurt partner Dorothée Weber-Bruls heads the firm's European physics patent team and Martin Weber, who is based in Munich, leads the European patent prosecution practice. The firm's clients come from a range of different sectors including financial services, pharmaceuticals, biotechnology, telecommunications, aviation, automotive and chemistry.


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Hong Kong

Jones Day has a highly-respected reputation among practitioners and works closely with its China office. The team is led by four established partners mostly covering contentious trade mark and patent cases. Clients include Ease Ventures, HK Applied Science and Technology Research Institute and ePals.

Haifeng Huang is a name often mentioned by other lawyers as an outstanding and experienced IP practitioner. Peggy Cheung and Phillip Georgiou represented Ease Ventures in a cross-border arbitration dispute with Fancl as to the validity of an exclusive Asia-wide distributorship right and trade mark licence.

In the past 12 months the team has been involved in various transactional IP cases. Anita Leung, Huang and Li Chiangling acted on behalf of ePals, an education media company, in preparing its joint venture contract with NeuEdu. In another case, Cheung assisted HK Applied Science and Technology Research Institute (ASTRI) in its preparation of licence agreements and contract service agreements in relation to IP rights owned and developed by ASTRI.


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Japan

Jones Day has six Japanese attorneys working in IP handling various types of litigation, prosecution and transactional matters. Partner Michiru Takahashi has been praised for her litigation abilities in trade marks and copyright.

The firm's strength in patent contentious issues is illustrated by its successfully defence against a claim of patent infringement against its client, Dell, before the Tokyo District Court. The plaintiff has since filed another patent infringement suit against Dell at the Osaka District Court. Takahashi and partner Nobutoshi Yamanouchi are representing several clients in copyright infringement cases.


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Taiwan

Full-service law firm Jones Day has a strong reputation for its IP litigation work. The team is comprised of seven IP lawyers operating out of its office in Taipei. Notable clients include Richtek Technology and Princeton Technology.

This year, the firm added Douglas Weinstein after the departure of two other partners. Weinstein's expertise is in patents and trade secret matters. He has considerable experience in US and Taiwan IP law, and will support Taiwanese clients with IP issues relating to the United States. Managing partner Jason Chen has been singled out by peers for his exemplary status in the market. One notes that "Chen is a leading lawyer in patent infringement and licensing in Taiwan".

A highlight is the firm's representation of a world-leading Taiwanese integrated circuit design company in criminal and civil complaints alleging trade secret theft. The case relates to a mobile phone chip that was illegally taken by former employees to a competitor. The matter was resolved by settlement but is an important case that will have an effect on the employment practice of high-tech companies in Taiwan.

In copyright and trade marks, the team is representing Standard Foods in a matter alleging criminal copyright and trade mark infringement. Chen and his team successfully protected their client's position in the market and stopped the infringer from further manufacturing the infringing goods.


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California

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the U.S. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington, D.C. and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and, more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. On August 16, 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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District of Columbia

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the U.S. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington, D.C. and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and, more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. On August 16, 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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Illinois

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the U.S. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington, D.C. and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and, more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. On August 16, 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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New York

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the U.S. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington, D.C. and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and, more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. On August 16, 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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Ohio

Since its founding in Cleveland in 1893, Jones Day has grown to become one of the largest full service firms in the world, employing more than 2,400 lawyers in 35 offices around the globe. A formidable corporate law firm, Jones Day's footprint in intellectual property is deep and wide-ranging. Of the 275 IP practitioners, 29 are based in Cleveland, providing clients with a full range of IP services including litigation, prosecution, licensing, technology transfer, and IP counseling.

In a recent, closely-watched case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day prevailed on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. The court confirmed that isolated molecules of human DNA are patentable subject matter. Myriad owns patents relating to its BRCA1 and BRCA2 genetic-analysis products and to diagnostic and other methods for detecting a predisposition to certain types of cancers. Other Jones Day clients include SAP, SanDisk, MGM Resorts International, and Hilton Worldwide.

David Cochran and Calvin Griffith are two attorneys singled out for praise in Ohio. Griffith, one of the state's better-known litigators, has frequently handled high profile contentious matters over the course of his career. In recent years he has secured multiple wins on behalf of clients Dupoy Spine and Brasseler. In the summer of 2012, Griffith successfully represented Dupoy in the Cuyahoga County Court of Common Pleas in a trade secrets misappropriation matter against former employees. The court granted Dupoy's request to preliminarily enjoin three former sales representatives from competing in their old territory and ordered that misappropriated trade secret materials be destroyed.


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Texas

Jones Day is an international firm with more than 300 IP attorneys worldwide and 15 offices here in the U.S. Key domestic offices for the IP group include Cleveland, New York City, San Diego, Silicon Valley, Washington, D.C. and Chicago. The firm is often highlighted by peers for strong patent prosecution and litigation practices and, more generally, leveraging deep IP knowledge with the broad-based capabilities of a full-service general practice firm. Expertise in the bio-life sciences realm is particularly strong. In a widely reported case addressing fundamental questions of patent eligibility for isolated genetic material, Jones Day lawyers secured a victory on behalf of Myriad Genetics on appeal in the U.S. Court of Appeals for the Federal Circuit. On August 16, 2012, the Federal Circuit issued its decision and reaffirmed prior rulings determining that Myriad's patents on specific compositions of matter are patent-eligible. Other notable clients include Marine Polymer Technologies, Mount Sinai School of Medicine, Sanofi, Celgene Corporation and Micron Technology.

Clients consistently praise the firm's IP footprint across the world. "They do an excellent job for us," says one client who uses the firm for patent prosecution work. "One of the things you look for in a patent firm is breadth of coverage in terms of jurisdictions and they have a very strong international presence. When you have a technology that is likely to be patented and made available in Europe and elsewhere, you look to a firm like Jones Day." Says another client: "One of the important things with any service function is not just narrowly focusing on a particular task at hand, but understanding the context of where that fits in in the bigger picture. Jones Day gets this. "


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Firm contact

This firm does not have a profile in the 2013 Handbook