Douglas Clark

Australian

30+ years of experience

Language:

English

Mandarin Chinese
Japanese

Present Function:

- Partner, Tanner De Witt, Hong Kong
- Deputy Chairman, Hong Kong Inland Revenue board of Review
- Solicitor Advocate, High Court of Hong Kong
- adjunct professor in the Faculty of Law at the University of Hong Kong (2016-2025)

General Expertise:

Technical Expertise:

Certifications and/or licenses

• Solicitor Advocate, High Court of Hong Kong, 2021-present
• Solicitor, High Court of Hong Kong, 1996 – 2011 and 2020-present
• Barrister, High Court of Hong Kong, 2011 – 2020
• Barrister & Solicitor, Supreme Court of Victoria*, Australia, 1995 – present
• Solicitor, Supreme Court of England & Wales*, 1998 – present
* currently non-practising

Professional legal or litigation experience related to the scope of competence of the PMAC

- handled patent litigation and validity cases in Hong Kong and Mainland China since 1993.
- Hong Kong re-registers European patents (designating the UK) The Hong Kong Patents Ordinance is based on the European Patent Convention and applies the European test for infringement and validity. Decision of the Technical Board or Appeal are often cited in validity proceedings.
- acted as an advocate in numerous cases in Hong Kong dealing with the infringement and validity of European patents.
- decided cases as an arbitrator cases involving the infringement and validity of European patents.
- handled numerous cross border cases involving the infringement and validity of patent in Europe, Mainland China and the USA. Many of these involved SEPs. (For example Qualcomm v Nokia)

Professional technical experience related to the scope of competence of the PMAC

The main technical areas in patent litigation and validity cases are:
• Information Communication and Technology
• Mechanical Engineering
• Pharmaceuticals

Memberships and/or accreditations

• Fellow, Hong Kong Institute of Arbitrators
• Member, Asian Patent Attorneys Association (APAA)
• Member, Hong Kong Institute of Trade Mark Practitioners
• Member, Hong Kong Law Society

Practical experience of conducting mediation or conciliation or judicial settlement conferences or out-of-court dispute settlements in disputes related to the scope of competence of the PMAC

• Acting as mediator in WIPO mediation relating to trade mark co-existence (2025)
• Appointed mediator in WIPO mediation dispute (2022)
• Acted as mediator in US International Trade Commission patent infringement case (2019)
• Acted as counsel in mediation involving trademark dispute between two large multinational tobacco companies (2019-20)
• Acted as counsel in mediation involving franchise agreement (2020)