Current Employment Position(s)

Partner

Languages

• Chinese

Lawyer Overview

Dr. Benjamin Bai is an intellectual property Partner in Jones Day's Houston and Shanghai offices and coordinates the Firm's China IP practice. His practice primarily focuses on global patent litigation, spanning Asia, U.S., and Europe. A native Chinese and an experienced U.S. patent attorney, he concentrates on representing multinational companies in enforcing IP rights in China and defending Chinese companies in U.S. courts in infringement actions.

Benjamin is recognized as a leading lawyer on China IP issues. He has the unique combination of more than a decade of U.S. IP experience and in-depth understanding of the Chinese IP systems. Coupled with a strong scientific background, Benjamin offers unparalleled legal services to his clients and has become a trusted advisor to many Global 500 companies in IP enforcement in China. Because of his extensive IP experience in China, Benjamin has provided strategic IP advice to several boards of directors of large U.S. and Chinese companies.

In addition to his China practice, Benjamin maintains an active U.S. practice that is concentrated on IP litigation and prosecution. He provides strategic advice to clients on enforcement of their intellectual property and minimization of infringement risks. Benjamin also counsels clients on how to build a global patent portfolio and to extract value from that.

Another key area of Benjamin's practice is counseling Chinese clients on how to enforce their patent rights and respond to patent infringement suits overseas. He defended a Chinese company in a U.S. patent infringement suit, which resulted in a win-win business relationship between the parties. He also successfully resolved an IP dispute for a large Chinese manufacturing company with a European company that is the largest in the industry in the world, allowing the Chinese company to pursue its global ambitions without the fear of IP infringement suits from its rival.

Benjamin's recent representative matters include:

• lead counsel for two multinational companies in defense of separate patent infringement suits brought by Chinese companies

• lead counsel for a European telecommunications company (a Global 100 company) in defense of several patent infringement suits brought by a U.S. competitor in China (this is the largest patent infringement case China has ever seen and the first of its kind between two foreign companies in China)

• as lead counsel, successfully defended a European telecommunications company (a Global 100 company) in a patent infringement suit brought by a Chinese individual

• as lead counsel, represented a U.S. consumer electronics giant (a Fortune 100 company) in the first case brought by a large-scale patent troll in China

• as lead IP counsel, advised a Canadian manufacturer (a Global 500 company) on comprehensive IP strategies for a billion dollar strategic alliance with its Chinese counterpart and negotiated successfully against the Chinese party

• as lead IP counsel, provided comprehensive IP strategies in China for the largest manufacturing company in the world

• as lead counsel, successfully resolved several trademark and copyright infringement cases in China for a U.S. chemical company (a Fortune 100 company)

• advised several Global 500 companies on the best IP strategies in establishing an R&D center in China

• as lead counsel, successfully regained a critical domain name in China for a U.S. manufacturing company (a Fortune 100 company)

• as lead counsel, successfully defended a U.S. computer giant (a Fortune 100 company) in a patent infringement suit in Taiwan and

• as lead counsel, handled a patent troll in Taiwan for a U.S. computer giant (a Fortune 100 company).

Benjamin is a prolific writer and frequent speaker on issues of intellectual property. He has been an invited speaker on China IP issues around the world and has lectured in the U.S., Europe, and China. He also has written numerous articles on IP protection in China and has more than a dozen scientific publications to his credit.

Before attending law school, Benjamin pursued a scientific career in chemistry and worked at General Electric Company.

Areas of Practice

• Intellectual Property
• Copyrights & Trademarks
• Patent Litigation
• Patent Prosecution
• Pharmaceuticals
• Life Sciences
• Energy

Representative Cases

• Audits, Agreements, Clearances
• Audits, Agreements, Clearances
• Copyright Infringement
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Licensing & Technology Transactions
• Patent Infringement
• Patent Litigation
• Patent Litigation
• Patent Litigation
• Patent Litigation
• Patent Litigation
• Patent Opinions
• Patent Opposition
• Patent Prosecution
• Patent Prosecution
• Patent Prosecution
• Patent Prosecution
• Patent Prosecution and Litigation
• Patent Trolling
• Trademark Infringement
• Trademark Infringement
• Trademark Litigation

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patent Litigation, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• Texas

Education

• U of Texas - Austin

Published Works

• The Radical Third Amendment, 2009 China IP Focus, Managing Intellectual Property, 2009
• What Does the Third Amendment to China's Patent Law Mean to You?, 2009
• Enablement Issues Concerning Aggressively Broad Generic Claims, 7 Northwestern Journal of Technology and Intellectual Property 1, 2008
• Slow Proceed With Caution, Chemical Business, 2008
• Traps for the unwary, China IP Focus 2008, 2008
• Avoiding IP Licensing Pitfalls in China, The Licensing Journal, 2008
• Licensor beware, IP Law & Business, Smart Pill, 2007
• What Multinational Companies Need to Know About Patent Invalidation and Patent Litigation in China, 2007
• IP Protection In China: Have A Strategy In Place Before You Go, The Metropolitan Corporate Counsel, Inc., 2007
• Handle with care, IP rights in developing countries, Patent World Issue #191, 2007
• How to litigate patents in China, China IP Focus 2007, 2007
• Forum shopping comes to China, China IP Focus 2006, Managing Intellectual Property, 2006
• Patent Litigation in Chinese Courts, 2006
• IP Issues in U.S.-China Trading Prompting Action by Both Sides, Houston Business Journal, 2005
• Are Your Chinese Patents At Risk?, 2004
• Protecting Plant Varieties under TRIPS and NAFTA: Should Utility Patents Be Available for Plants?, author, 32 Tex. Int'l L.J. 139, 1997
• Methyl Halides As Carbon Sources In A Hot-Filament Diamond CVD Reactor: A New Gas Phase Growth Species Journal of Materials Research, at 223., 1993

Address

717 Texas
Suite 3300
Houston, TX 77002-2712

Phones

1.832.239.3816 / 86.21.2201.8007 (Shanghai) (Business Phone)

Faxes

1.832.239.3600 / 86.21.5298.6569 (Business Fax)

Emails

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Websites

http://www.jonesday.com