Taiwan

Full-service firm Formosa Transnational has a sizable technology law department which satisfies all kinds of IP needs in Taiwan. Managing partner Yulan Kuo leads the IP practice. Kuo is advising Yahoo and DuPont Group on significant patent prosecution work in Taiwan. He is also involved in invalidation proceedings acting for a start-up biotech company to invalidate Merck’s patent for the drug Fosamax in a high-profile case.

The firm is also engaged in IP transactional cases. This year, Kuo advised a leading Japanese semiconductor manufacturer on the sale of its patent portfolios, which involved assessing the possible impact of pending litigation and drafting the transfer agreement. Partner Brian Hiseh is a practitioner to watch, who has represented a leading optics designer and manufacturer to obtain a favourable decision from the Taiwan IP Court in a case involving trade secrets, copyright infringement and patent ownership.

Intellectual property is one of the full-service law firm Formosan Brothers’ core practices.  A team of over 20 practitioners, including 9 patent engineers, offers advice on general legal counselling, licensing negotiation and working with government institutions on industry research. Key partner Yvonne Lin is a qualified patent attorney and attorney-at-law. She is often instructed by Japanese and Korean clients to enforce their patents in Taiwan against local corporations.

Well-regarded for patent disputes and commercial IP, Jones Day’s Taiwan team has four partners and one associate. Jason Chen, a former IP law judge, is recommended for his litigation skills. Douglas Weinstein’s arrival in 2002 strengthened the firm’s patent and trade secrets practice, especially in the electrical, computer and telecommunication industries. Previously, he was the managing partner of Finnegan Henderson Farabow Garrett & Dunner’s Taipei office.

Firmly established in the Taiwan legal market, full-service firm Lee and Li has a solid standing in IP. The firm is a one-stop-shop for domestic corporations and multinational companies, some of whom have maintained business relationship with the firm for over 30 years. “Lee and Li is absolutely outstanding in every respect,” says a client. “The service costs were reasonable, competitive, and worth every penny our company paid. The responsiveness and industry expertise exceeded our expectations.”

With over 250 professionals practising in patent matters, Lee and Li is a clear top filer with the Taiwan Intellectual Property Office who has an average of 5,000 to 8,000 applications each year. Among those, most instructions come from Europe, Japan, Korea and Taiwan. The firm is now assisting Qualcomm and its subsidiaries in a substantial amount of patent filing and prosecution in Taiwan, China and Hong Kong. On the contentious side, the practice has 25 attorneys-at-law working to protect and enforce patents in Taiwan. Much of its litigation success is attributed to lead partners’ rich experiences, dual qualifications and overseas working or study background.

Dennis Huang and Hsiu-Ru Chien advised Toshiba on filing two patent infringement lawsuits against two Taiwanese DVD-ROM manufacturers Abico-FS and Infodisc Technology. The Taiwan IP Court granted permanent injunction and damage awards in favour of Toshiba in both cases. Infodisc appealed to the second instance court and later on the Supreme Court, and the final judgement resulted in a permanent injunction and increased the damage award from NTD5.89 million m($182,000) to NTD72.4 million ($223,000).

“Although everyone we dealt with at Lee and Li were of the highest calibre, I found Dennis Huang and Gloria Lu to be the best attorneys I ever dealt with in my 35 years of C-level business and legal experience,” says a client who used the firm for patent prosecution and litigation matters. “They are meticulous in every detail, highly knowledgeable in the law, and practical and on point in all their recommendations.” Another active member of the firm, partner Roger Chang is “an outstanding patent litigator in Taiwan. He knows the courts well and is a leader in the IP community in Taiwan” according to a peer.

Saint Island International Patent & Law Offices is one of the oldest and most experienced players in IP law in Taiwan. The firm has over 500 staff including 230 patent professionals and 25 lawyers across five offices in Taiwan. Founding partner Patrick Yun is the main contact in the firm’s international department which acts for foreign corporations in specification drafting, translation and patent filing. The firm has a solid reputation in the US and Japan which constitute most of its overseas instructions. Partner Frank Liu is acknowledged as a leading figure in patent contentious work. He is also experienced in technology licensing and unfair competition matters.

Boutique IP firm SUNDIAL Intellectual Property Law Firm has a small team of 30 people in Taipei. Though the filing number is not big, acts for high technology corporations, including Samsung Electronics, Darfon Electronics, MediaTek, Ali, HTC, Industrial Technology Research Institute of Taiwan, Sercomm, Arcadyan Technology and HannStar Display, on drafting patent specifications. It has received splendid feedback among clients: “Sundial IP has many professional patent agents, and provides excellent advice and services. In addition, they work with clients very closely to achieve the goal what the client really need.”

The name of managing partner Edmund Chi is frequently mentioned by sources. “Chi is able to envision the bigger picture of what the invention could be in the future rather than solely on the patent at this moment. He knows how to use the limited available time to produce the best result,” says a client. Another client also praised him as an all-rounder who is managing a client’s global patent portfolio. Apart from patent prosecution, Chi advises on invalidation and infringement actions.

Tai E International Patent & Law Office climbed to tier 1 from tier 2 in firm rankings this year, due to its strong industry expertise and mounting positive market feedback. A client notes: “Generally Tai E is very responsive to our instructions and has been obtaining positive results for us from Taiwan Intellectual Property Office (TIPO).” With 14 patent attorneys and around 80 technological professionals, patent prosecution has long been the firm’s bread and butter. Managing partner Fred Yen is taking a lead role at the firm’s day-to-day practice. A US corporation is fully satisfied with Yen’s service: “His team provides the English translation of TIPO’s feedback in a timely manner. He also provides valuable and straightforward comments on how to amend the claims and how to address the arguments made by the Taiwanese Patent Office - this saves time, money and effort.” The firm has a track record of serving a considerable number of US tech-heavy corporations, including Axcelis Technologies, Xilinx, Dow Chemical and Promerus.

Known for outstanding multilingual abilities and wide industrial coverage, TIPLO is one of the first choices for Japanese clients in patent filing and enforcement work. Apart from Japan, the firm also received instructions from the US, Germany, France and Switzerland. The firm has over 60 patent engineers across the chemical, pharmaceutical, biotechnology, mechanics, electrics, electronics and semiconductor sectors. Partner H G Chen is “a brilliant patent litigator” who holds the reins of the legal department.

Top Team International Patent & Trademark Office is a reliable resource for all patent matters and is regarded as one of the top representatives in Taiwan both before TIPO and the USPTO. A German client attributes his long cooperation with the firm to its “technical expertise, cost-effectiveness and understanding of the needs of clients from industry in all kinds of IP-matters”.

Managed by founding partner Henry Hong, the firm consists of over 60 patent engineers and three attorneys-at-law. Peggy Wu is a standout patent practitioner whose expertise in pharmaceutical and biochemistry is acknowledged, and who handles work from Japanese corporations. “Peggy is outstanding to work with. She is prompt, complete and reliable with her responses,” says a client. Her professional grasp of technical knowledge also impressed a partner from a US law firm who says: “It's been a great pleasure for our litigators to work on cases with technical support from Peggy.”

Well-respected law firm Tsai Lee & Chen celebrated its 20th anniversary this year. Over 140 IP professionals across three offices in Taiwan are dedicated to offering services to Taiwanese, European and American companies. A global leading technology company recommends the firm’s patent prosecution services: “They are our sole provider of services in Taiwan and we rely heavily on them for effective prosecution of our patent work and securing of our rights. Their quality, reliability and service levels are very high.“ 

Partner Candy Chen is outstanding in handling patent matters. Nice-Pak Product filed a design patent application regarding the pattern of a nonwoven textile. During substantive examination, the Taiwan Intellectual Property Office (TIPO) examiner raised several formality issues and intended to object to the claimed design. Chen took on the case and provided the necessary amendments to overcome all the objections after conducting a telephone interview with the examiner. Afterwards, the TIPO examiner found the amendments admissible and then granted the design. Litigator Victor Lee is often called on to address knotty contentious matters. He defended OSIM Taiwan in a patent infringement matter regarding eyewear after the Court ruled in favour of the plaintiff in the first two instances. The case is now on appeal to the Supreme Court.

Litigation giant Tsar & Tsai Law Firm is a full-service firm in Taiwan whose IP contentious practice is second to none within the jurisdiction. Key contact Jennifer Lin has scored wins for some American clients recently and also provides leadership in her role as managing partner. She is a “very knowledgeable and professional attorney”, says a partner at a New Zealand firm. Lin defended NexPlanar in a patent infringement lawsuit relating to a polishing pads technique, initiated by Rohm & Haas Electronic Materials CMP. The Supreme Court gave a decision in favour of Nexpalnar and invalidated two of the plaintiff’s patents.

The firm represented Applied Materials in defending an accusation of violation of the Taiwan Fair Trade Act regarding the patent owner’s exercise of patent rights brought by Korean company Jusung Engineering. The Supreme Court retained the finding of the IP court that no violation was committed by Applied Materials, and dismissed the appeal claim. Partner Joyce Ho is the director of the firm’s IP department. She specialises in assisting high tech companies in patent-related infringement, transactional and anti-trust matters.

Eiger is headquartered in Taipei and offers a range of IP services to brand owners from America and Europe. Partner and head of the IP practice John Eastwood has chaired the European Chamber of Commerce in Taipei's Intellectual Property Rights Committee since its founding in 2001 and is well respected by peers with one noting: "John is absolutely brilliant." Eastwood represented Bottega Veneta in knocking out all the trade mark registrations by a local company called Bottega that had created and submitted to the administrative courts a false company history, pretending to have had origins in France and be a famous mark in Europe. Other clients include Philip Morris International, TOMS, Abercrombie & Fitch and Gucci. "The firm offers great service, and is very responsive, client-orientated and professional," says one client.

Established in 1974, Formosa Transnational has a technology law department, which consists of an elite team of experienced attorneys and technicians. Apart from trade mark applications, the firm also provides services related to counterfeiting, raids, criminal proceedings and litigation. Frank Shao-Fan Lu represented OBI Pharma in a negotiation of a trade mark opposition. The firm also has clients such as Yung Shin Aluminium and APlus Biotech.

Lee and Li is the largest multi-service IP practice in Taiwan with more than 100 specialists. The firm has a PRC practice group and Japan practice group to assist foreign and local companies to enter the China market, as well as to attend to the needs of Japanese firms. Some international clients have worked with Lee and Li for more than 30 years. "The firm is efficient, proactive and have clear guidance. Advice is tailored to individual circumstances. Very professional and knowledgeable," says one client. Ruey-Sen Tsai led the team and successfully represented Valentino in a trade mark invalidation administrative litigation. Roger Chang acted for Novartis Pharma in the trade mark invalidation actions against Anxo Pharmaceutical. Chang also acted for Moroccanoil Israel in a civil suit against a local company and was successful at both first instance and second instance.

Saint Island International Patent & Law Offices took home Managing IP's Firm of the Year Award in Taiwan (2017). With around 80 trade mark professionals and offices in including Taipei, Taichung, Tainan, Chiayi and Kaohsiung, Saint Island has one of the largest IP practices in the region. "This firm is a long-term associate of our firm in Los Angeles. Their work is consistently excellent and timely and their charges are fair," says one client. Julia Hung represented KOSÉCorporation, a Japanese cosmetics brand owner, in filing a three-dimensional trade mark application and an administrative litigation against the disclaimer imposed by TIPO at Taiwan's IP Court. The appeal by TIPO was dismissed in January 2016. Hung also represented SDI Technologies to file an opposition against a trade mark registration for iHOME iHOME and Design and represented Hachette Filipacchi Presse, brand owner of Elle watch, in a trade mark infringement case against a local ex-distributor.

Founded in 1976, Tai E International Patent & Law Office is one of the most highly regarded IP law firms in Taiwan. Peers mention name partner and IP Star Fred CT Yen as the stand out practitioner at the firm. The firm has cultivated trust and long-term relationships with clients in Europe and the US. Its case studies feature prosecution trade mark matters on behalf of clients such as Audi, Volkswagen, Kangol and United States Postal Service. Tai E has recorded one of the highest successful trade mark application rates in the region, thanks to the firm's pre-filing counselling and clearing service.

A law firm boasting one of the most experienced and dedicated trade mark prosecution and disputes resolution practices, TIPLO has built a solid presence in Taiwan. The firm has different trade mark departments to provide service to clients from the US, Europe and Japan. Johnny Yang heads the international trade mark department and has more than 30 years of experience. The firm also has a reputable copyright department that handles consultation, cancellation, appeal and administrative suits.

Tsar & Tsai Law Firm was established in 1965 and has more than 70 professionals, including former public prosecutors, judicial officers and trade mark examiners. Apart from the head office in Taipei, the firm also has a branch office in Hsinchu Science and Industrial Park. Given its strong litigation team, the firm is well known among industry peers for its contentious work. The firm has experience in anti-counterfeiting and defending infringement allegations. Joyce Ho is a notable practitioner who specialises in trade mark and patent litigation.

Winkler Partners has filed trade mark applications and provided enforcement support for 35 of Interbrand's 100 Best Global Brands in 2016, and is also noted for work in the entertainment industry. Peter Dernbach heads the IP practice at Winkler Partners and has been on the Board of INTA since 2015. The firm helped the Scotch Whisky Association (SWA) register certification marks for Scotch Whisky in both English and Chinese characters, which SWA called "a legal breakthrough". A May 2016 raid on a popular wholesale clothing market in Taipei in coordination with police netted 7,000 items of counterfeit goods, and marked one of the largest hauls of its kind in Taiwanese history.