Introduction
Intellectual Property (IP) is crucial to the success of most modern businesses. Individual creators and start-ups are particularly reliant on IP to develop and build their businesses.
The strategic management of the registration, protection and commercialisation of IP rights is vital to the success.
Tanner De Witt’s IP team provides services across the entire spectrum of IP services. Our Dispute Practice advises and acts for clients in negotiations and mediations as well as arbitration and litigation. We handle cases in the Hong Kong courts and international arbitrations involving Mainland China as well as other jurisdictions.
Our fintech, technology, corporate and commercial practices all advise on licensing, technology transfer and other IP related matters working closely with our dedicated IP team.
Key Contacts
Services
Contentious
- Patent infringement proceedings
- Patent validity proceedings
- Patent licensing disputes
- Standard Essential Patent and FRAND disputes
- Copyright and technical protection measures
- Trademark and design infringement and validity
- Proceedings before patent and trademark registries.
- Interim injunction applications
- Asset Freezing orders (Mareva Injunctions)
- Search and seizure order (Anton Piller orders)
- Third party discovery orders (Norwich Pharmacal Orders)
Non-Contentious
- Acquisition and disposal of intangible assets
- Purchase and sale of businesses with intellectual property assets
- Licensing and sub-licensing
- Franchising, distribution and agency arrangements
- Management of intellectual property rights
- Intellectual property audits and review
- Intellectual property registration and portfolio building
Experience
Contentious
- Acting for video game manufacturer in High Court infringement proceedings relating to slae of devices designed to circumvent technical protection measures
- Advising on potential patent infringement proceedings relation to a construction method.
- Acting for European fashion company in relation to sale of copy clothin in first instance and in Court of Appeal in
- Acting for plaintiff in trade mark infringement claim in Hong Kong High Court in relation tosale of diamond for second highest price ever
- Acting for large American jewellery and fashion brand in action against Hong Kong based online platform distributing counterfeit or paralell imports world wife
- Acting for AI developer to defend allegations of copyright infringement.
- Acting for a number of rights holdings in actions against “shadow companies” incorporated with a name the same or similar to the plaintiff’s brands.
- Acting for multinational licensor in relation to breach of IP licensing agreement.
- Acting for Hong Kong/PRC product developer to defend allegation of software infringement.
- Obtaining numerous disclosure orders against banks and third parties relating to infringement of IP rights
- Acting in appeals to High Court from Trade Marks Registry
- Obtaining numerous interim injunctions orders including search and seizure orders and asset freezing order
- Sitting as arbitrator in software licensing dispute involving licensing in Mainland China
Non-contentious
- Acting for client on long-term basis to manage its international brand portfolio.
- Acting for software company on international licensing deal.
- Acting for numerous entities in transactions involving the acquisition, licensing or transfer of intellectual property
- Advising on co-existence agreements.
Accolades/Testimonials
“Doug is a highly intelligent and innovative partner who will go the extra mile.”
“Doug is extremely experienced, very creative and very strategic.”
Chamber & Partners Greater China Region 2025
“He’s an expert in IP in the Greater China region. He’s practical, super knowledgeable, and he’s trilingual.”
Chamber & Partners Greater China Region 2024
IP litigation partner Douglas Clark is ‘is held in high esteem for the depth of his experience in IP litigation and arbitration, most notably in cross-border patent infringement matters. Clients also benefit from his vast experience as a barrister.