Alan Adcock

Position:  Deputy Director

Department: Intellectual Property

Nationality:  American

Languages:  English and Mandarin Chinese

• 1998, J.D., Syracuse University College of Law/Columbia Law School, Syracuse, N.Y./New York, N.Y., U.S.A. Certificate, Technology Transfer and Management; Goldie Memorial Award
• 1995, Master of Arts (Chinese Studies), Honors Graduate, University of Hawai'i, Honolulu, Hawai'i, U.S.A.
• 1991, Bachelor of Arts (History, Biology), Honors Graduate, Wingate College (now Wingate University), Wingate, North Carolina

Professional Qualifications:

Admitted to practice law:

• New York (January 1999)
• New Jersey (January 1999)
• United States District Court, NY Southern and Eastern Districts (January 1999)

Key Experience:

• IP Acquisitions - Lead lawyer in multi-jurisdictional teams involved in acquisitions of major multinational brands and other intellectual property assets with deal values ranging from US$2 million to US$20 million. In one acquisition, my due diligence uncovered several unsecured "future markets" for client's edible oil business which seller had misrepresented resulting in a substantial purchase price decrease in favor of client. On another deal, I shadowed advice from buyer client's New York lawyers advising proceeding with a polymer technology acquisition and advised against the buy owing to seller's incomplete disclosure regarding inventorship and commingled state owned assets resulting in my further advice for stronger warranties and undertakings from buyer along with further disclosure and assignment agreement with past involved technicians.
• Licensing and Assignments - Strategic structuring, negotiating and drafting IP licensing and assignment deals including letters of intent, sale and purchase, confidentiality and non-disclosure with focus on acute awareness of client's goal while creating win-win situations rather than one-sided agreements which inevitably end up with licensees breaching terms in order to make up for imbalances imposed under license terms.
• JV Establishments - Advising and assisting in-house counsel at Fortune 100 multinationals in their joint venture establishments with Chinese and Hong Kong entities where my interpersonal skills and Mandarin speaking skills were critical in negotiations and completions with deal values ranging from US$500,000 to US$1.3 billion. After successful establishment of one JV in Shanghai, client further instructed me on buying out Chinese partner which was the first post Circular 101 deal in Shanghai for open bidding of state assets pledged to JVs. Circular 101 was Beijing's response to the Shanghai pension fund corruption scandal of 2006. Open bidding terms were agreed with Chinese partner and the State Owned Assets Valuation Office and client acquired the state assets.
• IP Due Diligence - Fieldwork and Data Room coordinator, report drafting and strategic curing of discovered defects prior to IP and other asset acquisitions.
• Clinical trials, site selection, informed consent and data ownership/assignment.
• Supply, Distribution, IP and Compliance Audits - Developing new and localizing existing audit protocols for various industries and getting local management buy-in to insure smooth conduct of audits. Report drafting and corrective strategies developed and implementation coordinated and checked.
• IP Litigation - Handling attorney in numerous civil litigations involving trademark, copyright, patent, unfair trade competition and domain names for Fortune 100 multinationals in China, Hong Kong, South Korea and the Philippines.
• IP Administrative actions - Handling attorney for administrative actions in China, Hong Kong, Macau, Japan, South Korea, Thailand, Malaysia, Indonesia, the Philippines and Vietnam. Causes of action included various IP infringements and regulatory infractions such as labelling, advertising, product handling/warehousing, product registration, taxation and import/export violations. Two cases were precedential including one in China which adopted the "separability doctrine" distinguishing the functional from the aesthetic elements of a copyright work and the first successful "administrative pipeline protection" pharmaceutical case in China.
• Regional investigations - Coordinating numerous Asia Pacific investigation and legal firms for IP investigation and IP enforcement.
• IP Registrations, Oppositions, Cancellations, Invalidations, Clearances and Co/Re-branding including Patent FTOs and Infringement Assessments.
  

Experience and Description of Major Areas of Legal Work Handled:

• Senior Associate/Partner Invitee, Commercial Intellectual Property Department, Rouse & Co International, Shanghai/Hong Kong, September 2002-November 2007
  • Head of the Commercial IP Department in Hong Kong after serving as senior foreign lawyer within the China IP Commercial Department in Shanghai.
• Associate, Intellectual Property/Information Technology Group, Lovells, Hong Kong/Shanghai, February 1999-July 2002
• Handled IP registration, enforcement/litigation and commercial matters in Hong Kong and China.
• Lawyer, Legal Group, Goldman Sachs & Co, New York, August 1998-February 1999
  • Junior regulator on swaps/derivatives trading desk dealing primarily with Chinese trades.
• Material Transfer Agreements Specialist, NYU Medical Center Office of Industrial Liaison, New York, January 1998-May 1998
  • MTA negotiator and draftsman for technologies coming into and going out of NYU laboratories.
• Summer Associate, Lovell White Durrant (now Lovells), Hong Kong, Ho Chi Minh City, May-August 1997
  • IP registration, IP litigation, IP commercialization, IP enforcement support to IP Group including daily visits to Legislative Council to collect freshly amended legislation in run-up to Hong Kong handover to PRC.
• Legal Intern, US-China Business Council, Hong Kong, May-August 1996
  • Researched and wrote Members Guide to Hong Kong IP legislation changes post-1997 handover to PRC including interviews with Members on their positions to changes for White Paper to Hong Kong Government.
• Legal Intern, Carlsmith, Ball, Wichman, Case, and Ichiki, LLP, Honolulu, September 1994-August 1995
  • Worked with Chinese-American partner in deal facilitation and interpretation with visiting Chinese business groups for State of Hawai'i.
    

Professional Experience:

• Non contentious
  • Acquisitions of global trademark and intellectual property portfolios including sale and purchase agreement negotiation and drafting, due diligence, post completion assignment recordals globally, post completion licensing, manufacturing and distribution structuring and agreement drafting
  • IP licensing, trademark assignment and co-existence agreements including local recordal of agreements with relevant authorities; non-disclosure of business secrets and confidentiality agreements
  • Joint venture establishments in China in such sectors as industrial lubricants, wood preservatives, nickel foam and polymers
  • Patent and trade secret due diligence on various technologies and portfolios including pharmaceuticals, polymers, chemicals, electric power tools, electronic sensors and nickel foam
  • Drafting and negotiating a Memorandum of Understanding with the Beijing Intellectual Property Conference to provide special treatment for US technology client's know how, trade secret and patent to facilitate client's US$1.3 billion facility establishment
  • Supply chain audits and management including manufacturing and distribution agreements
  • Hong Kong JV establishment, retail operations establishment in China and global distribution and retail agreements for Japanese luxury goods company during one year secondment
  • Clinical trial regulations and protocol vis-a-vis the Helsinki Declaration
  • Intellectual property registrations, oppositions, cancellations, clearances and re-branding
  • Technology transfer agreements for such sectors as electronics, software, aerospace, telecommunications and petrochemicals
  • Infringement Assessment and Freedom to Operate reports and Statements of Confirmation
  • Computer software escrow and provision licenses
  • Y2K legal audit for a major public transport company in Hong Kong
• Contentious
  • Copyright/applied art administrative action in China for US computer accessories designer/manufacturer (China's first successful case)
  • Trade secret China actions for industries including paper, railways and electrical motors
  • PRC patent litigation administration including evidence collection and notarization, infringement assessment, sample analysis, interlocutory injunction preparation through to litigation (agrochemicals and polyvinylchloride patents)
  • Trademark and unfair competition infringement civil suits in PRC Intermediate People's Courts for US sunglass manufacturer and US food products manufacturer
  • Trademark infringement and unfair competition civil suit
  • Copyright infringement civil suit for Spanish figurine manufacturer
  • Domain name recoveries throughout Asia Pacific
  • Cancer therapy drug enforcement action handled for major US pharmaceutical company in three PRC cities through State Food & Drug Administration
  • Anti-cholesterol drug administrative "pipeline" protection action handled for Japan's largest pharmaceutical company through the PRC State Food & Drug Administration (first successful in China)
  • Trademark, copyright, patent, design and unfair competition administrative and Public Security Bureau IP enforcement actions in the PRC for clients in sectors including software, pharmaceuticals, chemicals, auto parts, luxury goods and toys. Administrative agencies worked most closely with include local, provincial and State Administrations for Industry & Commerce, National Copyright Administration, State Intellectual Property Office, Quality and Technical Supervision Bureau, Ministry of Health, State Food & Drug Administration, and PRC Customs
  • Handled Hong Kong civil actions including preparation of pleadings, affirmations and other court documents
    

Membership in Professional Societies and Other Organizations:

• New York State Bar Association
• New Jersey State Bar Association
• Inter Pacific Bar Association
• AIPPI (International Association for the Protection of Intellectual Property)
• The American Chamber of Commerce in Thailand

Honors/Recognitions:

• Identified by the AsiaLaw Leading Lawyers Survey as one of Asia's leading business lawyers in the area of Intellectual Property, 2005, 2006, 2007, 2008, 2009
• Identified as a highly recommended patent litigator by IAM Life Sciences 250 – The World's Leading Life Sciences Patent Litigators 2010
• Honorary Professor, Beijing Communications University

Books and Articles:

• "Rogue Distributors and Hijacked Certificates", Informed Counsel (Tilleke & Gibbins client newsletter), May 2010.
• "Rogue Distributors and Hijacked Certificates – Preparing for the Worst from Your Agrochemical Partner", T-AB: Thai American Business, Journal of the American Chamber of Commerce in Thailand, May 2010.
• "Due Diligence in Asian IP Acquisitions – How Much Is Enough?", Intellectual Property 2010 Digital Guide, Executive View Media Limited, March 2010.
• "IP Acquisitions in China", Chamber Eye, Magazine of the British Chamber of Commerce Guangdong, 2009 Autumn Edition, November 2009.
• (With Clemence Gautier), "Clinical Trials in Asia: Overcoming Regulatory and IP Roadblocks", Pharma Focus Asia, Issue 12, October 2009.
• (With Clemence Gautier), "Health care roadblocks need to be addressed", Life Sciences IP Focus, 7th Edition, Managing Intellectual Property, October 2009.
• (With Christine Faller), “Acquiring IP in Asia: Due Diligence is Essential”, Thailand: IP Developments (T&G client newsletter), September 2009.
• "Legislative Developments Demand IP Owners' Attention", Asia-Pacific & Middle East IP Focus, 7th Edition, Managing Intellectual Property, September 2009.
• (With Clemence Gautier), "Market Insight - Clarity Needed Over ASEAN Regulators' Position on IP", Scrip World Pharmaceutical News, August 5, 2009.
• (With Paul Russell), "Outsourcing Product Registration in Asia - Why Expert Assistance Helps!", Thailand: IP Developments (T&G client newsletter), June 2009.
  
• (With Rebecca Ordish), "Graduating from China's IP Classroom", Asia IP, Vol. 1 Issue 4, April 2009.
• "Quality Matters", World Intellectual Property Review, November/December 2008.
• "Caveat Emptor! Acquiring Asian technology", IP World, WORLDextra: IP Supplement, September 2008.
• (With Siraprapha Rungpry and Nguyen Thi Phi Nga), "Pharmaceutical industry in Asia", Intellectual Property in Asia, BNA International, August 2008.
• (With Siraprapha Rungpry), "Thailand Pharmaceutical Update", Life Sciences Intellectual Property Review 2008, published in June 2008.
• (With Rebecca Ordish), China's IP Challenges & Solutions: An Essential Business Guide, published by John Wiley & Sons (Asia) Pte Ltd, March 2008.
• "Top 10 Pitfalls in Asian IP Deals", Global Intellectual Property Asset Management Report, October 2007.
• (With Nicholas Redfearn), "IP Acquisitions in Asia", Asialaw, June 2007.
• "Art of the State: Acquiring Chinese Technology", China Business Review, March-April 2007.
• (With Nicholas Redfearn), "Made for Sharing?, Copyright World, April 2007.
• "China Franchising", Asia Franchise & Business Opportunities, January-March 2007.
• "Intellectual Property", The China Business Handbook 2007; The China Business Handbook 2008.
• (With Nicholas Redfearn), "Trade Secret Protection in China and the Asia Pacific Region", Journal of the Japan Intellectual Property Association, Volume 6 No 2.
• "Music Industry Increasingly Aggressive in Protecting IP Rights in HK and China", e-commerce law & policy, February 2006.
• "Copyright, music and the net: Baidi.com...China's Grokster?", e-commerce law & policy, October 2005.
• "Solutions for exporting R&D from China", Managing Intellectual Property, July/August 2005.
• "Commercialization of IP in China", Global Intellectual Asset Management Report, February 2004.
• "Opportunity Knocks for IP Owners in China", Intellectual Asset Management, February/March 2004.
• "Updating IP: Shanghai Addresses its own IP Concerns", China Law & Practice, July/August 2003.
• "Getting Tech Transfer Right in China", Managing Intellectual Property, March 2003.
• (With Henry JH Wheare), "Competition 2001: An Asian Perspective", International Financial Law Review, 2001.
• (With Douglas Clark), "Intellectual Property in China", IP Profiles 2001, Asia Law & Practice, 2001.
• (With Gabriela Kennedy), "Licensing and Pledging of Intellectual Property Rights in China", China Troubleshooter, Asia Law & Practice, 2000.
• (With Henry JH Wheare), "An IPR Overhaul A look at Hong Kong's revamped copyright, patent, and design laws" (http://www.chinabusinessreview.com/members/9801/adcock.html), 1999.

Recent Professional Speaking:

• "Mastering Legal Framework Governing the Pharmaceutical Industry", Strategic Healthcare Management & Informatics 2010, Bangkok, July 21, 2010 .
• "Managing Outside Counsel", Inaugural China-International IP Forum – Protecting China’s Innovation Overseas, Beijing, China,  June 30, 2010.
• "South East Asia Focus”, Inaugural China-International IP Forum – Protecting China’s Innovation Overseas, Beijing, China,  June 30, 2010.
• "Intellectual Property Law Issues Arising in Cross Border Transactions", State Capital Group 2010 International Meeting, Dublin, Ireland, June 18, 2010.
• "IP Commercialization and Licensing", Guest Lecturer, Faculty of Law, Chulalongkorn University, Bangkok, December 29, 2009.
• "Top 10 Pitfalls in Asian IP Acquisition Deals", Pharmaceutical IP Licensing, Singapore, November 23-24, 2009.
• (With Clemence Gautier), "Overcoming regulatory and patent roadblocks for clinical trials in Asia: China, Thailand & Vietnam", 2nd Annual Pharmaceutical Regulatory Affairs Summit, Singapore, August 25, 2009.
• "Top 10 IP mistakes SMEs make in China and How you can avoid them", Annual iadvisory China Seminar, Singapore, August 25, 2009.
• "Preliminary Arrangements: MOU, Letter of Intent, Non-Disclosure Agreement", Intellectual Property Professional Forum # 4, Bangkok, August 7, 2009
• "IP Cornerstones for a solid economic foundation: The case of China & Thailand", ASEAN Intellectual Property Association, Rangoon, Myanmar, June 27, 2009.
• "Communicating Effectively with Clients and Managing Client Expectations" (two-part presentation), Wednesday Forum, Tilleke & Gibbins International Ltd., March 25 and April 29, 2009.
• (With Siraprapha Rungpry), "Role Play On Current & Future Implementation of R&D Regulations & Intellectual Property Rights in Thailand", presentation at Successfully Evaluating, Measuring & Managing R&D & Innovation Seminar organized by Asia Business Forum (Thailand) Ltd., Bangkok, March 11, 2009.
• "Lawyer (Alan Adcock)/Client (EVISU) Case Study: Plugging IP Gaps in Your Supply/Distribution Chain", APEC/USPTO Supply Chain Integrity Seminar, Hong Kong, January 8-9, 2009.
• "Drafting Intellectual Property (IP) Intensive Agreements", Asia Business Forum, Bangkok, December 17-18, 2008.
  
• "Top 10 Pitfalls in Asian IP Acquisition Deals", IP Law Asia Summit, Singapore, November 25-27, 2008.
• "China IP and Asian Regional Considerations", Inter-Pacific Bar Association 17th Annual Meeting & Conference, Beijing, April 20-23, 2007.
• Panelist, IBC Legal Conference: Protecting & Enforcing IPR in China, London, February 8, 2007.
• "Strategic R&D Management and Product Innovation", Avail Corporation Conference Series, Shanghai, February 5-6, 2007.
• "Effective Approaches to Protect Your Intellectual Assets", Hong Kong Intellectual Property Department Conference on Intellectual Asset Management (IAM), Hong Kong, November 22, 2006.
• "China Franchising: Seeing the IP Angle", International Franchise Academy, Beijing Normal University, Zhuhai, November 12, 2006.
• "Internal Measures to Safeguard Trade Secrets", China Intellectual Property Summit, Shanghai, October 24, 2006.
• "Beyond the Law: Building Relationships and Establishing Goodwill as Keys to Effective IP Enforcement in China and Abroad", American Conference Institute Conference on Anti-Counterfeiting & Branding Integrity Protection, New York , July 13, 2006.
• "PRC Patent Enforcement and Litigation: Understanding the Legal & Commercial Realities before Deciding to Fight", Quality Brands Protection Committee (QBPC) Annual Meeting, Beijing, April 11, 2006.
  

Interviews:

• "Interview with iadvisor: Alan Adcock", conducted by iadvisory (an initiative by International Enterprise Singapore) regarding the importance of intellectual property protection in China, January 12, 2010.
• Interviewed by Samantha Birch for article "Registration Firms Explore Outsourcing Options", World Intellectual Property Review, January/February 2009

Practice Areas:  Intellectual Property, Commercial, Products Liability

E-mail:

• alan.a@tillekeandgibbins.com

Telephone: +66 2653 5871

Facsimile:  +66 2653 5678

(June 2010)