Jerry Xia Partner, Shanghai
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Professional Profile

Mr. Jerry Xia is a partner of GEN Law Firm, based in Shanghai. With a diversified background in law and technology, he has around 20 years of experience in both private and in-house practice in China and APAC. Before returning to private practice, he was Honeywell's Deputy General Counsel and Chief IP Counsel in Asia Pacific.

Mr. Xia's practice focuses on providing strategic advice to local and international clients in the areas of intellectual property (both contentious and non-contentious), dispute resolution, brand licensing & technology transactions, M&A, compliance & regulatory issues, policy advocacy & government affairs, etc. Particularly in terms of IP practice (patents, trademarks, trade secrets, copyrights, etc.), he is one of the IP experts in the industrial and information technology field recognized by the Chinese Ministry of Industry and Information Technology (MIIT). His experience and expertise encompass all kinds of IP issues such as IP enforcement and litigation, IP filing and portfolio management, product clearance and other risk management, IP transactional support, trade secret protection, etc.

Among others, Mr. Xia has a strong track record of providing transactional support to IP licensing activities, M&A due diligence (including FTO clearance) & integration, and contract drafting & negotiation. The deals he has handled include e.g. the $11B valued C919 China Big Aircraft Program and a number of joint ventures in the areas of industrial automation & safety, chemicals & materials, software and IoT.

Even more notable is Mr. Xia's achievement in IP enforcement and litigation. He has handled numerous award-winning IP lawsuits in China, including e.g. a history-making preliminary injunction in a patent infringement litigation, a landmark trademark retrial win before the Chinese Supreme Court, a unique design of an industrial product obtaining trade dress protection under unfair competition law, and a pioneering criminal conviction of a trade secret stealer based on the remedial cost incurred by the owner. In addition, he successfully helped Honeywell obtain well-trademark recognition from the Chinese Trademark Office and won a patent litigation case in Japan.

Besides IP practice, Mr. Xia works with his team to extend his support to other corporate legal issues such as commercial litigation and arbitration, import/export compliance, antitrust, data protection, white-collar crimes, employment law, etc. In particular, Mr. Xia has rich experience in dealing with government affairs. He has long been active in the China Association of Foreign Invested Enterprises, established strong communications with the Chinese government at different levels, and participated widely in the comment contributing activities in Chinese legislation and policy making activities. In addition, he frequently speaks at international conferences organized by the World IP Organization (WIPO), the China National IP Administration (CNIPA) & local IP offices, the US Patent & Trademark Office (USPTO) as well as world leading universities and research institutes and publish professional articles.

Prior to his in-house position at Honeywell, Mr. Xia worked at the international law firm Baker & McKenzie based in Hong Kong for a few years and also served as legal manager for Datang Mobile, a famous Chinese telecom technology leader headquartered in Beijing, plus a period of time working for the Sino-Europe Technology Transfer Center in the Netherlands.

Mr. Xia is widely recognized in the industry. He has received a number of key awards, including "Global In-house Counsel of the Year" from the World Trademark Review (WTR) magazine and the" Asia Pacific IP Individual of the Year" from the International Law Office (ILO) and the Association of Corporate Counsel (ACC). He is listed on "China Client Choice" by Asian Legal Business (ALB), "A-List: Top 100 Legal Elites in China" by the China Business Law Journal (CBLJ) and on the "World's Top 300 IP Strategists" by the Intellectual Asset Management (IAM) magazine.

Professional Affiliations

China Behavior Law Association 2017-Present: Expert Committee Member and Guest Professor

Oriental Intellectual Property Club (OIPC) 2018-Present: Vice Chairman

Peking University Law School IP Alumni Association 2016-Present: Deputy Secretariat

China Business Law Journal(www.cblj.com)2016-Present: Editorial Board Member

National IP Training Base(Wenzhou)and Wenzhou IP School 2015-Present: Guest Professor

Shanghai University School of Law/IP 2018-Present: Guest Researcher

Southwestern University of Finance and Economy, Guest Researcher, since 2019

Beijing University of Chemical Technology IP Alumni Association 2018-Present: Vice President

Peking University-Tsinghua University Shanghai IP Alumni Club 2008-Present: Founder & Standing Committee Member

Shangahi Lishui Chamber of Commerce, Legal Consultant, since 2019

Honorary Titles And Awards

ALB China Client Choice Award 2020

CBLJ A-List-Top 100 Legal Elites in China (2019-2020)

Who's Who Legal-China Trademark Expert (2020-2021)

AsiaIP-China IP Experts (2020-2021)

WTR1000-The World's Leading Trademark Professionals (2020-2021)

MIP Corporate IP Stars (2015-2018)

IAM Strategy 300-The World's Leading IP Strategists (2017-2021)

WTR 300-The World's Leading Corporate Trademark Professionals (2016-2018)

2017 Asia Legal Awards-In-house Counsel of Distinction by Asia Lawyers

2016 GC Powerlist: China & Hong Kong by Legal 500

2015 Outstanding China In-house IP Manager Award by China IP Magazine

2015 Q2 Honeywell LGR

Corporate Counsel 100: Asia Pacific (2014) by Legal 500

WTR 2014 In-house Counsel of the Year

Partial Representative Case

Represented a leading energy company in successfully prosecuting a trade secret stealer under criminal law based on remedial cost incurred by the right holder (first of its kind even before the US-China Phase One Trade Agreement and the subsequent judicial interpretations by the SPC codified the same rule).

Helped US and EU clients successfully get back a patent stolen by its former employee with an unprecedented damage award.

Helped a leading Fortune 500 MNE obtain a history-making preliminary injunction against a local infringer for a chemical process patent.

Helped a major US company in civil actions successfully obtain a preliminary injunction against a former employee taking away trade secrets without approval.

Represented Douyu v. Panda in an unfair competition lawsuit successfully forcing the plaintiff to dismiss the case.

Helped Honeywell win the ever first defensive patent lawsuit in Japan.

Honeywell's patent invalidation cases recognized Top 10 Cases of the Year by the Patent Review Board of the China IP Administration.

Helped Honeywell win a landmark trademark retrial before the PRC Supreme Court and a trademark infringement case with a damages award of RMB3.5M (exceeding the maximum statutory damages under the old trademark law before 2019).

Honeywell v. Shangchen (2018) - unique design of an industrial product enjoyed trade dress protection without design patent.

Honeywell v. Zhoudian (2016) - an unprecedented case where an infringer's affiliate was held jointly liable for damages under the “pierce the corporate veil” doctrine.

Honeywell v. Huafeng (2008) – Top 10 IP Cases of the Year 2008 selected by the PRC Supreme Court; successful crack-down and criminal conviction of an international counterfeiting group of Honeywell “Bendix” brake pads.

Handled the IP agreements involved in the C919 Big Aircraft project ($11B value in total) and the IP protection program for the related joint ventures on behalf of Honeywell.

Handled the license of standard essential patents (SEP) between Datang, Huawei, ZTE and other companies relating to TD-SCDMA, the 3G telecom standard developed by China, and served as the co-chair of IPR group for the TD Industrial Alliance.


Practice Areas

> Intellectual Property

> Technology Transactions

> Dispute Resolution

> Merger & Acquisition

> Regulatory Compliance

> Policy Advocacy

Education Background

LL.M, University of California, Berkeley

LL.M, Erasmus University Rotterdam

LL.B, Peking University

B.E., Beijing University of Chemical Technology

Lawyer Qualification

China

Working Language

Chinese, English