Webinar
Select IP with Hogan Lovells | Webinar no. 19: Cross-over topics: Patent & regulatory topics I
22 March 2023 | 3:00 PM - 4:30 PM (JST)
Dr. Frederick Ch'en
Office Managing PartnerTokyo
Email [email protected]hoganlovells.com
Phone +81 3 5157 8263
Fax +81 3 5157 8210
LanguagesEnglish, Japanese
Practice groupIntellectual Property, Media, and Technology
...armed with a background in medical sciences, Ch’en tackles his instructions in a 'responsive and timely' manner, 'cooperating seamlessly with both local and foreign peers.'
IAM Patent 1000, 2018
For over 15 years, 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 multijurisdictional 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.
Awards and recognitions
2023
Band 1 for Japan Intellectual Property: International (9 years ranked)
Chambers Asia-Pacific
2023
Band 1 for Life Sciences in Japan (6 years ranked)
Chambers Asia-Pacific
2023
Band 1 for Japan Intellectual Property: International (8 years ranked)
Chambers Global
2023
Leading Individual for Intellectual Property in Japan (5 years ranked)
The Legal 500 Asia-Pacific
2017-2022
Leading individual for Patent Litigation and Patent Transactions in Japan
IAM Patent 1000
2014-2022
Patent Star in Japan
Managing Intellectual Property IP Stars
2022
Sole winner of Client Choice Award for Life Sciences in Japan
Lexology
2017, 2018, 2021
Sole winner of Client Choice Award for Patents in Japan
International Law Office (now Lexology)
2023
Global Elite Thought Leader - Life Sciences - Patent Litigation
Who's Who Legal
2022
Global Elite Thought Leader in Life Sciences - Patent Litigation
Who's Who Legal Japan
2017-2022
Leading individual in Intellectual Property
Who's Who Legal Japan
2018-2022
Leading individual in Life Sciences
Who's Who Legal Japan
2021
Named as one of Asia’s Top 15 IP Lawyers
Asian Legal Business
2020
Foreign Lawyer of the Year
Asian Legal Business Japan Law Awards
Education and admissions
Education
Pg.D.I.P.L.P. (Intellectual Property Law & Practice), University of Bristol
Pg.D.L.P., Oxford Institute of Legal Practice
D.Phil., University of Oxford, Merton College
Pg.D.L., Oxford Brookes University
M.Biochem. (Molecular and Cellular Biochemistry), University of Oxford, Balliol College, First Class Honours
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
Solicitor, 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
Representative experience
Acting for various Japanese and non-Japanese companies with commercial disputes, most recently arbitration matters (ICC and LCIA) in the Life Sciences and Energy sectors, as well as civil litigation in conjunction with Japanese bengoshi
Acting for various global originator pharmaceutical companies in relation to numerous patent disputes in Japan, including patent invalidation actions before the Japan 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 to 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
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