Formosa Transnational

IAM Research

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Recommended - Firms: prosecution

Silver - Firms: litigation

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.

Firm Profile

Formosa Transnational (FT) is one of the largest firms in Taiwan. Ever since it was established in 1974, FT has always had a selective approach to recruiting staff and attorneys: not only does FT look for outstanding individuals who are also team players, it also expects attorneys to specialise in key legal areas – be it international arbitration, civil litigation, criminal defence, investment, banking and finance, labour and employment, maritime and insurance, patents, trademarks, copyright, trade secrets, data protection, competition, digital platform or entertainment.

FT has thus assembled a team of skilled and experienced attorneys and experts who deliver world-class dispute resolution and transactional services to assist clients in dealing with global market competition and a knowledge-based economy. At FT, we are concerned with the needs of each and every client. They are all considered equally important.

Patent practice

FT takes a leading role in Taiwan’s IP community.  FT’s technology and law department consists of experienced litigators and patent engineers knowledgeable in various areas of law and technology who have multilingual capabilities and multi-jurisdictional experience. Specifically, we have Japanese-speaking attorneys and engineers and are capable of handling cases in either Japanese or English, or both.

Since the establishment of Taiwan’s specialised Intellectual Property Court in 2008, our team has been widely recognised as one of the most successful teams in patent litigation. Our team’s recent victories include a case where both parties were Japanese companies competing for their respective business developments in Taiwan. We helped a client in the industry of semiconductor equipment manufacturing to achieve a reasonable solution in a high-profile patent infringement dispute. We also assisted our client in bringing an IP law issue before Taiwan’s Constitutional Court, which granted a decision addressing the organisation and operation of Taiwan’s Intellectual Property Court.

Our clients are active in almost every industrial sector: semiconductors, integrated circuit design, packaging, testing, computer software and accessories, the Internet, e-commerce, telecommunications, wireless telecommunications, mobile phones, cloud computing, consumer electronics, mechanical and electrical engineering, photonics, energy, optoelectronics, plasma, business methods, industrial design, pharmaceuticals, chemical companies, biochemistry and medical devices. We believe, therefore, that FT is capable of assisting clients in matters that involve electronic technology. We have a group of experienced trial lawyers and patent engineers closely working together in patent-related cases, which is the key to success for our patent clients.

We are experienced in working with law firms in many different countries and in helping clients enforce their patents in many different jurisdictions, such as the United States, China, Korea, Europe and Japan. As such, when assisting clients with the enforcement of their Taiwanese patents, we provide them with a comprehensive plan and analysis that takes into account issues regarding the enforcement of their foreign patents.

In addition to our IP dispute resolution practice, we handle a large volume of patent matters including filing and prosecution. We assist clients with the preparation and filing of patent applications in both Taiwan and China. Because Taiwan is not a PCT member, it is of great importance to consider and implement a comprehensive filing strategy in advance.

Trademark practice 

We represent many companies and individuals in obtaining, maintaining and enforcing their trademark rights. We work closely with Taiwan IP police and customs officers to help clients to enforce and protect their Taiwanese trademarks.

In addition, we advise on and handle all aspects of trademark work, including applications, prosecutions and administrative litigation to protect our clients’ trademark rights. We work with many global IP firms, and assist clients from various jurisdictions in maintaining and managing their trademark rights portfolios.

Trade secrets practice 

FT helped a client obtain from the Intellectual Property Court a favourable judgment in a trade secret misappropriation case, where the court awarded our client enhanced damages of approximately $50.7 million. This high-profile ruling marked a new approach to Taiwan trade secrets law. Previously, Taiwanese companies had been reluctant to protect their know-how with trade secrets. The outcome of this case, however, will demonstrate that a trade secrets holder may enforce its trade secrets and obtain proper remedies. This case is also a good example of this firm’s leading role in Taiwan’s IP community.

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