Taiwan

The World Economic Forum’s 2018 Global Competitiveness Report ranked Taiwan as the world’s 13th most competitive economy, which reaffirms the jurisdiction’s business-friendly climate and thus the potential it presents for IP practitioners. At the same time, the conversation at IAM’s IP Business Congress Taiwan – held in April 2018 – revealed that managing limited financial resources remains a top priority for most IP-rich businesses on the island. Caught between prosperity and the desire of companies to reduce their outlay on rights protection, the jurisdiction’s IP authorities have been busy reforming their procedures to make patent protection a smoother and more appealing process. An oral hearing system for patent invalidation proceedings has now been introduced; in addition, a patent linkage system to foster a better framework for pharmaceutical dispute resolution is in the works. The Taiwan Intellectual Property Office has also been stepping up its digitisation efforts, with some success: research indicates that law firms are increasingly filing litigation motions via the office’s online portal. Although exact figures are not yet available, the total number of patents filed in Taiwan in 2018 seems to have remained broadly stable.

Firms: litigation and transactions

Firms: prosecution

Baker McKenzie

Baker McKenzie’s Taipei office provides clients with a potent blend of top-notch technical and legal expertise, making it an ideal destination for those who require elite guidance across the full spectrum of patent work. The preparation of patent applications and representation of clients in patent invalidation actions are meat and drink to the set’s practitioners, many of whom possess doctoral-level research experience in their chosen fields. Baker McKenzie has recently captured the attention of key fintech actors who have entrusted it with a large volume of prosecution and licensing work; it also has a booming contentious practice, dealing primarily with Taiwanese and cross-strait patent infringement and trade secrets matters. Overall, the practice is in fine fettle and is hiring superbly, having recently managed to bring in former IP judge Hann-jing (Joanna) Ouyang to add an extra legal dimension to the already-outstanding team. New York University and Harvard-educated IP practice head Grace Shao is an eloquent litigator with an exhaustive understanding of all forms of IP rights. Her partner Da-Fa Feng is a deft drafter of patents; the two often collaborate in portfolio management and must-win litigation battles.

Deep & Far

Founded in 1992, the versatile Deep & Far has a reputation for excellence that has thus far attracted the attention of over 20 of Taiwan’s top 100 enterprises. It is an exceptionally strong ally of innovators of all hues, having served over 60% of patent-filing entities based at Taiwan’s booming Hsin Chu Science Park. Peers have noticed the outfit’s increased activity, with one commenting that “in recent years, the firm has ramped up its patent practice and achieved some very encouraging results”. Managing partner CF Tsai has perfected his craft over the course of 37 years at the IP coalface. Amply qualified in any aspect of patent work a client might care to name, he is exceptionally versatile.

Eiger

Eiger’s team of Taipei and Shanghai-based IP professionals – who are collectively qualified to practise in China, Europe, Taiwan and the United States – are well placed to provide commercially attuned advice on patent issues in greater China. The firm’s IP practice dovetails nicely with its commercial and corporate divisions, while lawyers fluent in English, French and German make life easy for international patrons operating across the Taiwan strait. Eve Chen is a courtroom doyenne and formidable enforcer of IP rights; educated in Taiwan and the United States, she operates adroitly across a range of sectors. IP and technology group helmsman John Eastwood embodies the firm’s commercially aware outlook in his practice. A noted compliance expert, he frequently contributes to IP policy formation through his involvement with the European Commission, and the US and Taiwanese governments.

Formosa Transnational

Formosa Transnational enjoys a glowing reputation among peers and judges as a result of its precedent-setting dispute resolution nous. The firm offers the full range of services when it comes to patents. On the non-contentious side, Formosa’s patent engineers draft, search and commercialise extremely well across all major technical areas. The firm’s authoritative litigators complement them perfectly. Minnesota-educated managing partner Yulan Kuo provides steady-handed leadership; his deep legal insight is instrumental to the firm’s success in high-stakes litigations.

Formosan Brothers

“With a healthy level of work going its way, Formosan Brothers stands out as a very reliable option for patent prosecution.” The firm’s patent attorneys have the wherewithal to manage global filing programmes across a diverse range of technical sectors; qualified in Taiwan, China and the United States, they can draft equally fluently in English and Chinese. The outfit also has a knack for coordinating multi-jurisdictional litigation battles, a task which often falls to managing partners Jessie Lee and Yvonne Lin. Both are precise, measured litigators and accredited arbitrators to boot, whose respective client followings rave about their broad IP and commercial practices.

Jones Day

“A US-facing international law firm running a domestic practice with Taiwanese-qualified attorneys, it is most famed for its banking and M&A offerings but also provides a legal and transactional-focused IP service.” Global behemoth Jones Day’s name is synonymous with IP quality and deep inter-continental patent networks, so it is no surprise that Taiwanese clients continue to flock to the firm. Partner Jason Chen co-chairs the US Chamber of Commerce’s IP Protection and Licensing Committee. He also holds the distinction of being the first professional IP law judge in Taiwan.

Lee and Li Attorneys at Law

Allied with Beijing’s Lee and Li-Leaven IP Agency, Lee and Li Attorneys at Law is a one-stop shop that specialises in securing patent protection in both Taiwan and mainland China. The firm is a major destination for Taiwan-bound filings, which means that its 34 patent attorneys are often inundated with the high-level drafting and prosecution matters that have underpinned Lee and Li’s 2018 growth. Daisy Wang has four decades’ IP experience under her belt – nothing surprises her in the prosecution, litigation or licensing spheres. Hsiu-Ru Chien is another dual-qualified, versatile operator whose recent litigation work on behalf of Nichia Corporation, the Pilot Ink Co and Yamaha are testament to her ongoing quality. Dennis Huang is a courtroom sharpshooter who recently secured an important IP court judgment on behalf of Toshiba, which gained the company roughly $66 million in compensation and permanent injunctions against infringer Powerchip Technology Corporation. IAM Patent 1000 debutante Gloria Lu seamlessly fuses her knowledge of electrical engineering and Taiwanese law to achieve spectacular results in contentious and non-contentious patent matters alike. Last but not least, Roger Chang’s enviable track record of securing multimillion-dollar infringement damages on behalf of world-famous innovators inspires peers and clients alike.

Saint Island International Patent & Law Offices

All-around IP giant Saint Island handles a staggering amount of work and is singlehandedly responsible for a significant chunk of Taiwan’s prosecution and litigation action. Its extensive domestic network of six offices serve as convenient touchpoints for the island’s industries; the fact that it has an associate patent firm in Beijing makes filing across the Taiwan Strait a breeze. The firm’s state-of-the-art IT systems ensure that deadlines never go by unnoticed, while its impressive utilisation of the IP Court’s online filing system and other recent modernisation efforts speak to its innovative mindset. On the contentious side, Saint Island’s cadre of lawyers produce watertight arguments, time and time again in key litigation battles. Tony Chang broke new ground recently; in the process of enforcing Kwang Yan Motor Co’s design patent for a scooter, he managed to secure a permanent injunction and NT$5 million in damages. A courtroom adept who has worked in the firm’s Beijing trademark agency, he has an enviable knowledge of cross-strait IP affairs. Litigator Sumin Lai prevailed in HTC’s first patent litigation in Taiwan, ultimately netting the statutory limit of treble damages amounting to over NT$3.2 million for the first time and sending a stern warning to other potential Taiwanese infringers. The landmark ruling further enriches his stellar record, gained acting for multinational technology giants such as Intel and Sony. Managing partner Frank Liu has over 25 years’ industrial design and patent experience in his pocket, while the firm’s founding partner Patrick Yun is an authority on patentability issues and the prosecution of material science, software and computer-related applications.

Tai E International Patent & Law Office 

Tai E is a prosecution powerhouse that turns out over 5,000 patent applications every year, predominantly in the electronics, mechanical, chemistry and biotechnology sectors. The Taipei, Taichung, Tainan and Kaohsiung-based firm is also entrusted with more than its fair share of contentious mandates, making the outfit as a whole an astute choice for patrons needing bean-to-cup support. Henry Guei makes light work of complex and commercially important litigation briefs – most recently, he secured NT$1.2 million in damages for Scania’s Taiwanese subsidiary from one of its suppliers. Pharmaceuticals and agro-chemicals wizard Fred Chi-Tai Yen is a patent attorney par excellence, who is as comfortable in the courtroom as he is at the drafting desk. CEO and patent attorney Jerry Lin is an electronics specialist whose semiconductor, LCD and passive component technology acumen is beyond doubt.

TIPLO – Taiwan International Patent & Law Office

Skilled at clearing the way to rights protection for multinational and domestic companies alike, TIPLO showcases its aptitude across the full gamut of patent services. Based in Taipei and with a liaison office in Tokyo, the firm’s chemical, mechanical and electronic patent divisions cover all technical bases. Prosecution, licensing and investigations all fall firmly within the outfit’s remit, with many rights holders also taking advantage of the firm’s contentious capabilities to attack or defend in the courtroom. HG Chen is a sagacious chief counsel who boasts over three decades’ experience of resolving IP disputes; his clients hail from all over the United States, Japan and Europe. Newly ranked JK Lin has successfully defended major telecommunications and semiconductor clients in several recent patent invalidation proceedings. He is a widely respected figure who holds the vice presidency of the Taiwanese Group of the Asia Patent Attorneys Association.

Top Team International Patent & Trademark Office

Top Team provides “a prompt and reasonably priced service, in addition to its consistently high quality from top to bottom”. The firm currently has 22 patent attorneys, five attorneys at law and 70 patent engineers, and is enjoying an impressive rate of growth as word of its outstanding quality spreads. Patrons say remarkable things about the firm. “The management is cognisant of client needs and does a great job of communicating with both staff and clients. Practitioners are all well trained by the firm and bestowed with strong technical capabilities, with a good number possessing advanced engineering degrees. Without fail, they have a thorough grasp of complex matters. Phenomenal responsiveness – even outside official working hours – demonstrates their work ethic. Administrative staff also exhibit great attention to detail; working with this one-of-a-kind firm is a pleasant and effortless experience.” Versatile engineering maven Henry Hong leads by example. Trilingual in English, Chinese and Japanese, he is described as “a silver-tongued attorney who truly listens to what clients say”. The University of Tokyo alumnus has racked up over three decades’ experience of drafting, filing and litigation support. Executive manager Peggy Wu shares Hong’s eloquence; she unfailingly keeps her cool in times of stress, always maintaining clarity of thought no matter how much pressure is brought to bear. Julia Liu has been a Taiwanese attorney at law since 1998. Her 20-year track record in various kinds of IP disputes adds considerable depth and firepower to the firm’s patent litigation capabilities.

Tsai Lee & Chen Patent Attorneys & Attorneys at Law 

Tsai Lee & Chen is “a source of outstanding advice and impeccable patent services spanning the entire contentious/non-contentious spectrum”. The firm’s particular forte is life sciences, electronics and engineering briefs, which it routinely undertakes on behalf of global heavyweights. The “highly talented and responsive” Candy Chen has been diligently satisfying patrons’ needs since 1996. A US and Taiwan-qualified patent attorney, she leads the firm’s international patent department with verve. Tsai Lee & Chen has also broken into the litigation and transactions table this year, by virtue of its burgeoning contentious practice. Jesse Peng and Crystal Chen play leading roles. Peng is a dual-qualified practitioner whose electronics engineering nous is second to none, whereas Chen is a New York and Chinese-qualified polyglot who speaks three Chinese dialects in addition to English.

Tsar & Tsai Law Firm 

Full-service commercial outfit Tsar & Tsai fields a formidable IP team. Its army of lawyers, patent engineers and paralegals consistently supply the most comprehensive and cost-effective solutions on both sides of the contentious/non-contentious divide. Patrons with international horizons will be interested to know that the firm’s Lex Mundi membership allows it to summon the support of 160 top-notch foreign associates at a moment’s notice. Technology-rich companies would do well to seek out the assistance of Joyce Ho. Armed with a PhD from the National Taiwan University’s law school, she possesses wide-ranging knowledge which spans intellectual property, unfair competition and corporate law. Her advice is always commercially informed and holistic. Managing partner Jennifer Lin is famed for her magic touch in licensing, antitrust and merger control negotiations – a boon for clients in the private and public spheres alike.

Winkler Partners

Winkler Partners is best known for prosecuting design patents for luxury good makers. As a pioneering legal practice jointly operated by Taiwanese and foreign attorneys with a dedicated legal translation department, it naturally appeals to foreign filers looking to enter the Taiwanese market. Business-minded to the core, the partnership also does a fine job of handling multinational transactional briefs. Head of IP law Peter Dernbach is the gateway to Taiwanese patent protection for many.

Other recommended experts

Rich IP & Co’s Alan Chen makes a well-deserved debut in the IAM Patent 1000. As the holder of both an electrical engineering degree and a PhD in technology law, he is ideally placed to represent high-tech companies in a contentious setting. Chen & Lin Attorneys-at-Law’s Harvard-educated managing partner Che-Hung Chen draws upon his experience as IBM’s general counsel in Taiwan to provide consistently finely judged patent advice to technology companies. Gary Ma of Finnegan, Henderson, Farabow, Garrett & Dunner impresses corporate executives with his “unusual blend of cross-sectoral technical knowledge, cultural understanding and business sense”.

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
  • Tony Chang - Saint Island International Patent & Law Offices
  • Alan CH Chen - Rich IP & Co
  • Che-Hung Chen - Chen & Lin Attorneys-at-Law 
  • Crystal J Chen - Tsai Lee & Chen Patent Attorneys & Attorneys at Law
  • Eve Chen - Eiger
  • HG Chen - TIPLO – Taiwan International Patent & Law Office
  • Jason Chen - Jones Day
  • Hsiu-Ru Chien - Lee and Li Attorneys at Law
  • John Eastwood - Eiger
  • Da-Fa Feng - Baker McKenzie
  • Henry Guei - Tai E International Patent & Law Office
  • Joyce Ho - Tsar & Tsai Law Firm
  • Sumin Lai - Saint Island International Patent & Law Offices
  • Jessie Lee - Formosan Brothers
  • JK Lin - TIPLO – Taiwan International Patent & Law Office
  • Yvonne Lin - Formosan Brothers
  • Julia Liu - Top Team International Patent & Trademark Office
  • Gloria Lu - Lee and Li Attorneys at Law
  • Gary C Ma - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Jesse KY Peng - Tsai Lee & Chen Patent Attorneys & Attorneys at Law 
  • Grace Shao - Baker McKenzie
  • Daisy Wang - Lee and Li Attorneys at Law

Individuals: prosecution