Dr. Frederick Ch'en
Office Managing Partner Intellectual Property
Languages
English, Japanese
-
Overview
-
Experience
-
Credentials
-
Insights and events
Chambers Asia-Pacific 2020He is quick to understand relevant legal issues and has the ability to distill complex legal issues into easy-to-understand ones. His communication skills are superb and he is also appropriately creative in his legal approaches.
For almost 20 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.
Chambers Asia-Pacific 2016Frederick Ch'en combines an expertise in patents with an impressive knowledge base in the medical sciences. For clients, 'his strengths and qualities are great diligence, rich knowledge in both the IP and science areas of the pharmaceutical field...'
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.
Credentials
- 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
- Solicitor, England and Wales
- California
- U.S. Patent and Trademark Office
- Japan - Daiichi Tokyo Bar Association (Gaikokuho Jimu Bengoshi)
- Senior Courts of England and Wales
- 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)