Douglas Clark

Partner

• Profile
• Experience and Key Cases ⬜
• Publications ⬜
• Accolades and Testimoials ⬜
• Memberships ⬜

 

Doug is a partner in the Disputes Resolution practice focusing on Mainland China and Hong Kong intellectual property disputes and arbitration.He was based in Hong Kong from 1993 to 2000 before practising for 11 years in Shanghai and then returning to Hong Kong to practice as a barrister. In 2021 he re-qualified as a solicitor and regularly appears in the higher Hong Kong courts as a solicitor advocate. He also as sits as an arbitrator or appears as counsel in arbitrations and is a Deputy Chairman of the Hong Kong Inland Revenue Board of Review.

In his career, Doug has handled the entire range of contentious IP cases including running complex multi-jurisdictional patent litigation (often in relation to standard essential patents); acting as arbitrator or counsel in numerous patent and high technology arbitrations; establishing new law in relation to anti- circumvention technologies; and numerous high value trademark and passing off cases. He has also obtained interim injunctions in relation to infringement of all types of IP rights including multiple Anton Piller orders and Mareva injunctions. Early in his career he handled numerous anti-counterfeiting cases in Mainland China and attended raids on hundreds of factories and warehouses.

Doug’s non-contentious IP experience includes negotiation and advising on technology transfer contracts; conducting patent and other intellectual property audits; and, freedom to operate analyses. He has also given expert evidence on Mainland Chinese and Hong Kong law in overseas court proceedings or international arbitrations.

Doug began his career in Hong Kong in 1993 with international law firm, Lovells. In 2000, he moved to Shanghai where he first worked on secondment with a Chinese firm and, in 2003, he established and was Managing Partner of Lovells’ Shanghai office for 7 years. In 2011 he returned to Hong Kong to practice as a barrister and in 2020 joined IP boutique Rouse as Global Head of Dispute Resolution. In that role he supervised multiple litigation matters in the Mainland of China.

Doug is the author of four legal texts: Patent Litigation in China, Intellectual Property in China, Hong Kong Intellectual Property and Civil Litigation in Hong Kong and numerous articles on intellectual property. He has also written a three volume history of extraterritoriality in China and Japan, Gunboat Justice.

Doug studied on exchange at high school in Kobe, Japan and on an Australian/Chinese government scholarship at Fudan University, Shanghai, China. He speaks, reads and write, both Japanese and Chinese.

Doug graduated with degrees in law and Asian Studies from the Australian National University in 1992. He studied Chinese and Chinese law at Fudan University in Shanghai from 1988 to 1990. He completed the Hong Kong Post Graduate Certificate in Laws in 1994.

 

• Profile ⬜
• Experience and Key Cases
• Publications ⬜
• Accolades and Testimoials ⬜
• Memberships ⬜

 

Hong Kong Litigation

Tsit Wing Group v TWG Tea – Acted as counsel for Defendant to in appeal to Court of Final Appeal (led by Martin Howe QC) on trade mark infringement and passing off (2016)

Wong To Yick v Singapore Medicine, solicitor advocate on appeal; counsel for Defendant in trial in Hong Kong for trade mark infringement and passing off; (2019-present)

Cullinan Anstalt v Sothebys Hong Kong Ltd & Ors – Trademark infringement claim in relation to the sale of a blue diamond for the second highest price ever (US$57M) (2022-present)

Two Way Media v PCCW, acting as counsel and solicitor advocate, on patent infringement proceedings relating to multi-casting (2019-2021)

Nagravision v Zhuhai Gotech -Acted as counsel for mareva Injunction and delivery up order to enforce US judgment for over US$100 million and under HK law for circumventing TV broadcasts (2017-2019)

Dyson Technology Ltd v German Pool – Acted as counsel for Defendant to discharge interlocutory injunction for patent infringement and oppose stay in favour of European Patent Office proceedings (led by Andrew Liao SC) (2016)

 

Arbitration

Counsel in HKIAC arbitration relation to license agreement relating to alleged misuse of trade secrets and patents in multiple jurisdictions (2019 to 2021)

Sole Arbitrator in Hong Kong International Arbitration Centre (HKIAC) claim relating to license agreement for confidential information and patents in multiple jurisdictions.(2019-2022)

Arbitrator in software pre-loading and distribution agreement, HKIAC,(2021)

Counsel in dispute relating to PRC patent ownership subject to HKIAC arbitration clause (2018-2019)

Party Appointed arbitrator in HKIAC arbitration proceedings relating to alleged misuse of trade secrets (2017)

TM Systems v Huajin Crane, lead counsel for Claimant in claim for breach of investment and technology transfer agreement, 2010, (SIAC)

Alstom v Insigma, co-counsel for Claimant in claim for breach of know how license, 2008 (SIAC)

 

Mainland China litigation

Acting for US toy manufacturer in relation to patent infringement in PRC (2021-2022)

ZTE v Vringo, Shenzhen Intermediate Court. Acted for defendant for alleged breach of PRC Anti- Monopoly Law in FRAND Licensing (2013-2016)

Solvay v Yangnong – Patent infringement cases in Shanghai Higher People’s Court and Tokyo District Court (2012-2014)

Qualcomm v Nokia, Acting for Qualcomm as lead partner in Asia in global standard essential licensing dispute with Nokia (2006 to 2008)

 

• Profile ⬜
• Experience and Key Cases ⬜
• Publications
• Accolades and Testimoials ⬜
• Memberships ⬜

 

Books

Intellectual property in Hong Kong, (2nd ed), LexisNexis, 2022

Intellectual property law in China, (2nd ed), Wolters Kluwer, 2021 (co-author)

Patent litigation in China, (2nd ed) Oxford University Press, 2015

Civil litigation in Hong Kong (6th ed), 2022

Gunboat Justice: British and American Law Courts in China and Japan, 1842 – 1943, Earnshaw Books, 2015 – A legal history of extraterritoriality in China and Japan.

 

Articles and other contributions

Hong Kong Civil Procedure (“White Book”), co-author of commentary on Competition Tribunal Rules and procedural provisions of Competition Ordinance (with Knut Fournier)(2021)

Bullen, Leake and Jacobs, Precedents and Pleadings – Hong Kong, co-author of chapters on patents, copyright, trade marks, registered designs, confidential information and passing off.(2020)

“After Unwired Planet: Why it’s now over to China’s courts to set global FRAND rates”, IAM, 26 September 2020

“Private But Not Confidential: The Impact of the PJS case in Hong Kong”, Hong Kong Lawyer, September 2016

 

• Profile ⬜
• Experience and Key Cases ⬜
• Publications ⬜
• Accolades and Testimoials
• Memberships ⬜

 

• IAM Patent 1000 (2023)
• Chambers & Partners, Greater China Region 2023: Intellectual Property
• Who’s Who Legal Thought Leader – Mainland China & Hong Kong (2022)
• Who’s Who Legal Recommended Global Leader (2022) : IP–Copyright; IP–Patents; IP–Trademarks; Life Sciences – Patent Litigation (2023)
• Who’s Who Legal Recommended National Leader: Mainland China & Hong Kong 2022 for Arbitration, IP-Patents; IP-Trademarks; Life Sciences

 

• Profile ⬜
• Experience and Key Cases ⬜
• Publications ⬜
• Accolades and Testimoials ⬜
• Memberships

 

• The Law Society of Hong Kong
• Fellow, Hong Kong Institute of Arbitrators
• Asian Patent Attorneys Association
• International Trademark Association