Taiwan

The Legislative Yuan’s passing of a partial amendment to the Trade Secrets Act in 2019 demonstrates Taiwan’s determination to strengthen its IP environment. The new regime introduces a system that authorises prosecutors to issue confidentiality orders during investigations and makes violators liable for up to three years’ imprisonment and fines of up to NT$1 million. These deterrents will hopefully increase rights holders’ willingness to take legal action against trade secret theft.

Firms: litigation

Firms: prosecution

Baker McKenzie

Baker McKenzie’s Taipei bureau possesses fully-fledged capabilities in the patent sphere. Its prosecution team consists of multilingual patent attorneys educated to master’s and PhD level, who complement the firm’s exceptional ability in resolving antitrust, trade secrets and patent licensing and infringement matters. Grace Shao leads the IP practice with poise, her eminence demonstrated by her landslide victory in 2018 to become president of the Taipei Bar Association. Da-Fa Feng has many victories in antitrust and trade secret cases up his sleeve and is one of the country’s foremost authorities in this area.

Deep & Far

Since its foundation in 1992, Deep & Far has fulfiled the patent needs of more than one-fifth of the top 100 companies in the country, as well as more than 60% of the patent-experienced tenants of the Hsinchu Science Park. As such, it has amassed substantial experience in protecting IP rights at home and abroad and remains one of the largest bases of Taiwan’s outgoing patent files. Having dedicated close to 40 years of his professional life to the practice, CF Tsai is a true pioneer in Taiwanese intellectual property as the country’s first attorney at law with a technology background.

Eiger

Full-service outfit Eiger’s Taiwan and Shanghai-based IP professionals provide patrons with all-round protection in Greater China by utilising their uniquely global perspectives – they are collectively qualified to practise in China, Europe, Taiwan and the United States. Of counsel Eve Chen is a staunch enforcer of IP rights and has won the trust of many large brands through her results-oriented enforcement campaigns. Leading the IP and technology practice, the vibrant legal and commercial knowledge of registered foreign lawyer John Eastwood is routinely sought out by chambers of commerce, academics and government authorities.

Formosa Transnational

Among general practice groups in Taiwan, Formosa Transnational is home to the largest tech law outfit consisting of more than 20 lawyers; the firm’s IP focus is also evidenced by the fact that half of its lawyers have IP experience. Well placed to take on every sort of patent work, the side has especial strength in claim drafting, infringement proceedings and licensing negotiations, including SEP and FRAND work. Yulan Kuo previously headed the tech law division as well as the firm and is its most senior patent litigator. Charles Chen, Chien-Ming Chen and Jane Tsai are other names to note.

Lee and Li Attorneys at Law

Lee and Li is a general law outfit with one of the most highly reputed IP practices in the country; an alliance with Lee and Li - Leaven IPR Agency in Beijing and Shanghai makes it a true one-stop shop for patent needs across Greater China. Senior counsellor Daisy Wang brings 40 years of experience and prosecution to the table as well as dispute and licensing wisdom. Another dual-qualified attorney, Hsiu-Ru Chien is a tenacious litigator with a zoology background; she is also secretary general of the Taiwan Patent Attorneys Association. Dennis Huang is no stranger to landmark judgments; with close to 30 years’ experience, he previously netted $700 million in damages for a US chemical company before the Taipei District Court. Multi-talented engineering maven Gloria Lu is adept at trade secret, infringement and unfair competition litigations, as well as transactional and commercialisation mandates. Further, Roger Chang most recently represented Entegris in a patent litigation suit, in which it was awarded $32 million in damages.

Li & Cai Intellectual Property Office 

The prosecution unit is staffed by patent attorneys qualified in Taiwan, Japan and the United States and serves a mix of small and medium-sized entities and listed companies, acting as a crucial hub for Western clientele to coordinate filings in Greater China. “Li & Cai has a blossoming legal and consultancy practice characterised by cordial working relationships with business and political communities.” Senior manager Yves (Yao-Hui) Chang is a key contact.

Saint Island International Patent & Law Offices

Saint Island’s substantial share of Taiwan’s patent attorney services market is maintained by its expansive network of six offices nationwide and a patent-focused workforce of 250 that has forged a prosperous network of more than 10,000 foreign associates; the practice also collaborates with Beijing Saint Island Intellectual Property Agency and Beijing Tie Chi Patent Firm to provide the full suite of IP service across Greater China. Globally connected Tony Chang was educated in the United States and has accumulated valuable experience working in the firm’s Beijing trademark agency. Sumin Lai made headlines by prevailing in HTC’s first patent litigation in Taiwan, which ultimately led to a stunning NT$3.2 million being awarded in damages to the tech giant. Managing partner Frank Liu is a patent sage with 25 years’ experience, while Patrick Yun has a knack for tackling patentability issues and prosecuting material science, software and computer-related applications.

Tai E International Patent & Law Office 

Tai E is a sizeable firm with “a good grasp of the technologies and dynamics of traditional industries”. Headquartered in Taipei and with outposts in Taichung, Tainan and Kaohsiung, the  260-strong team covers the full suite of services  across the contentious and non-contentious divide. Henry Guei is the author of many textbooks covering various Taiwanese and Chinese laws; he readily applies his encyclopaedic legal knowledge on netting landmark judgments. Managing partner Fred Chi-Tai Yen is a biotech and pharma whizz who drafts patents and resolves disputes via alternative dispute resolution mechanisms with finesse. Lastly, CEO Jerry Lin is a smart choice for the full range of electronics and information communication technology briefs.

TIPLO - Taiwan International Patent & Law Office

Founded over half a century ago, TIPLO is known as a prosecution powerhouse and is especially famous for its incoming practice. The firm’s impressive technical breadth and depth, coupled with a state-of-the-art case management system, makes it a reassuring presence for rights holders. English, Taiwanese, Mandarin and Japanese speaker JK Lin has been directing the outfit for 21 years. Fully connected with the international IP community, he co-chaired the organising committee of the 2019 Asian Patent Attorney Association 70th Council Meeting in Taipei. Chief council HG Chen also enjoys a significant level of respect among peers. He has served on the board and as the chair of the Taipei Bar Association and is an executive director of the Taiwan Patent Attorneys Association.

Top Team International Patent & Trademark Office

Top Team lives up to its name – it serves more than half of Taiwan’s greatest patent filers and a large base of illustrious patrons hailing from East Asia, Europe and the United States; it is also immensely popular with foreign associates who unequivocally commend the “impressive work quality, easy and prompt communication and reasonable costs”. One of the finest drafters of patents in Taiwan, it possesses superb Japanese language capabilities and can also draft US and Japanese applications in-house. Peggy Wu is the main point of contact for US and European clients: “Wu is extremely hands-on and invariably on top of things – her long experience of practice definitely shows in her excellent workmanship.” Her counterpart for domestic service users is Jonathan Yen; he is dual qualified as a patent attorney in both China and Taiwan. Henry Hong is the founder and owner; he has dedicated considerable resources to fostering patent attorney talent in Taiwan.

Tsai Lee & Chen Patent Attorneys & Attorneys at Law 

Tsai Lee & Chen is a highly coveted IP firm, which attracted the highest number of client references in this round of IAM Patent 1000 research for Taiwan. Indeed, the feedback aptly encapsulates the strengths of this rapidly expanding practice. “With immaculate attention to detail and lightning responsiveness, Tsai Lee & Chen provides clients with comprehensive and clear advice on Taiwanese and Chinese patent issues.” The side boasts a substantial domestic practice across Taipei, Taichung and Tainan, which complements an elite base of international patrons; and even for advice on Chinese patent issues; “its global experience, operational efficiency, reasonable fees and clear communication make it an especially savvy choice in comparison with large Chinese firms”. Crystal Chen is in charge of the international marketing division. A New York and Taiwan-qualified attorney with more than 20 years’ experience, she has a natural affinity for forging and maintaining “fulfilling” relationships with service users who revel in the “reliability and pleasant interactions” that she provides. Working closely with her, international division manager Candy KY Chen is an arbitrator, registered professional industrial engineer and a patent attorney qualified in Taiwan and the United States with in-house experience. Further, senior partner Jesse KY Peng is dual qualified as an attorney at law and a patent attorney; the former electrical engineer is a courtroom sharpshooter who has honed his craft for two decades.

Tsar & Tsai Law Firm 

Tsar & Tsai Law Firm is widely regarded as one of the most revered outfits for contentious patent work and it has also a well-formed prosecution unit, which mostly processes incoming instructions. Joyce Ho and Jennifer Lin are key litigators in the patent and wider IP spaces. Director of the IP practice group, Ho is vastly experienced in assisting high-tech companies with antitrust, unfair competition, infringement and licensing disputes. Now in her 40th year of legal practice, Lin manages the firm with a sure hand and the Asian Patent Attorneys Association vice president enjoys tremendous respect from her peers. She is an expert in the licensing of pharmaceutical patents and SEPs.

Wideband IP

“Highly professional and with a Taiwanese-dominated client base, Wideband started out as a prosecution-focused firm but has recently taken on patent contentious instructions on top of some valuation work.” Managing partner Albert Lee is a good first port of call.

Other recommended experts

Alan Chen of Rich IP & Co is armed with an electrical engineering degree and a PhD in technology law, making him an ideal choice for both prosecution and contentious mandates from high-tech companies. Trained in organic chemistry and operating out of Louis International Patent Office, Chao-Cheng Chen is proficient in biotech, chemistry, e-commerce, mechanics and semiconductor briefs. Che-Hung Chen has a percipient understanding of the patent issues faced by semiconductor, telecommunication, pharmaceutics and information and hi-tech companies, thanks to his extensive in-house and private practice experience before founding Chen & Lin in 1992. Jason Chen is the local point of contact for the Jones Day Taipei office focusing on commercial disputes, arbitration and IP disputes. Jessie Lee and Yvonne Lin ply their trade at Formosan Brothers; both litigators are accredited arbitrators with broad IP and commercial practices. Finnegan’s Gary Ma is managing partner of the Taipei office where he specialises in patent and trade secret litigations before US district courts and the International Trade Commission.

Individuals: litigation

  • 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 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
  • 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