Taiwan

Held in awe by other jurisdictions for its handling of the covid-19 pandemic, Taiwan has seen business return to usual. In the first half of 2020, the Taiwan Intellectual Property Office (TIPO) received nearly 34,000 patent applications, a slight 4% decline from the same period the previous year, with TSMC leading the way for domestic applicants for the fourth consecutive year. Local SMEs continue to be the main drivers of innovation, filing 14% more applications than in 2019. TIPO responded by implementing the Positive Patent Examination Pilot Programme for Start-Up Companies at the beginning of 2021, which prioritises invention patent applications filed by newly established entities. It has also introduced a consultation service for SMEs looking to apply for patents overseas.

Firms: prosecution

Baker McKenzie

Plugged into the wider Baker McKenzie network, the Taipei outpost has access to a full range of technical expertise at its fingertips. As well as serving the IP needs of companies across multiple industries, the firm prosecutes patents for the likes of Genius Electronics Optical Co Ltd and resolves patent disputes for a host of rights holders to obtain high damages. IP captain Grace Shao has perfected her craft, especially in enforcing IP rights for pharmaceutical, high-tech and entertainment corporations. Laser-focused on dispute resolution, Da-Fa Feng takes the lead in high-stakes litigation and patent licensing agreements.

Deep & Far

Established in 1992, Deep & Far has served over one-fifth of Taiwan’s top 100 enterprises, as well as global companies such as Motorola and InterDigital. Under the leadership of managing partner CF Tsai, the IP boutique has prosecuted patents for 60% of the high-tech companies in Hsinchu Science Park. A pioneering patent practitioner, Tsai is the first attorney at law in Taiwan to have both technical and legal qualifications.

Eiger

Given its fully fledged patent capabilities, Eiger draws a predominantly foreign clientele seeking patent advice to its doors. Through an expanding and diverse team of IP professionals – qualified in China, Europe, Taiwan and the United States, and stationed in its Taipei headquarters and Shanghai office – the full-service law firm oversees patent matters in Greater China while simultaneously providing support in US patent cases. Its dedication to advancing diversity is particularly noteworthy, as the firm actively supported Taiwan’s victorious push to legalise same-sex unions. Managing partner John Eastwood has contributed vastly to the local business landscape. As chair of the IP Rights Committee of the European Chamber of Commerce Taiwan, he is highly sought after by the European Commission and the US and Taiwanese governments on patent policy issues. Having worked with numerous well-known brands on their IP enforcement projects, Eve Chen has gained deep expertise in patent dispute resolution; her stellar track record includes representing Eli Lilly in Taiwan’s first-ever reversal of the burden of proof in process patent litigation.

Formosa Transnational 

Formosa Transnational boasts strengths across the contentious/non-contentious divide, capturing the attention of domestic and foreign corporations alike. Dedicated to staying abreast of new technology and the latest patent hotspots, the patent department of nearly 60 professionals has been filing fintech patent applications and advising on cryptocurrency and the Internet of Things of late. Meanwhile, the litigation team continues to add to its impressive track record with new wins before the courts. Managing partner Yulan Kuo has cemented his reputation in the local IP landscape. Not only did he chair the Trademark and Patent Law Committee of the Taipei Bar Association, he also advises on training for IP court judges. Almost two decades into her IP career, Jane CC Wang has racked up vast experience in a wide range of patent matters, from prosecution and litigation to licensing. As one foreign associate acknowledges: “I think highly of Jane. She provides excellent service based on her superior understanding of both US and Taiwan patent laws, allowing our client to resolve their patent dispute favourably. I have been referring clients and prospective clients to her for matters involving Taiwanese patent laws, IP licensing or cross-jurisdictional legal issues, and all of them have been very satisfied with her services and expertise.” Making a formidable duo in court, Kuo and Wang emerged victorious on behalf of Union Group Business in a patent ownership dispute before the Supreme Court. US patent agent Frank Lu is also praised for being “hardworking on cases”. He recently represented Valeo SA in a patent dispute against DEPO Auto Parts Ind Co Ltd and successfully obtained over $143,000 in damages.

Lee and Li Attorneys at Law

Nestled comfortably at the apex of both the litigation and prosecution tables, Lee and Li Attorneys at Law boasts the highest number of ranked individuals in the Taiwan chapter. A full-service law firm that is also the largest in town, it has carved out an impressive history of excellence in areas ranging from patent prosecution to litigation and transactions. Through its alliance with Beijing-based Lee and Li-Leaven IPR Agency, the team secures patent rights in Mainland China. Daisy Wang and Dennis Huang are no strangers to the IP field; senior counsellor Wang has more than four decades of experience under her belt, while star litigator Huang has secured roughly $7 million in damages for a US chemical company embroiled in patent litigation before the Taipei District Court. The team is not short of dual-qualified attorneys, either – Gloria Lu is proficient in electrical engineering, while Hsiu-Ru Chien has a background in zoology. Adding to the ensemble’s success is courtroom sharpshooter Roger Chang, who has raked in wins for Entegris and Philips.

Li & Cai Intellectual Property Office 

“Sincere and punctual,” Li & Cai Intellectual Property Office is relied on by foreign associates from Asia to the United States for its full gamut of IP services. “The firm has technically qualified people with decent groundwork who understand technology. They’re very friendly, easily accessible with very good feedback time and really fast responses at quite a reasonable price. We have a reciprocal relationship too,” states one happy customer. “We’ve had a very good experience working with Li & Cai – their quality is top-notch; the cost is very good with a very reasonable fee schedule; their communication in English is very good and smooth; and we get frequent reminders and timely reports. If there are important items to discuss, they are always available for a video conference. We’ve never had an issue with any subject matter or technology. They act as our hub for patent matters in China, as well.” With an outpost in Washington DC staffed by US-qualified lawyers and patent attorneys, as well as an 80-strong patent team in Taipei, the IP boutique recently added a new Japanese team and legal consulting services to its offerings. On top of drafting patent specifications and advising on patent prosecution strategy, Yves (Yao-Hui) Chang “runs a very good team” that ably assists domestic companies. An electrical engineer by training, he has “excellent understanding of legal requirements, communicating timely and providing solutions to different situations”. “Yves is a very positive and proactive professional who always provides practical comments for patent filing. Through his extensive experience in patent prosecution in Taiwan and the United States, he can help to overcome issues raised by different IP offices so that patents can be granted.”

Saint Island International Patent & Law Offices

Gold ranked on both the contentious and noncontentious fronts, Saint Island International Patent & Law Offices is a standout choice for domestic giants and overseas corporations looking to protect their patents in Taiwan. Alongside more than 1,000 foreign associates and collaborations with Beijing Saint Island Intellectual Property Agency and Beijing Tie Chi Patent Firm, the IP boutique counts among its ranks 230 IP professionals, including 60 patent and trademark attorneys. Stationed across a sprawling network of six offices in major local cities, they are ever ready to prosecute upwards of 3,000 patents a year for the likes of Intel, Ford and Panasonic. Not only has the firm recently begun working with TSMC on its global patent filings, it also wrote a Japanese analysis report for the Japan Taiwan Exchange Association on IP protection strategies. Founding partner Patrick Yun has nearly half a century of IP experience behind him, during which he has established a modern information centre. Having perfected his craft in IP litigation and counselling, managing partner Frank Liu is a prolific writer on all things intellectual property. Tony Chang is a familiar face in court – he recently represented Life Fusion Inc in two patent inventorship and infringement suits. After serving as a senior patent examiner at TIPO for four years, Sumin Lai is now enforcing patents for the likes of BenQ Corporation against BASF Taiwan.

Tai E International Patent & Law Office 

Tai E International Patent & Law Office commands a glowing reputation as a patent prosecution powerhouse, drafting and filing around 3,500 patent applications annually for multinationals such as Cree and Vishay Dale Electronics. Its 110 patent professionals, including 24 patent attorneys, are not only fluent in English, Japanese and German, they are also qualified across a range of technical fields. Through a compact team of seven lawyers, the general law firm makes light work of contentious matters, as well. Fronting this illustrious shop is managing partner Fred Chi-Tai Yen, who played a critical role in founding the Taiwan Patent Attorneys Association. Working well together on patent disputes, Jerry Lin and Henry Guei represent foreign clients such as Alanod-Xxentria Technology Materials Co Ltd and domestic names such as WoShuo Electric Industrial Co Ltd before the Supreme Court. Where CEO Lin has a background in electrical engineering, Guei is a former TIPO examiner who often writes about local IP laws.

TIPLO - Taiwan International Patent & Law Office

For more than 50 years, TIPLO has been fully dedicated to serving the IP needs of its clients. Staffed by more than 70 technical lawyers, 25 lawyers in Taipei and a liaison office in Tokyo, the patent prosecution powerhouse is well placed to draft and file patents in a wide range of technical fields. Japanese-speaking JK Lin deftly oversees the firm’s operations, while HG Chen skilfully captains the legal department.

Top Team International Patent & Trademark Office 

Celebrating its 35th anniversary, Top Team International Patent & Trademark Office is “one of the oldest and most comprehensive IP firms in Taiwan that has been unanimously recognised by its peers and partners”. With an “excellent administrative and procedural management team and patent professionals armed with strong technical backgrounds” covering all bases in prosecution, foreign associates speak highly of the side’s patent drafting and filing capability. “We have established a long-term and friendly cooperation with Top Team. With rich professional experience in intellectual property, the team provides a strong guarantee for improving the quality and grant rate of patent cases. They also provide timely feedback and offer special professional and meticulous services, which has earned them our complete trust.” “Top Team is the most highly recommended IP firm in our worldwide network. They are highly professional, reliable and quick. Communications are direct, clear and always well founded. Aside from their extremely well-organised IP processes, the team is a dream to work with given their profound IP and technological expertise.” Founder and owner Henry Hong is an IP veteran, having spent more than three decades in the field. “An outstanding patent attorney and manager,” Peggy Wu is “very professional in handling all aspects of the firm”. “Peggy’s legal opinions are always extremely well founded and straight to the point. Driven by results and value, she always puts the interests of clients first, such that we fully rely on her expertise, proficiency and reliability. She also invests in continuously educating her staff, organising regular high-quality internal workshops on IP topics to train them on IP processes in China and Taiwan, as well as other jurisdictions like Japan and the United States, so that they can provide a unified IP service unique to their firm.” Japanese-speaking Jonathan Yen is qualified in China and Taiwan, with a specialty in electrical engineering. Also deserving of a mention is patent engineer Yung-Ning Hu: “She is knowledgeable and equipped with advanced technical background in semiconductor manufacturing for patent application, drafting and prosecution.”

Tsai Lee & Chen Patent Attorneys & Attorneys at Law 

Having racked up two decades of experience in intellectual property, it is little wonder that Tsai Lee & Chen Patent Attorneys & Attorneys at Law comes highly recommended by foreign associates and global companies for its prowess in the patent prosecution space. “A very good firm for patent work,” its Taipei headquarters and branch offices in Taichung and Tainan are staffed by over 180 patent engineers, lawyers and IP attorneys, working in English, German, Japanese and Korean to serve the needs of international patent owners. Lately, the firm has seen a rising number of patent applications from domestic entities and responded by expanding to break through 300 firm-wide. “We have cooperated with them for a long time. They have extensive experience in handling patent prosecution in Taiwan. Not only do they assist us in developing and implementing best patent filing practices in Taiwan, they provide us with timely updates on local legislation developments.” A US patent agent, Candy KY Chen oversees the international patent prosecution practice. She is a “strong patent prosecution practitioner” and “a good contact for arranging everything you’ll need”. At the helm of the litigation team, Jesse KY Peng is busy representing the likes of ATEN International and Enermax in patent disputes and FamilyMart in a contentious matter against 7-11. Qualified in New York and China, Crystal J Chen takes charge of the international marketing department.

Tsar & Tsai Law Firm 

Clients look to Tsar & Tsai for its top-tier patent litigation capabilities. The Lex Mundi member not only has access to 160 law firms around the world, it also has a substantial patent prosecution team on the ground in Taipei and Hsinchu to provide the full range of patent services. Over the past year, under the direction of IP captain Joyce Ho, the patent department has successfully represented Merck in a patent invalidation case against DIC Corporation. Where Ho directs her attention to advising high-tech companies on protecting their IP rights, managing partner Jennifer Lin is a frequent speaker on dispute resolution and IP law.

Wideband IP

“Wideband IP is a medium-sized patent prosecution firm that covers a wide spectrum of technologies.” Founded in 2005 by a former patent examiner, the IP boutique is now home to 11 patent professionals stationed in three cities across Taiwan. Managing partner Jamie Lu is a name for the address book. According to one peer: “Jamie is a very experienced and diligent patent attorney, well versed in both Taiwan and US patent practices.”

Wisdom International Patent & Law Office 

Riding a wave of effusive praise from foreign associates, Wisdom International Patent & Law Office makes its debut in the IAM Patent 1000 this year. “They have an excellent understanding of semiconductor, electrical and computer science technology. We are very impressed by their detailed comments and recommendations for our IP portfolio, and we can easily obtain more detailed information on specific cases via telephone since most of the team is very confident in the technical aspects of their cases and fluent in English.” “The team is highly professional and responsive in providing opinions and successorientated options. Their advice is strategic and practical from the business perspective, taking into account client objectives.” In just nine years, the IP boutique has grown into a team of 23 that largely handles incoming patent prosecution, filing over 800 national patent applications in 2020 alone. Fluent in English, Japanese and Mandarin, George Huang has nearly three decades of experience in intellectual property under his belt. “George is very responsive, practical and highly efficient. His replies are quick – usually within the same day – and thorough. His team is expanding quickly, which is self-explanatory as to how good they are.” “An enthusiastic leader of the firm, George is very active in the international IP community, too.” He recently published a Japanese book on Taiwanese patent practice with colleague Kai Furihata.

Other recommended experts

Laser-focused on contentious patent matters, Alan Chen operates out of TALENT Attorneys-at-law – formerly known as Rich IP & Co. With the support of his “excellent patent litigation team”, Chen ably represents the likes of Cabot Microelectronics Corporation, AstraZeneca and Oppo in patent disputes. “Alan is very knowledgeable about the electronic and electrical fields, especially semiconductor designs and its manufacturing process. Besides assisting clients with formulating litigation strategies in a very effective and productive way, he provides good client service and delivers concise arguments.” “A brilliant and experienced patent attorney, Alan did a really great job of turning the tables for our infringement case and won. He makes complex issues simple and reacts quickly and wittily in court, so he can usually successfully persuade judges and technical examiners. We give him full marks.” Chao-Cheng Chen of Louis International Patent Office is “a very senior IP professional” specialising in chemistry, mechanics, biotechnology and semiconductors. As founder of Chen & Lin Attorneys-at-Law, Che-Hung Chen is not only a certified deal maker at the China Mergers and Acquisition Association, he also has extensive in-house experience as a former general counsel at IBM in Taiwan. After serving as a Taiwan district court judge for almost a decade, and the first IP judge in the country, Jason Chen now plies his trade at Jones Day. Domestic companies look to managing partner Gary Ma and his two technical specialists at Finnegan’s Taipei outpost to resolve US patent disputes quickly and efficiently. Ma was recently involved in obtaining a complete victory on summary determination for REC Solar Holdings AS against Hanwha Q Cells in a high-profile International Trade Commission investigation. Over at Formosan Brothers, managing partners and accredited arbitrators Yvonne Lin and Jessie Lee take charge of IP briefs.

Individuals: litigation

  • Dennis Huang - Lee and Li Attorneys at Law
  • Yulan Kuo - Formosa Transnational Attorneys at Law
  • 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 Chen - TALENT Attorneys-at-law
  • 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
  • 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
  • Jane CC Wang - Formosa Transnational

Individuals: prosecution