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Dr. Frederick Ch'en

Partner
Tokyo

Dr. Frederick Ch'en
Languages
English, Japanese
Practice Group
Intellectual Property

For over a decade, Dr Frederick Ch'en has combined his scientific training and cultural background to advise on a broad range of contentious and non-contentious IP matters, especially in the life sciences area. His particular focus is multi-jurisdictional patent litigation, which also allows him to assist more pragmatically on IP licensing and IP aspects of transactions (e.g. M&A, private equity and corporate finance). A former research scientist at Oxford University (with the top First Class Honours degree in Molecular and Cellular Biochemistry (Balliol College) and a doctorate in Medical Sciences (Merton College), Frederick brings technical insight into clients' disputes or transactions coupled with cross-border perspectives that stem from having been raised in four different cultures. 

Frederick is a solicitor (England & Wales), U.S. attorney (California), U.S. patent attorney, a registered foreign attorney in Japan and a U.K. chartered biologist. He has been recognised as a leading practitioner by various publications, including Chambers Asia, Legal 500 and MIP. Chambers Asia calls him 'an exceptional IP specialist' and 'meticulous, responsive, and comfortable working on complex matters in multiple jurisdictions', and Legal 500 Asia Pacific an 'excellent advisor', 'responsive and experienced', 'diligent and talented' and someone who 'can easily understand the technical issues and is very good at figuring out a solution'. 

Prior to joining Hogan Lovells, Frederick was head of IP in the Tokyo office of another top-tier law firm (2010-2013), having initially trained and worked for seven years in the London office of a top-tier 'Magic Circle' international law firm. He is a member of AIPPI Japan, the Licensing Executive Society in Japan and Pharma Delegates. Frederick speaks English and Japanese.

'Frederick Ch'en leverages his strong scientific background to advise Japanese and Western life science companies on various IP concerns, including licensing matters and multi-jurisdictional patent litigation'

Chambers Asia Pacific 2015

Representative experience

Acting for various global originator pharmaceutical companies in relation to numerous patent disputes in Japan, including patent invalidation actions before the Japanese Patent Office, appeals before the IP High Court and patent infringement proceedings (as claimant and defendant) before the Tokyo District Court in conjunction with Japanese bengoshi lawyers. 

Acting for a Japanese pharmaceutical company in relation to its European strategy for filing Supplementary Protection Certificates in 26 countries.

Acting for a Japanese pharmaceutical company in relation to regulatory data exclusivity in Europe and the U.S.

Acting for a Japanese pharmaceutical company in relation to patent infringement proceedings against three generic companies in Hong Kong.

Acting for a Japanese life sciences company in relation to contract negotiations with a U.S. counterparty.

Acting for a Japanese life sciences company in relation to a patent licence from a U.S. counterparty.

Acting for a Japanese engineering company in relation to its licensing negotiations with a European university in respect of joint research, development and exploitation.

Acting for a Japanese electronics company in relation UK patent litigation proceedings.

Acting for a Japanese technology company in relation to its global trademark and brand licensing.

Acting for a European pharmaceutical company in relation to the assignment and licence-back of certain patents from a Japanese pharmaceutical company in the context of its multi-million US dollar acquisition by a U.S. pharmaceutical company.

Acting for Merck & Co., Inc. in relation to defending patent revocation proceedings in relation to its enzyme inhibitor product (finasteride), a ground-breaking case that changed the English law on the patentability of dosing regimens and the rules of precedent in the UK Court of Appeal.

Education and admissions

Education

  • Pg.D.I.P.L.P. (Intellectual Property Law & Practice), University of Bristol, 2006
  • Pg.D.L.P. (Legal Practice), distinction, Oxford Institute of Legal Practice, 2002
  • D.Phil. (Medical Sciences), University of Oxford, Merton College, 2001
  • Pg.D.L. (Law), distinction, Oxford Brookes University, 2001
  • M.Biochem. (Molecular and Cellular Biochemistry), First Class Honours, University of Oxford, Balliol College, 1997

Memberships

  • Member and Editorial Board Member, AIPPI (Japan)
  • Member, Licensing Executive Society (Japan)
  • Member, Pharma Delegates (Japan)
  • Member and Chartered Biologist, Royal Society of Biology (UK)
  • Member, Biochemical Society (UK)

Bar admissions and qualifications

  • England and Wales
  • California
  • U.S. Patent and Trademark Office
  • Japan - Daiichi Tokyo Bar Association (Gaikokuho Jimu Bengoshi)

Court admissions

  • Senior Courts of England and Wales

2018

Leading individual for Life Sciences in Japan

Chambers Asia Pacific

2012-2018

Leading individual for Intellectual Property in Japan

Chambers Asia Pacific

2017

Sole winner of Client Choice Award for Patents in Japan

International Law Office

2017-2018

World IP Review Leader

2017

Leading individual for Patent Transaction and Patent Litigation in Japan

IAM Patent 1000

2014-2017

IP Stars for Patents in Japan, Managing Intellectual Property

2015-2017

Listed in Best Lawyers in Japan

2017

"Frederick Ch'en is admired for his depth of knowledge in the life sciences sector. Sources remark: 'He is a very talented lawyer with a very good background in pharmaceuticals and bioscience'."

Chambers Asia Pacific

2017

"Newly featured life sciences sage Frederick Ch’en is the 'most practical of lawyers with a great business mind. He understands clients’ needs very quickly and always gives prompt, valuable and clear advice on Japanese law and customs'."

IAM Patent 1000

Latest thinking and events

Hogan Lovells Events

Going Global

Tokyo: 16 November 2017 at 09:30 - 18:00 ; Osaka: 13 November 2017 9:30 - 18:00

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