Taiwan

The Taiwanese patent market has stagnated recently amid a struggling economy and a challenging environment for patent protection. In 2016 the country experienced another downturn in filings, mainly in local applications. A high number of patent invalidations and a low success rate for rights holders in the courts have resulted in a shift of strategy: patent owners are increasingly focusing their efforts on larger, more competitive jurisdictions, such as the United States and China – with the latter lately becoming the primary battleground for IP litigation for Taiwanese companies. Commentators also suggest that local businesses have been ineffective at commercialising and monetising their intangible assets, which has compounded market difficulties. More positively, the drop in filings last year was less dramatic than in 2015 and a growing awareness of the situation has opened up dialogue about the reforms needed to tackle these problems.

Firms: litigation and transactions

1
Formosa Transnational
Lee and Li Attorneys at Law
Saint Island International Patent & Law Offices
2
Baker McKenzie
Eiger
Formosan Brothers
Jones Day

Firms: prosecution

1
Lee and Li Attorneys at Law
Saint Island International Patent & Law Offices
Top Team International Patent & Trademark Office
2
Baker McKenzie
TIPLO – Taiwan International Patent & Law Office
3
Chuan Tai Patent & Trademark Law Office
Deep & Far
Li & Cai Intellectual Property Office
Winkler Partners
Baker McKenzie
International juggernaut Baker McKenzie’s Taipei branch seamlessly blends global might with an intimate understanding of the local patent market and offers cutting-edge insight into commercial concerns. Its patent division packs serious firepower and excels in all aspects of patent law. A healthy flow of prosecution briefs – with an emphasis on high technology – keeps the ensemble busy. In addition to the firm’s sophisticated drafting capabilities, it is a staunch defender of global heavyweights in litigation proceedings. This is where practice head Grace Shao shines: her proven track record in contentious matters has earned her the loyal patronage of world leaders such as Eli Lilly.
Chuan Tai Patent & Trademark Law Office
In operation since 1979, Chuan Tai has carved out an enviable position on the local IP scene and today manages a plethora of global portfolios with poise and acuity. Home to a squad of former Taiwan Intellectual Property Office examiners, the savvy set makes light work of all non-contentious mandates; its vigorous enforcement practice is also a formidable force. Although capable in an array of industries, biotechnology and semiconductors are particular strong suits. Founding partner Ming-Chung Tsou keeps a watchful eye over the firm.
Deep & Far
Boutique Deep & Far offers a full suite of patent services to the highest standards. All instructions completed with its stamp of approval are of first-class quality, as its watertight applications afford the maximum possible scope of protection. The technically accomplished team serves a diverse array of clients, from a local semiconductor manufacturing giant to a German confectioner; it has also been winning many fans in the start-up community of late. An influential figure on the patent scene, founding partner CF Tsai began his IP career in 1982 and has since worked on thousands of patent specifications. An unwavering dedication to excellence defines his practice.
Eiger
The professionals at Eiger possess a finely honed international perspective, supplemented by deep regional and cross-strait expertise and a wealth of European IP law knowledge. The group also makes a splash on the local patent scene – it recently masterminded Taiwan’s first reversal of the burden of proof in patent litigation. It devises ingenious strategies to secure the right results in contentious spats and complex licensing arrangements – most recently to the benefit of high-technology players. John Eastwood specialises in briefs at the intersection of patents and technology. He spearheads the IP practice and also chairs the European Chamber of Commerce in Taiwan’s Intellectual Property Rights Committee. Eastwood is a cogent litigator; as is Eve Chen, who has a talent for implementing innovative methods of evidence collection.
Formosa Transnational
Armed with a phalanx of patent attorneys and engineers trained in virtually all technical disciplines, there is little that Formosa Transnational cannot do. The full-service outfit consistently delivers on multifaceted prosecution, enforcement and transactional instructions, and its pinpoint advice is always filtered through a polished commercial lens. As testament to the firm’s impressive capabilities, last year it secured a favourable interlocutory judgment for Largan Precision on multiple grounds of patent infringement in one of the most high-profile IP suits in recent years. This achievement bore the fingerprints of technology law director Yulan Kuo – a revered figure in the IP community who has held a number of influential positions, including chair of the Trademark and Patent Law Committee of the Taipei Bar Association and counsel for the creation of Taiwan’s specialised IP courts.
Formosan Brothers
Formosan Brothers is the trusted partner of patent holders of all stripes, from renowned Fortune 500 companies to small and medium-sized enterprises. The general practice places a strong emphasis on the procurement and defence of IP rights, and ancillary corporate practices help to ensure that maximum value is extracted from patrons’ intangible assets. Jessie Lee and Yvonne Lin are keenly attuned to clients’ domestic and international business needs, having acquired their LLMs in the United States. The dynamic duo also have a flair for mandates involving commercial and civil law.
Jones Day
Formidable US outfit Jones Day casts an imposing shadow in Asia. It proficiently serves a roster of world-leading names and is especially adept at matters with elements that lie beyond local borders – whether that be the resolution of complicated disputes or the facilitation of critical negotiations. Former IP judge Jason Chen heads up the litigation division. “There is no doubt about his experience in IP dispute resolution – he is definitely a leader in the field.” He famously mounted a successful defence on behalf of China Petrochemical Development Corporation against an eye-watering nine-figure patent infringement claim – the largest ever brought in Taiwan.
Lee and Li Attorneys at Law
Lee and Li is a potent contender on the Taiwanese IP market, although it is most famed for its masterful management of China-related issues. “It is extremely reliable and has a great success rate for handling patent infringements and invalidations. When working with its professional and knowledgeable team, you never have to worry about your case – the firm is excellent at taking care of all the procedural and substantive aspects of your problem.” No technical discipline escapes this accomplished ensemble’s grasp and a state-of-the-art patent management system accelerates its already impressive turnaround times. Dennis Huang and Hsiu-Ru Chien made waves in late 2015 by securing a Supreme Court victory for Toshiba in a protracted patent dispute. Crack litigator Huang has orchestrated several landmark cases in his career and also serves as a prominent lecturer at a number of universities. “Chien has very strong logical and legal reasoning faculties and sharp writing skills. She is also fantastic at dealing with clients.” The adaptable Roger Chang operates flawlessly across the gamut of patent matters; lately, he has been stewarding ASML’s multibillion-dollar acquisition of Hermes Microvision Inc and all of its associated IP transactions, in one of Taiwan’s largest inbound deals.
Li & Cai Intellectual Property Office
Li & Cai resolutely safeguards vital IP assets, especially those embroiled in cross-strait disputes: “It is one of the most experienced firms for handling matters relating to China.” It is also a finely oiled prosecution machine, thanks to its rigorous education and training programme and sophisticated internal infrastructure. Fluent in Japanese, vice president Chao-Ming Chen provides especially discerning insight into the mechanical engineering field.
Saint Island International Patent & Law Offices
“Saint Island does quality work at reasonable costs and in a responsive, timely manner. Adept in a broad range of subject matter, it is highly professional.” Handling a sizeable share of local patent infringement suits, the firm is best known for its stellar courtroom performances. Its robust squad of over 20 lawyers is especially skilled in the electronics sphere and has recently been shielding the interests of various tech titans – including Panasonic, Samsung and HTC – in numerous hard-fought battles. Frank Liu and Sumin Lai assisted in the defence of Samsung and HTC in parallel infringement cases; both companies secured significant victories, which can be credited to the pair’s creative, game-changing strategies. The firm also handles a variety of patent applications on the non-contentious front, which is Patrick Yun’s niche. The seasoned veteran has drafted countless applications and has also written extensively on the subject. The well-equipped unit of technically accomplished experts at Tai E dispatches all incoming IP briefs with finesse. The firm has strengthened its team in recent years with the addition of new lawyers, patent attorneys and PhD holders. Its multilingual line-up is widely respected by peers and clients alike and is a particular favourite among leading Japanese companies. Managing partner Fred Chi-Tai Yen is hailed for his intellectual acuity. A prolific writer, he is an authority in the biotechnology area. Jerry Lin wins plaudits for his deft touch in the electronic engineering space. His erudite, pragmatic counsel has benefited a diverse range of clients, from privately held companies to powerful multinationals.
TIPLO – Taiwan International Patent & Law Office
Established as a boutique, TIPLO has since extended the scope of its practice beyond the borders of intellectual property into a number of other areas. However, IP management is still undoubtedly at the core of this premier set’s offering. Replete with technically gifted practitioners – many of whom are polyglots – it leaves no stone unturned. All of its consummate professionals hold impressive qualifications and academic credentials. One such individual is legal department director HG Chen. Exploiting over three decades’ experience in IP litigation, unfair competition and general corporate issues, he is steadfast protector of intangible rights.
Top Team International Patent & Trademark Office
Appropriately named, Top Team houses a tight-knit crew of commercially minded practitioners who “possess excellent industry and technical knowledge and provide first-rate advice with fast turnaround times”. The firm strikes a chord with industry-leading Japanese patent holders, but has also lately been making serious headway in China. Its exceptional client retention rate speaks volumes about the quality of its services. As one patron avers: “Having worked with many law firms in Taiwan, I can truly say that Top Team’s quality of work is outstanding. The high standards it adheres to is the reason why many of the most pre-eminent patent holders keep coming back to it." Founder and owner Henry Hong performs skilfully across the contentious/non-contentious divide and his wise guidance is always in high demand. Prosecution dynamo Peggy Wu is well versed in domestic and international IP matters, although chemical briefs are her metier. With a pristine track record before Taiwan’s IP court, Julia Liu adds real potency to the set’s contentious offering.

In just two decades, the “superb” Tsai Lee & Chen has evolved into a herculean competitor in the IP field. It oversees more than 30,000 patents and is home to an army of professionals and experts – many of whom are dual qualified in Taiwan and China. Despite the prodigious workload on its plate, client satisfaction levels are consistently high – in part due to its innovative IT systems which ensure that deadlines and communication lines are always in hand. As one client contends: “The firm sets the gold standard for responsiveness." Captaining the international patent practice is Candy KY Chen, a perennial favourite among rights holders, including many Fortune 500s. Her sage guidance particularly resonates with those in the mechanical, automation and software domains. Her efforts are complemented by those of Jesse Peng, a communication and engineering maven who is fluent in Mandarin, Taiwanese and English.

Patents are a central pillar at corporate outfit Tsar & Tsai. Profound business insight underpins its counsel and it wins many plaudits for its pragmatic, forward-thinking advice on cross-border matters. Convoluted, multi-jurisdictional patent disputes are meat and drink to the percipient team, which comprises many esteemed figures in the IP community. One such individual is managing partner Jennifer Lin, the senior vice president of the Asian Patent Attorneys Association. A dexterous litigator, she has made a significant contribution to the development of local legislation. Joyce Ho leads the IP squad with verve. A veritable font of IP wisdom, she has a flair for all things high-technology.
Winkler Partners
Winkler Partners makes its sophomore appearance in the IAM Patent 1000 this year. Fully competent across the spectrum of patent work, the full-service firm is especially acclaimed for its maintenance and protection of design patents. No technical innovation is too obscure for its talented professionals; this is reflected by the group’s eclectic client list, which ranges from European luxury goods manufacturers to global pharmaceutical companies. A further lure to prospective clients is a gifted in-house translation team which guarantees the accuracy of all briefs that cross its desk. Peter Dernbach heads the practice.

Individuals: prosecution

Candy KY Chen - Tsai Lee & Chen Patent Attorneys & Attorneys at Law
Chao-Ming Chen - Li & Cai Intellectual Property Office
Henry Hong - Top Team International Patent & Trademark Office
Jerry CY Lin - Tai E International Patent & Law Office
Jesse KY Peng - Tsai Lee & Chen Patent Attorneys & Attorneys at Law
CF Tsai - Deep & Far
Peggy Wu - Top Team International Patent & Trademark Office
Fred Chi-Tai Yen - Tai E International Patent & Law Office
Patrick Yun - Saint Island International Patent & Law Offices

Individuals: litigation and transactions

Dennis Huang - Lee and Li Attorneys at Law
Yulan Kuo - Formosa Transnational
Jennifer Lin - Tsar & Tsai Law Firm
Frank Liu - Saint Island International Patent & Law Offices
Roger Chang - Lee and Li Attorneys at Law
HG Chen - TIPLO – Taiwan International Patent & Law Office
Jason Chen - Jones Day
Che-Hung Chen - Chen & Lin Attorneys-at-Law
Eve Chen - Eiger
Hsiu-Ru Chien - Lee and Li Attorneys at Law
John Eastwood - Eiger
Joyce Ho - Tsar & Tsai Law Firm
Sumin Lai - Saint Island International Patent & Law Offices
Jessie Lee - Formosan Brothers
Yvonne Lin - Formosan Brothers
Julia Liu - Top Team International Patent & Trademark Office
Gary C Ma - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Grace Shao - Baker McKenzie
Close

Register for more free content

  • Read more IAM blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 84