Bird & Bird

Firm overview:

A major Big Law firm regards Bird & Bird as sitting among a clutch of capable firms in terms of global reach, quality of clients, reputation, and trade secrets expertise.

Bird & Bird takes an integrated, cross-departmental approach, and its strong technology focus offers a solid foundation for handling trade secrets matters. Many of its experts have scientific or engineering qualifications which makes them well placed to understand the innovations at the heart of trade secrets disputes.

The firm provides full-service trade secrets support to clients, be it in relation to trade secrets litigation, transactions, advisory work, or compliance assignments. Bird & Bird’s consultancy arm OXYGY comprises a team of internal IT forensics; cybersecurity specialists provide complementary support.

The firm offers thought leadership on global trade secrets in the form of publications, webinars and events. For example, the Global Guide on Confidential Information, Trade Secrets and Post-Termination Restrictions provides global employers with country-by-country guidance to understand the different legal frameworks that apply to confidential information, trade secrets and post-termination restrictions in the countries where they operate.

Team overview:

Bird & Bird’s Trade Secrets group is co-led by partners Tom Vapaavuori and Domien Op de Beeck.

Vapaavuori is regarded as one of the leading trade secrets experts in Finland and Europe. He has spent his career specialising in trade secrets protection and wrote Finland’s only trade secrets handbook. He also co-heads the Finland dispute resolution group.

Brussels-based partner Domien Op de Beeck focuses on patent and trade secrets laws. Clients appreciate his openness to technological innovation, and his drive to grasp the most complex science.

Robert Williams, partner and co-head of Bird & Bird’s IP group in London advises on the full range of issues relating to patents, trade secrets/confidential information, copyright, trademarks, and designs. Williams is highly respected internationally for his understanding of the practice of trade secrets and has particular experience of complex IP disputes (with a focus on multi-jurisdictional patent litigation and trade secrets disputes).

Key matters:

• VMI v Safe-Run, Supreme People’s Court of China, 2022

Bird & Bird acted for VMI Holland in three landmark decisions handed down in December 2022 before the IP Tribunal of the Supreme People’s Court of China (SPC). The court found in favour of VMI and against Chinese competitor Safe-Run, which manufactures tyre building machines and curing presses, in complex litigation related to the ownership of three patents.

VMI, an industrial equipment supplier, successfully proved that its own key technology qualified to be protectable trade secrets. The SPC has also concluded that Safe-Run misappropriated these trade secrets and awarded the patents as filed by Safe-Run back to VMI.

The judgments shed light on the complicated issues in the patent ownership disputes based on trade secret misappropriations and are particularly significant on the issues of burden of proof, reasonable protection measures, and standard for inventorship for patent ownership dispute cases.

The Bird & Bird team was Christine Yiu (partner, Beijing), Aden Chen (partner, Bird & Bird-associated firm Lawjay Partners), Leon Li (associate, Shanghai), and Emily Zhao (associate, Shanghai).

Clients:

Konecranes, VMI Holland, Chenco Chemical Engineering and Consulting, Contingent & Future Technologies, Fujifilm Electronic Materials.