Russell Horng

You are celebrated as one of the most knowledgeable and experienced IP lawyers in Taiwan. Which have been your most memorable cases?

The General Association of Chinese Culture (GACC) v the patentee of Taiwan Invention Patent 1449000 has to be my most memorable case to date. The GACC was accused of infringement by the patentee of Taiwan Invention Patent I449000 in 2018. The president of Taiwan has been the representative of the GACC  since 1967 when it was established by Chiang Kai-shek.

The GACC requested that the Institute for Information Industry (III) and the National Palace Museum recommend the most appropriate patent firm to defend against the litigation. Since the subject matter claimed in the patent at issue was software-related, the III and the National Palace Museum recommended our firm.

We eventually won the case and successfully invalidated the patent. Thus, the Taipei District Court dismissed the infringement litigation.

A close second in my most memorable cases is that involving Hunghwa Telecom. This company had a plan to cooperate with Warner Village Cinema so that consumers could purchase cinema tickets via their mobile phones. However, in 2007 the two companies were accused of infringing on the rights of the patentee of Taiwan Invention Patent 164051.

Hunghwa Telecom came to Rich IP & Co for assistance.  We won the case and successfully invalidated the patent at issue. The Taipei District Court subsequently dismissed the litigation.

Another memorable case was Nichia Corporation v Everlight Electronics Co Ltd. Nichia Corporation was the patentee of Taiwan Design Patent 89036. It filed a patent infringement litigation through Lee & Li against Everlight Electronics, a leading LED company in Taiwan. In 2011, Nichia won the litigation in the Taipei District Court and the Taiwan High Court. 

Following this, Everlight filed a cancellation (invalidation) action against Nichia’s Taiwan Design Patent 89036. Everlight lost both the infringement litigations in the courts and the cancellation action before the Taiwan Intellectual Property Office.

Everlight then came to Rich IP & Co for legal counsel. We won the administrative appeal for the cancellation action as well as the appeal for the infringement litigation in the Supreme Court. The Taiwan IP Court and the Taiwan Supreme Administrative Court permanently revoked Nichia’s patent.

How is the development of AI tools affecting your practice?

The development of AI tools has been quite helpful in  preparing translations and formality of documents, as well as patent searches and preliminary analyses.

You have delivered numerous patent training courses for Taiwanese lawyers, patent attorneys, patent engineers and in-house counsellors. What two pieces of advice would you offer to students hoping to pursue a career in patent law?

First, the younger generation should not only be familiar with IP prosecutions in the domestic area, but with contentious IP matters in foreign jurisdictions as well.

Second, they should bear in mind that AI tools should preferably only be used for patent searches and preliminary analyses.

What are the most frequent mistakes that foreign clients make in tackling high-stakes IP issues at the local level in Taiwan – and how can they avoid them?

Unfortunately, Taiwan is not a member of most international conventions, treaties and agreements. This means that the Patent Cooperation Treaty procedure is not applicable to Taiwan IP cases, which is a concern for litigation processes.

It is also particularly important for foreign applicants to seek assistance from Taiwan local IP experts to avoid unexpected difficulties.

Russell Horng

Founder and President
[email protected]

Russell Horng has been asked by Taiwan Judicial Yuan to deliver patent training courses for IP judges since 2005. He has also acted as an examiner for reviewing the qualification of applicants for positions as IP judges, and as an expert reviewer of the qualification for outstanding examiners. In 2004, Mr Horng was invited by the Taiwanese government to act as chairman in undertaking their project of improving the quality of patent filing and examination.

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