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      Douglas Clark

      Principal, Global Head of Dispute Resolution

      Hong Kong SAR

      +852 2302 0832

      Biography

      Doug is a Principal and Global Head of Dispute Resolution. He has practiced in Asia for close to 30 years.

      Doug is a widely respected litigator and arbitrator with more than a quarter of a century experience handling IP litigation and arbitration in East Asia as well as coordinating global cases.  He is a solicitor advocate of the High Court of the Hong Kong SAR.

      Doug has handled the entire gamut of contentious IP cases including raiding factories in China (in the early part of his career); obtaining civil search and seizure (Anton Piller) orders and freezing (Mareva) injunctions; establishing new law in relation to anti-circumvention technologies; running complex multi-jurisdictional patent litigation relating to standard essential patents; and sitting as an arbitrator and appearing as counsel in high technology arbitrations.

      His non-contentious experience includes advising on data security and privacy, technology transfer; and, conducting patent and other intellectual property audits.

      Doug, who is originally from Australia, studied as an exchange student at high school in Japan and on a Sino-Australian government scholarship at Fudan University in Shanghai. He speaks, reads and write, both Japanese and Chinese.

      Doug began his career in IP in Hong Kong in 1993 with a large international law firm. In 2000, he moved to Shanghai, initially on secondment with a local firm and, in 2003, he established and was Managing Partner of his firm’s Shanghai office. He also served for 2 years on the firm’s worldwide partnership council. 

      In Shanghai, Doug was ranked as a top tier IP lawyer by all the key directories with one of them describing him as “the best IP lawyer practicing in China”.

      From 2011 to 2019, Doug practiced as an intellectual property barrister in Hong Kong SAR appearing as an advocate in the higher courts, including in the Hong Kong Court of Final Appeal. He has been appointed as an arbitrator, mediator, and acted as counsel in numerous high technology arbitrations and mediations. He is also a member of the Hong Kong Inland Revenue Board of Review that hears appeals from decisions of the Inland Revenue Department.

      Doug has, since 2015, been an adjunct professor at the University of Hong Kong where he teaches a masters course in IP.  He is the author numerous articles on IP and of four legal texts: Patent Litigation in China, Patent Law in Greater China (co-author), Hong Kong Intellectual Property and Civil Litigation in Hong Kong.

      Doug has also written a three volume history of British and American extraterritoriality in China and Japan (1842-1943), Gunboat Justice, and is associate producer of the art-house movie, I Really Hate My Job (He loves his job now).

      Doug has been appointed to the following arbitration panels:

      • World Intellectual Property Organisation (WIPO), Panel of Neutrals
      • Hong Kong International Arbitration Centre (HKIAC), IP & Emergency Arbitrator Panels
      • Shanghai International Arbitration Centre (SHIAC), Panel of Arbitrators

      Representative Cases

      • United States Toy Manufacturer, patent infringement claims in the Mainland of the PRC against a number of Chinese producers (On-going)
      • HKIAC arbitration acted as counsel for Respondent in claim relating to alleged patent infringement and trade secret misappropriation by transferee (2019-2020)
      • HKIAC arbitration, acted as arbitrator in claim for breach of license involving Chinese, American and European patents (2019-2020)
      • Wong To Yick v Singapore Medicine, acted as lead trial counsel and solicitor advocate for defendant in High Court trial for trade mark infringement and passing off. (2020-2021)
      • Nokia v TCL, acted as counsel in Hong Kong high court proceedings for enforcement of standard essential patent license (2017-2019)
      • Tsit Wing Group v TWG Tea Ltd – Acting as counsel for Defendant (Appellant) in Hong Kong Court of Final Appeal in claim for trade mark infringement and passing off
      • Acting for Qualcomm as lead partner in Asia in global standard essential licensing dispute with Nokia
      • Acting for Sony Computer, Nintendo and Microsoft to obtain simultaneous Anton Piller Orders and Mareva injunctions against seller of circumvention devices

      Qualifications

      • BA (Asian Studies); LLB (Hons), The Australian National University 
      • Post Graduate Certificate (Chinese language and law), Fudan University, Shanghai
      • PCLL, City University of Hong Kong
      • Solicitor, (1996-2010 and 2020), Solicitor Advocate (2021-), Hong Kong SAR
      • Barrister, Hong Kong (2011-2019)
      • Solicitor, England & Wales (2008-present) (currently non-practising)
      • Barrister and Solicitor, Victoria, Australia (1995-present) (non-practising)

      Memberships

      • Member, Asian Patent Attorneys Association (APAA)
      • Member, Hong Kong Institute of Trade Mark Practitioners (HKITMP)
      • Member, European Chamber of Commerce in China, IPR Working Group (past chair and vice-chair)
      • Fellow, Hong Kong Institute of Arbitrators

      Personal Interest

      • Sports: Hiking, biking, rowing (and in his younger days, Judo, in which he holds a black belt)
      • Chinese and Japanese politics and history.