Bucking a long-term downward trend, patent applications at the Taiwan IP Office experienced a modest increase in 2017. Manufacturers have tended to file in China rather than in Taiwan, lured away from the island by the economic might of the People’s Republic. It now appears that Taiwanese enterprise has woken up to the opportunities afforded by rights protection, with more emphasis on realising value from innovation in domestic industries. Overall levels of enforcement activity remain stable, although the landmark damages awarded in Ability Opto-Electronics Technology v Largan Precision caused a stir and may lead to an increase in the filing of infringement actions.
Firms: litigation and transactions
- Formosa Transnational
- Lee and Li Attorneys at Law
- Saint Island International Patent & Law Offices
- Tsar & Tsai Law Firm
- Baker McKenzie
- Formosan Brothers
- Jones Day
- Lee and Li Attorneys at Law
- Saint Island International Patent & Law Offices
- Tai E International Patent & Law Office
- Top Team International Patent & Trademark Office
- Tsai Lee & Chen Patent Attorneys & Attorneys at Law
- Baker McKenzie
- TIPLO - Taiwan International Patent & Law Office
- Chuan Tai Patent & Trademark Law Office
- Deep & Far
- Formosa Transnational
- Li & Cai International Law Office
- Winkler Partners
No international outfit has taken to the Taiwanese IP market with quite the same vigour as Baker McKenzie. The Taipei set boasts a substantial patent prosecution practice that is perfectly tailored to its target audience: “Mastery in Chinese-language applications is a given; readiness to translate from a full range of languages is a distinct advantage; exceptional drafting of English-language specifications makes it special.” The line-up is also preferred counsel to a host of international concerns facing disputes and transactional challenges on the island. Presenting the firm’s services is Grace Shao, a versatile lawyer who excels in the litigation and licensing spaces. Earning his place in the IAM Patent 1000 for his instrumental roles in key litigation and licensing matters, biotech and chemistry whizz Da-Fa Feng is another vital piece in any patent puzzle.
Chuan Tai Patent & Trademark Law Office
Led by a band of former patent examiners from the Taiwan Intellectual Property Office (TIPO), Chuan Tai continues to serve the market with the same diligence that it has shown since opening its doors in 1979. Domestic biotech and electronics concerns make a beeline for the office, seeking to avail themselves of its sophisticated guidance in contentious and non-contentious mandates; multinational concerns such as Wm Wrigley Jr Company can also be found on a glittering client list. Boasting a carefully cultivated network of foreign associates, the firm flexes its patent muscles worldwide without hindrance. Founder Ming-Chung Tsou is a key contact.
Deep & Far
Quality is a top priority for patent marshal Deep & Far, guaranteeing watertight protection across a diverse technological array. Although the prosecution practice is the jewel in its crown, the troop executes the full span of patent services and keeps its eyes firmly on adjacent competition and trade secrets fields; a laser focus on its followers’ commercial ambitions is apparent in all the advice it gives. A pioneering professional in the Taiwanese market, CF Tsai leads the eminently qualified team by example. The managing partner is the first attorney at law in Taiwan to have both legal and technical qualifications and channels over 35 years’ experience in rights protection into a venerable practice.
One of the region’s heavyweights, full-service outfit Eiger conducts a patent symphony from its Taipei headquarters, with an office in Shanghai adding gravitas across the Taiwan Strait. With qualifications that allow practice in five countries, the IP team’s exceptional international coverage is an asset to multinationals in need of cross-border IP strategy and a champion in overseas proceedings. Such is the group’s pull that it has no problems mobilising public bodies to assist in local investigations, ensuring that clients’ instructions are executed with virtue and efficiency. Wielding the IP might is John Eastwood, a consummate legal professional with interests in commercial and employment law that complement his IP priorities. As chair of the IP rights committee of the European Chamber of Commerce Taiwan, he works closely with the European Commission and the US government to shape IP policy in Taiwan. Fellow litigator Eve Chen is a dab hand at IP enforcement. She has led on high-stakes campaigns for numerous brands, which count on expertise amassed over 20 years in the field to navigate them out of tight spots.
Litigation powerhouse Formosa Transnational sent shockwaves through the region in December last year when it prevailed in a patent ownership and trade secrets dispute, winning Largan Precision a $50.7 million damages award alongside a favourable judgment. In this headline-grabbing case (notable due to its precedent-setting nature and broad impact across multiple IP disciplines), the 60-strong technology law division showcased both talent and diligence, spearheaded by pre-eminent professional Yulan Kuo. Alongside his meticulous oversight, Kuo is an accomplished litigator whose out-of-the-box thinking was instrumental to Largan’s victory, as well as many other successes; his creative use of forensic accountants during proceedings proved persuasive in court. He keeps a watchful eye on the prosecution practice, which has recently taken numerous financial technology patents to grant nationally and provided advice on cryptocurrency issues to players across the globe.
Hammering out licensing agreements and bringing a swift end to cross-border disputes are at the top of Formosan Brothers’ list of strengths. A major player in electronics, software and chemistry domains, the troop is frequently sought out by illustrious clients from China, Japan and further afield, which value its considerable experience on the international stage. Both creative litigators and persuasive negotiators with law degrees from US universities, Jessie Lee and Yvonne Lin enjoy broad practices; their advice resonates across IP, civil and commercial matters.
With many of its exceptional patent professionals qualified both in the United States and Taiwan, Jones Day is ideally placed to represent American corporates in complex disputes. M&A, commercial and cross-border capabilities dovetail nicely with a robust IP department, cementing the Taipei bureau’s place as a cornerstone of the group’s pan-Asian presence. Earning an international fan club, the set “shines brightest in enforcement work” and partner-in-charge Jason Chen is no stranger to challenging patent infringement disputes. An accomplished litigator, the Taipei Bar Association IP Law Committee director lists victory in one of Taiwan’s highest-value patent cases on his CV; never one to rest on his laurels, he brings the same insight and strategic forethought showcased in that battle to every new instruction sent his way.
Lee and Li Attorneys at Law
“At the forefront of the regional IP scene, Lee and Li knows everything there is to know about both Taiwanese and Chinese markets and is a great ally to any foreign associate.” An affiliation with Lee and Li-Leaven IP agency in Beijing makes the handling of an ever-growing China-bound filing caseload a breeze for its talented team. It is “a professional bunch in litigation”, too – something that is apparent in both its written and oral presentations to the court, where “as a respectful adversary that pursues its clients’ best interests, it always plays fair and square”. On both sides of the contentious/non-contentious divide, Chinese and Taiwanese patent attorney Hsiu-Ru Chien is a potent strategist who holds immense appeal to listed companies and burgeoning start-ups. Recently, the chemistry whizz secured a rare all-out victory for ASE Group in an administrative litigation before the Intellectual Property Court, which ordered the TIPO to grant a previously rejected patent. Chien surrounds herself with a crack team of specialists, among whom Daisy Wang and Dennis Huang are the cream of the crop. Like Chien, Wang dexterously manoeuvres across prosecution and litigation mandates. The intelligent consultant frequently publishes articles on IP matters in English, Chinese and Japanese. “A renowned professional”, Huang is a sight to be seen in the courtroom, where he dispatches a host of challenges for top-tier industrial players. With impressive legal qualifications, the two-decade veteran applies both theory and practical expertise in order to secure outstanding results. Ably straddling both legal and technical fields, Roger Chang is a go-to for complex IP disputes, where he has earned a reputation for his success in winning high-value damages awards for grateful multinationals.
Li & Cai International Law Office
Earning its stars off the back of repeated chemical, mechanical and electrical engineering successes, Li & Cai whips up a gourmet offering that sustains clients throughout the lifecycle of their patents. Rights holders rest easy knowing that applications, re-examinations, infringement analyses and enforcement are all in a day’s work for the prodigious outfit. Managing partner Jia-Huei Chen is a consummate administrator, ready to provide rights holders with more information.
Saint Island International Patent & Law Offices
Doing a roaring trade on both sides of its practice, Saint Island guarantees rock-solid rights protection from six offices across Taiwan. A stunning 7,000 prosecution briefs in the last year bear testament to the trust placed in the non-contentious practice by innovators and foreign associates, and to the healthy growth the set has experienced. Firm chairman Patrick Yun takes ownership over many of these instructions. A materials science whizz also proficient in software matters, the studious professional has amassed ample knowledge of IP systems around the world through extensive research. Examples of the ensemble’s heavy-hitting litigation work include the successful representation of Samsung Electronics in several patent disputes over the last few years – in which cases Frank Liu and Sumin Lai showcased their impressive abilities. A litigator who has fought under the set’s banner for 25 years, Liu is a prize fighter in the courtroom. A well-trained electrical engineer and former patent examiner at Taiwan’s patent office, Lai is a lawyer whose influence is felt internationally.
Boasting 65 years in practice, Tai E has ushered in a phase of renewal recently, taking on significant new blood to replace outgoing professionals. Divided across four technical divisions, the refreshed line-up retains the tight grasp of commercial goals associated with the name. While prosecution is the troop’s raison d’etre, a proficient litigation capacity is used to superb effect; drawing on his remarkable electronics mastery, managing partner Jerry Lin recently fended off a non-practising entity-style infringement claim brought against its client, Xunwei Technologies. Fellow patent attorney Fred Chi-Tai Yen boasts an aptitude for biology and immunology briefs. Yen also focuses his talents on alternative modes of dispute resolution and plays a decisive role in arbitration and mediation procedures.
TIPLO - Taiwan International Patent & Law Office
Earning the group’s reputation as “a leading representative of Taiwanese and Japanese rights holders”, TIPLO’s 70 patent engineers each draw on an average of 10 years’ drafting experience to draft perfect patents from diverse technical origins. Upheld by senior patent attorneys, stringent quality controls remove the possibility of errors that might bring down overall quality levels. A prosecution-first firm servicing a “premier client base”, its impressive line up also guarantees a reliable showing in litigation. At the helm, HG Chen has amassed over 30 years’ experience representing global rights holders, which he channels into successful performances in litigation and licensing endeavours.
Top Team International Patent & Trademark Office
Best known for its protection of electrical and semiconductor inventions, Top Team has won a loyal international following among various other sectors. Recently bringing a cadre of new arrivals on board, the patent practice has made substantial changes to the line-up – yet it continues to guarantee a high-quality offering by providing regular training courses for its engineers. Among them, Peggy Wu stands out for her mastery of chemical and pharmaceutical concepts. The savvy prosecutor boasts extensive experience in bringing patents to grant in multiple jurisdictions. In contentious briefs, Julia Liu is a discerning choice given her delivery of well-reasoned and pragmatic counsel. Owner and founder Henry Hong adds depth to both sides of the practice; customers know that the instructions he oversees will be handled with verve and proficiency.
Manufacturers of electronics and high-tech goods depend on Tsai Lee & Chen’s commercially attuned patent offering. The excellent practice is increasingly throwing its weight around internationally, while its healthy growth on both sides of the Taiwan Strait is opening important doors for rights holders. Recent forays into the transactional space – a fresh offering from the team – add cross-border appeal to this mix; dedicated client managers ensure the set’s hallmark responsiveness carries over into comprehensive freedom-to-operate analyses and due diligence exercises. Helming the global practice, Taiwan and US-qualified Candy Chen is a mechanical engineer of the highest order and a safe pair of hands for software applications. Complementing Chen’s US talents, electronic engineer Jesse Peng is admitted to the Taiwanese and Chinese patent bars. He has more than 20 years’ experience in patent prosecution under his belt.
Lex Mundi member Tsar & Tsai is feted for the highly commercial and holistic counsel that its 17 IP attorneys bring to each mandate. In contentious settings, the line up delivers a tour de force, drawing on the far-reaching legal talents of colleagues in telecoms, corporate and commercial divisions (among others); although the courtroom is its natural habitat, the group keeps patent engineers on hand to meet its patrons’ prosecution demands. Joyce Ho oversees the IP practice. An eloquent litigator, she makes her awareness of IP policy and regulatory affairs apparent through her sage counsel. Managing partner Jennifer Lin is a hands-on lawyer who is exceptional when negotiating complex licensing deals; she currently serves as senior vice president of the Asian Patent Attorneys Association.
A renowned prosecutor of design patents for luxury goods and apparel concerns, Winkler Partners is routinely entrusted with inbound instructions by an illustrious multinational clientele. Select patrons take advantage of Winkler’s capacity for regional and international filings as well, a task to which the set’s translation and technical teams take with flair and sophistication. Peter Dernbach heads the practice.
Other recommended expertsA favourite among the Japanese patrons of his former residence Li & Cai, Chao-Ming Chen now operates under the eponymous moniker of CMC Intellectual Property Firm. He remains an excellent source of mechanical engineering advice. Having counselled the likes of IBM Taiwan over his long career, Che-Hung Chen of Chen & Lin Attorneys-at-Law draws from a comprehensive transactional toolkit when negotiating complex licensing agreements. He is also frequently called in to resolve difficult IP disputes. Managing partner of Finnegan Taipei, Gary Ma is a strategically gifted and commercially sound lawyer whose sage advice in infringement settings is instrumental to clients of any hue.
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
- Che-Hung Chen - Chen & Lin 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
- 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
- Daisy Wang - Lee and Li Attorneys at Law
- Candy KY Chen - Tsai Lee & Chen Patent Attorneys & Attorneys at Law
- Chao-Ming Chen - CMC Intellectual Property Firm
- 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