Lilian Shi
PEOPLE

Lilian Shi

Partner
shi.lilian@dorsey.com

Overview

LILIAN HELPS CLIENTS ON VARIOUS GREATER CHINA RELATED INTELLECTUAL PROPERTY MATTERS IN TRADEMARK, PATENT AND COPYRIGHT AND APPLIES HER EXTENSIVE KNOWLEDGE OF CHINA’S IP LAWS TO HELP CLIENTS TO ENTER OR EXPAND BUSINESS IN GREATER CHINA.

As a Partner in the Hong Kong Office of Dorsey & Whitney, Lilian’s practice covers a broad range of IP work with a focus on China-related IP matters.

Lilian is experienced in trademark prosecution, anti-counterfeiting and contentious IP matters in China. Her practice spans brand and copyright protection, domain name disputes, technologies, licensing and franchising. Lilian is also experienced in managing trademark portfolios for multinational clients.
Lilian’s practice area also includes patent prosecution, enforcement and related advisory work.

Lilian is a contributor to Dorsey’s critically-acclaimed IP Blog, TheTMCA.com, which focuses on legal developments in the world of TradeMarks, Copyrights, and Advertising. TheTMCA.com was named one of the “Top 50” law blogs by the ABA Journal in 2017.

Education & Admissions

University of Auckland (LL.B., 2004)

Hunan University of PRC (B.S., Engineering, 1991)

Admissions

  • Hong Kong

Languages

  • English, Mandarin, Cantonese

Experience

Representative Experience

  • Represented a non-profit inter-government trade organization based in New York in trademark proceedings before the PRC Trademark Review and Adjudication Board seeking to overturn rejections of its trademark applications by the PRC Trademark Office
  • Represented a well-known online jewelry company based in Seattle in court appeals seeking to overturn unfavorable trademark opposition review decisions
  • Represented a New York-based jewelry company in a trademark invalidation proceeding seeking to recover pirated house brand from a Chinese squatter in China
  • Represented a US medical device company in a trademark proceeding in China seeking to recover its Chinese house mark
  • Assisted the world’s largest travel luggage company in securing design registrations in Hong Kong
  • Assisted a US designer, manufacturer and distributor of personal and oral care products in patent prosecution in China
  • Counseled and assisted a US designer, manufacturer and distributor of personal and oral care products in settling a patent dispute with a Chinese individual and successfully transfer title into client’s name
  • Advised a non-profit inter-government trade organization based in New York on a trademark infringement matter in China
  • Advised a non-profit inter-government trade organization based in New York on a membership and contractual dispute
  • Assisted a number of US multinational companies in copyright registration matters in China

News & Resources

Select Presentations

  • “Taking the Judicial Route,” with Cedric Lam, China IP Focus 2011
  • “Spotlight on IP Rights Protection and Enforcement,” with Cedric Lam and Janet Wong, IP Value 2013
  • “How Employee-Inventors are Protected,” with Cedric Lam and Janet Wong, China IP Focus 2013
  • “It’s All in the Name,” with Cedric Lam and Sherry Zeng, China IP Focus 2014
  • “Keeping an Eye on the Latest IP Developments,” with Cedric Lam and Janet Wong, IP Value 2014

Industries & Practices

  • China
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology Commerce
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • Pro-bono work for Animal Asia Foundation
Lilian Shi