Intellectual property in Taiwan

Baker McKenzie

Baker McKenzie handles global trade mark and patent portfolios for multinational clients in areas including the pharmaceutical, cosmetics and electronics industries. The team is strong in IP litigation and patent enforcement suits, particularly in the pharmaceutical sector, and is developing a growing specialism in trade secret protection, misappropriation and breach of trust lawsuits, where it acts for  hi-tech companies. The practice is co-headed by Lindy Chern and Grace Shao, who focuses on contract negotiation for technology licensing, litigation related to intellectual property, fair trade law and commercial matters.

Practice head(s):

Lindy Chern; Grace Shao

Testimonials

‘The team are responsive and offer helpful advice.’

Eiger

Eiger is a full-service provider of contentious and non-contentious IP work, and handles civil and criminal IP-enforcement litigation for major global brands. The practice is particularly recommended for American and European companies, and often works with major global law firms without an established legal presence in Taiwan; the firm has cross-Strait and regional supervision responsibilities for several European and American companies. John Eastwood jointly heads the practice alongside Heather Hsiao, who recently made parter. Experienced litigator Eve Chen and Michael Werner, who manages the firm's trademark filing practice, are also recommended.

Practice head(s):

John Eastwood; Heather Hsiao

Other key lawyers:

Eve Chen

Key clients

Prada

Dolby

Philip Morris International

TOMS

Tiffany

Koval Distillery

Comcast

Work highlights

  • Worked with Philip Morris International on its brand protection and trade mark matters in Taiwan.
  • Worked closely with Tiffany on a variety of brand-protection initiatives in the Taiwan market.
  • Handled greater-China trade mark registration and administrative litigation on behalf of Koval Distillery, based in Chicago.
  • Handled nationwide anticounterfeiting work on behalf of Prada.

Formosan Brothers Attorneys at Law

Formosan Brothers Attorneys at Law has a full-service IP practice including patent, copyright and trademark registration, licensing and litigation. The team also handles matters relating to trade secrets, and includes individuals registered as patent attorneys in China and the US. The names to note are experienced litigator and licensed patent attorney Yvonne Lin, Yowlun Su, who focuses on the pharmaceuticals sector, and trade mark and trade secret specialist Jessie Lee.

Other key lawyers:

Yvonne Lin; Yowlun Su; Jessie Lee

Work highlights

  • Registered a trade mark and defended against an invalidation claim for a hi-tech company.
  • Represented a German automotive company in a patent lawsuit.
  • Defended a biotech company in a claim over copyright infringement.
  • Defended a Korean semiconductor company in a patent infringement lawsuit.
  • Defended a retail platform in a counterfeiting lawsuit brought against one of its vendors and by extension the company.

Jones Day

Jones Day has a full-service IP practice, covering licensing, IP portfolio management, patent counselling and IP enforcement. In addition, the team has particular strength in patent litigation. The Taipei practice group has access to the firm's global intellectual property practice, giving it the depth and breadth to handle multi-jurisdictional mandates, particularly across China and the US. Jason Chen, Po-Chien Chen (who specialises in trade secrets disputes and privacy policies) and leading litigator Simon Yu jointly head the practice.

Practice head(s):

Jason Chen; Po-Chien Chen; Simon Yu

Key clients

Taiwan Semiconductor Manufacturing Company

Ability opto-Electronics Technology Co. Ltd

E-Lead Electronic

Hitachi Consumer Electronics

Work highlights

  • Represented Taiwan Semiconductor Manufacturing Company in connection with potential patent disputes, license agreements, protective orders and drafting and prosecuting US patent applications.
  • Represented Ability opto-Electronics Technology in an appeal of a copyright and trade secrets issue, and in a criminal trial concerning Largan Precision, a supplier of camera lens modules.
  • Represented Educational Testing Service, a private non-profit educational testing and assessment organization, in civil and criminal copyright infringement cases against the infringers concerning the leak of TOEIC test questions.
  • Represented Hitachi Consumer Electronics and Hitachi Maxell as licensors of a package of patents with respect to televisions, in a case with damages valued at $4.8m.
  • Represented E-Lead Electronic in an appeal of an infringement of a computer program copyright.

Lee and Li, Attorneys-at-Law

The IP team at Lee and Li, Attorneys-at-Law provides a full range of trademark services, from acquisition, maintenance and dispute resolution to trademark exploitation. Patent prosecution and maintenance is another area of expertise, in Taiwan as well as in China, the US, Europe, Japan and Korea.

Lexcel Partners

Lexcel Partners provides comprehensive IP service, with a particular focus on global patent filing and registration. The practice also handles litigation and enforcement procedures. The team is headed by Jolene Wang, who has more than thirty years of experience in the field and particular expertise in the biomedical, chemical and pharmaceutical sectors. Also recommended is Linda Cheng, who has extensive experience with cross-border patent matters.

Practice head(s):

Jolene Wang

Other key lawyers:

Linda Cheng

Key clients

Luye Pharma Group

OwlTing Group

CoolBitX Technology

TaiMed Biologics Inc.

Academic Sinica

Microbio Group

Taipei Veteran General Hospital

Work highlights

  • Filed an appeal on behalf of Luye Pharma Hong Kong against a decision which invalidated a patent.
  • Assisted Obook Holdings, a software company, in filing a patent claim globally.
  • Assisted CoolBitX Technology to file a patent application globally.
  • Assissted TaiMed Biologics, a life sciences and pharmaceuticals company, to file a patent application globally.
  • Assisted Academica Sinica, a pharmaceuticals company, to file a patent application globally.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP provides full-coverage IP service to Taiwanese companies looking to expand into the global market and is particularly recommended for cross-border matters between Taiwan and the US. The practice has a strong offering in electronics technology, semiconductor technology, pharmaceuticals and biotechnology. The highly experienced Robert Benson heads the Taipei office. Another key contact is Hsiwen Lo, who specialises in IP matters involving complex technologies. Jeffrey Johnson and Johannes Hsu are also recommended.

Practice head(s):

Jared Bobrow; Sten Jensen

Testimonials

Top-of-the-line

Robert Benson is particularly excellent

Key clients

Innolux Corp.

HTC Corp.

MediaTek Inc.

Realtek Semiconductor Corp.

Leedarson Lighting Co. Ltd.

ViewSonic Corp.

Foxconn Interconnect Technology (FIT) & Hon Hai Precision Industry Co.

Compal Electronics, Inc.

Taiwan Semiconductor Manufacturing Company Limited

ASE, Inc.

TPK Touch Solutions, Inc.

Work highlights

  • Secured an IPR victory for semiconductor company MediaTek at the Patent Trial and Appeal Board in an investigation by the US International Trade Commission.
  • Represented FoxConn in an ITC investigation involving automotive electronic connectors.
  • Represented Innolux Corp. in a multi-patent litigation in the Eastern District of Texas.
  • Represented Leedarson Lighting in a patent infringement action against Lighting Science Group.

Tai E International Patent & Law Office

Large boutique IP firm Tai E International Patent & Law Office provides a full range of contentious and non-contentious IP services. The team has a good amount of experience with mandates involving cross-border jurisdictions, acting for domestic and international clients. The practice is co-headed by Henry GueiFred Yen, a veteran patent attorney and trade mark agent, arbitrator and mediator, and Jerry Lin, who is experienced in counselling on validity matters, infringement analyses, drafting specifications and claims for global and domestic clients.

Practice head(s):

Fred Yen; Jerry Lin; Henry Guei

Key clients

Promerus, LLC

OMYA International AG

H. LUNDBECK A/S

SYNGENTA PARTICIPATIONS AG

Xilinx Inc.

Hewlett-Packard Development Company, L.P

Linak A/S

Robert Bosch GmbH

Fresenius Group

Airbus Defence and Space GmbH

L’air Liquide -Societe Anonyme

Pour L’etude Et L’exploitation

Des Procedes Georges Claude

Mattel, Inc.

SKODA AUTO A.S.

Bulgari S.p.A.

Volkswagen AG

SYNGENTA CROP PROTECTION AG

SuperGroup PLC

Sandoz International GmbH

Novartis Pharma AG

Abercrombie & Fitch Europe SA

Audi AG

Continental AG

Work highlights

  • On behalf of Abercrombie & Fitch Europe SAGL, Tai E cooperated with the Taipei Customs Office on the seizure of imported counterfeit products in a case worth $105,000.
  • Defended Xunwei Technologies, a mobile phone manufacturer, in a patent lawsuit
  • Represented AUDI AG as an opposition petitioner before the Taiwan Intellectual Property Office.
  • Assisted with a search and seizure action of counterfeit raincoats on behalf of Tender Forever International, worth $230,000.
  • Brought a civil action for patent infringement on behalf of Wo Shuo Electric Industrial.

Top Team International Patent & Trademark Office

Boutique IP firm TopTeam International Patent & Trademark Office is particularly well known for patent drafting and global patent prosecution. The team handles matters for clients in industries such as semiconductors, pharmaceuticals, energy, chemicals, and software and IT. The practice is headed by Henry C.W Hong, global patent and design prosecution specialist Peggy WuLydia Wong, Jonathan Yen, Jessica T.C Chen, Nick Tung and Mei-Chun Wang. Other notable individuals include semiconductor specialist Esmond Lin, Yung-Ning Hu, who has experience in US patent litigation, and patent attorney David Wang.

Practice head(s):

Henry Hong; Jonathan Yen; Jessica T.C. Chen; Nick Tung; Peggy Wu; Mei-Chun Wang; Lydia Wong

Testimonials

The team has a strong technical background and an excellent work product

‘Peggy Wu has profound legal and technical expertise’

Key clients

Mitsubishi Electric Corporation

Sunco Corporation

NGK INSULATORS, LTD

Daifuku Co., Ltd.

NEC Corporation

TDK Corporation

TSMC

MediaTek

ADI

TDK Taiwan

VIA Taiwan

Acer

Winbond

Liteon

Tsai Lee & Chen Patent Attorneys and Attorneys at Law

Boutique IP firm Tsai Lee & Chen Patent Attorneys and Attorneys at Law provides a wide range of services, including patent and trade mark preparation and prosecution, portfolio management, licensing, and IP litigation, where it acts for domestic clients and those based in China and the US. The practice has a particularly strong offering for clients in the semiconductor, consumer electronics, software and hardware, pharmaceuticals and telecoms sectors. The team is jointly led by Victor S C Lee, Candy K Y Chen, Augustus C P Chin, and Crystal J Chen, who specialises in patent prosecution and enforcement and has experience handling work involving the fashion industry.

Practice head(s):

Crystal J Chen; Victor S C Lee; Candy K Y Chen; Augustus C P Chin

Key clients

LVMH HK

RIMOWA GmbH

Ferrari S.p.A

Applied Materials

Microsoft Corporation

Qualcomm Incorporated

Taiwan Semiconductor Manufacturing Company

ARM Limited

Aesculap

ITW (Illinois Tool Works)

Samsung Electronics

Work highlights

  • Represented GUMGUM, a restaurant, to register a controversial trade mark showing a man urinating, and defended it to the Taiwan Intellectual Property Office.

Tsar & Tsai Law Firm

Tsar & Tsai Law Firm  has a full-service IP practice covering litigation, licensing and prosecution. The team handles matters relating to trade marks, copyrights, patents and trade secrets, and represents both domestic and multinational clients to take anti-counterfeiting measures, prosecute infringement claims, and defend against infringement allegations. The team includes Jennifer Lin, who has negotiated IP issues for the Board of Foreign Trade with the US government; Vincent Lin, who works on patent rights abuse and patent infringement; Joyce Ho, who focuses on IP rights protection and patent infringement in hi-tech industries; and experienced litigator and licence negotiator Jeanne Wang.

Key clients

Transcend Information

Chang Chun Petrochemical

Micron Technology Taiwan

Work highlights

  • Representing Transcend Information to successfully defend a patent infringement suit brought by PhotoFast Co., Ltd.
  • Represented Chang Chun Petrochemical in an administrative action to invalidate a patent held by Nippon Synthetic Chemical Industry.
  • Assisted Micron Technology, a leading global computer storage and database memory manufacturer, to indict former employees and a major local semiconductor company, United Microelectronic Corporation, for allegedly misappropriating Micron’s trade secrets

Winkler Partners

In addition to its core trade mark and patent practices, Winkler Partners acts as effective in-house counsel to some of its corporate clients. The team has a particular specialism acting for clients in the technology and entertainment sectors, and also works with clients in the areas of internet technology, luxury goods, consumer products. Headed by Peter Dernbach, who has significant experience in IP strategy, protection and enforcement, the team is also instructed by individual celebrities. Other key names include Christine Chen, an IP litigator who has represented entertainment brands, software manufacturers and luxury goods brands; and Gary Kuo, who has represented Grammy Award-winning global entertainers, sports brands, vehicle parts manufacturers, and shoe brands.

Practice head(s):

Peter Dernbach

Other key lawyers:

Christine Chen; Gary Kuo

Work highlights

  • Opposed a registered trade mark that infringed on client’s (a reality TV star) well known initials.
  • Trade mark application for cosmetics brand.
  • Continued support of internationally known energy drink brand in a variety of opposition and enforcement matters, most recently including the revocation of several trade marks that infringed on our client’s marks as well as overturning decisions made by the Taiwan IP Office.
  • Providing ongoing enforcement support to a French baby stroller brand, working closely with the local police to prevent counterfeit goods reaching the market.
  • Handled trade mark prosecution matters for the company behind a globally-popular China-based video app.

Zoomlaw Attorneys-At-Law

Zoomlaw Attorneys-At-Law focuses on the semiconductor, energy, manufacturing, nanotechnology, medical, pharmaceutical, and biotechnology sectors, with extensive experience in handling post-grant proceedings and re-examinations. The team files domestic and foreign trade mark and patent applications for clients from the US, Europe, China, Taiwan and Southeast Asia. The team is led by firm founder Kuoha Fan, who has particular expertise in cross-Strait matters.

Practice head(s):

Kuoha Fan

Key clients

National Applied Research Laboratories, NARLabs

National Museum of History, NMH

Asia Vital Components Co., Ltd. (AVC)

FLIP CHIP OPTO ltd.

Free-Free Industrial Group

CHAN LI Machinery Co., Ltd.

Green Energy Technology Inc.

STL Technology Co., Ltd

Institute of Nuclear Energy Research of Atomic Energy Council (INER)

RICHTEK TECHNOLOGY CORP

YOUNG OPTICS INC.

TECO ELECTRIC & MACHINERY CO., LTD.

Grass Wonder Inc.

SOFTSTAR ENTERTAINMENT INC.

Year Long Industrial Co., Ltd.

CHO CHEN INDUSTRY CO., LTD.

TEST RITE INTERNATIONAL CO., LTD.

Ting hsin (Cayman islands) Holding Corp.

FIRE ON Music Co., Ltd.

Work highlights

  • Assisted National History Museum to assess IPR status of its collections.
  • Conducted legal due diligence on the copyright and licensing of data collected by the National Applied Research Laboratories.
  • Filed an action seeking to invalidate a patent for Asia Vital Components, a liquid cooling system manufacturer.
  • Defended Flip Chip, a chip on board manufacturer, in a patent infringement suit.
  • Conducted patent infringement verification on behalf of Free-Free Industrial Group, an acrylic storage and servingware manufacturer.