Henry J. H. Wheare

My focus

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.

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 mainland 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

Looking ahead

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.