Xiaofan is a qualified China Patent Attorney with more than 20 years’ experience in IP. Xiaofan’s practice focuses on both contentious and non-contentious strategic patent portfolio management, including client counselling on patent prosecution, dispute resolution/litigation and commercialisation advice. He has successfully represented international and Chinese clients in patent invalidation, patent infringement and administrative cases in China.
Xiaofan frequently provides clients with opinions on patent validity, patent infringement and freedom-to-operate analysis matters. He also advises on agreements for transferring or licensing patents, non-disclosure agreements/trade secret issues and commercial aspects of patent rights. Xiaofan’s experience and track record in contentious work brings a valuable dimension to the non-contentious patent prosecution and advisory work he undertakes for clients. His technical fields include mechanical engineering and manufacturing, laser imaging and printing/packaging technology, computer science, internet technology, e-commerce, and business methods. Xiaofan has been admitted to practice before the CNIPA since 2006 and is one of the first patent litigators to be officially registered with the Supreme People’s Court in China.
Published articles
- September 2020
Intellectual Asset Management, Why Daimler would have the upper hand if its patent fight with Nokia were taking place in China - September 2020
World IP Review, China dominates blockchain patent applications as regulations are streamlined - Spring 2020
Managing Intellectual Property, Time and data: striking a balance in China - 2020
IAM Yearbook 2020, China establishes framework for advanced IP regime - November/December 2019
Managing Intellectual Property, Patent term extensions on the horizon - 2019
IAM Yearbook 2019, China’s innovation rise – patent landscape review and outlook - September 2018
Managing Intellectual Property, Creating an effective FinTech IP strategy - 2018
Asian-Mena Counsel, Volume 15, Issue 8, Big steps, long strides: China’s progress on intellectual property rights - March 2017
Lexology, Green light for business method patents - September 2018
The Legal 500 & The In-House Lawyer Intellectual Property Comparative Legal Guide, The China Chapter - 2015
Book translation: Intellectual Property Strategy (Author: John Palfrey, The MIT Press, 2012), Chongqing University Press
Education
-
2024
MSc in Information Technology, University of Aberdeen -
2008
Graduate Diploma of Law (GDL), College of Law, York -
2003
LLM (Intellectual Property), University of Edinburgh -
2002
MPhil in Publishing Studies, University of Stirling -
1994
BEng in Printing and Packaging Engineering, Xi’an University of Technology, China
Career history
- 2024 — Present
Partner, EIP - 2017 — 2024
Partner, AWA - 2008 — 2017
Partner, Liu Shen & Associates - 2003 — 2007
Patent Attorney, Jeekai & Partners - 1997 — 2001
Technical Support Engineer, ECRM - 1994 — 1997
Printing system technician, Xi’an Xinhua Printing House
Awards and recognition
- Intellectual Asset Management – IAM Patent 1000: Recommended Individual for Prosecution (2019 - 2024)
- Intellectual Asset Management –IAM Patent 1000: Recommended Individual for Transaction (2018)
- The Legal 500 Asia-Pacific: Recommended Lawyer (2020 -2024)
Languages spoken
- Chinese (Mandarin)
- English
Speaking engagements
- November 2022
Webinar series of the Norwegian Industrial Property Office (NIPO), Effectively Navigating IP Enforcement in China - March 2022
The Hong Kong Corporate Counsel Association (HKCCA) webinar, China Intellectual Property Issues: Troubleshooting for International Companies with R&D/ Manufacturing/ Sales activities in China - September 2021
IPWatchdog webinar, China's New Patent Law: Explaining Substantial Changes Years in the Making - June 2021
Seminar organised by the EU SME Centre/ the China IPR SME Helpdesk/ the European Chamber/ the Swedish Chamber, Overview of the Revised Patent Law and Copyright Law - December 2020
Webinar series of Swedish China Trade Council , Is China’s Patent System as Bad as You Think? – Separating the Myths from Reality (An International Viewpoint from within China) - October 2017
Seminar organised by the European Chamber and the Swedish Chamber, Patent Protection & Enforcement in China: A Discussion on the Latest Developments and their Practical Impact from a Patentee‘s Perspective
Specialisms
Digital
- Applied maths & cryptography
- Consumer electronics
- Digital health
- Fintech
- Gaming and graphics
- Software
- Video codecs
Dynamics
- Mechanics
HealthTech
- Digital health
- Medical devices
- Surgical tools and implants