Intellectual property in Taiwan

Baker McKenzie

As well as a global network, Baker McKenzie provides industry knowledge and first-hand experience in the team of government authorities and the Taiwan Intellectual Property Court (IPC). Areas of specialism include infringement lawsuits, particularly in the pharmaceutical industry, and representing high-tech companies in trade secret misappropriation lawsuits. The practice also has expertise in handling fair, reasonable, and non-discriminatory (FRAND) patent license dispute cases in Taiwan. International commercial law expert Lindy Chern co-leads the team with Grace Shao, who focuses on IP, patent work, and disputes. Also notable are Jo-Fan Yu, who handles data protection, consumer protection, content regulation, telco regulation, and IP-related issues; and senior associate Monica Chao, who advises on general IP, copyright, and trademark cases.

Practice head(s):

Lindy Chern; Grace Shao

Other key lawyers:

Jo-Fan Yu; Da-Fa Feng; Monica Chao

Eiger

Primarily acting for US and European multinationals, Eiger also handles IP matters for innovative local companies. The firm specialises in civil and criminal IP-enforcement litigation, as well as general IP advice to foreign companies in relation to Taiwan and the PRC. IP expert John Eastwood leads the team that includes Eve Chen, who is an experienced litigator with a background in IP enforcement; and Heather Hsiao, who handles IP matters for American and European luxury brands.

Practice head(s):

John Eastwood

Other key lawyers:

Eve Chen; Heather Hsiao

Key clients

eBay

Dolby

Douglas Laing & Co

JW Anderson

Miranda Kerr

Prada

Penhaligon’s

Subway

Tiffany

Warner Records, Inc.

Work highlights

  • Nation-wide anti-counterfeiting work on behalf of the iconic Milan fashion house Prada.
  • Eiger is handling trademark application and opposition matters for one of the world’s most famous e-commerce companies, eBay.
  • Eiger works closely with Tiffany, the famous jewelry brand, on a variety of brand-protection initiatives in the Taiwan market.

Formosan Brothers Attorneys at Law

Formosan Brothers Attorneys at Law provides experience in arbitration and litigation in civil, criminal, and administrative cases, contentious IP matters are no exception. The firm represents foreign and domestic clients from a range of industry sectors, including pharmaceutical, technology, telecoms, retail, and healthcare. Managing partner Yvonne Lin has expertise in intellectual property, fair trade law, licensing, and IP transactions. She co-leads the team with Lipu Lee, Chiu-Hua Chen, and Jessie Lee, who is a registered patent attorney with the Taiwan Patent Attorney Association.

Innovatus Law

The ‘very client-orientedInnovatus Law practice drafts, reviews and negotiates IP licensing, transfer, and non-disclosure agreements for clients. The firm has the ability to advise on IP issues domestically and overseas, particularly in the creative industries, including film, television, music, publishing, video games, architecture, and VR production. IP and cross-border litigation expert Jamie Yang leads the team and is admitted to the bar in the US and Taiwan.

Practice head(s):

Jamie Yang

Other key lawyers:

Derek Sun; Eve Tsai

Testimonials

‘They spend time to understand our expectation, objectives, and constraints first. It is not about how we fit into their process. This help our collaboration a lot’

‘It is a great experience to work Mr. Derek Sun. He keeps a good balance between law and trust. I expect an attorney to respect the law and provide best advice to build trust’

‘The team was great at servicing, from a introductory lesson all the way step-by-step guiding our team and even provided a timeline and estimated cost’

‘The way they handle things are immediate and professional’

‘Not only did they give real examples of past cases, but also provided suggestions on how we handle things’

‘We couldn’t ask for a better reliable partnership with them’

‘Derek Sun and Eve Tsai were a fantastic team, they work well together and they have industry knowledge so it saves us a lot of time’

Key clients

Ministry of Culture

Family Mart

Amigo Technology, INC.

Advanced Materials Corporation

Joint Entertainment International Inc.

Work highlights

  • Acted as Ministry of Culture’s legal counsel in establishing the National Culture Memory Bank, a digital archive of local historical events and artifacts, and the Taiwanese equivalent of the Europeana. Our functions include ensuring compliance with DMCA and GDPR, national scale copyright clearance and rights training.
  • Advised Joint Entertainment International Inc., a renowned arthouse production company with a distribution affiliate.  Structured film financing schemes for Taiwanese-Japanese and Taiwanese-Korean co-productions. Negotiated and drafted the co-production agreements, investor agreements, and agreements with key talents.
  • Represented Advanced Materials Corporation, a producer of solder mask resist listed on the Taiwan Stock Exchange, in a trade secret theft lawsuit against a former manager who relocated to the PRC. Conducted evidence collection in Guangzhou, and obtained a winning final judgement. Enforced the judgment against the former manager.

Jones Day

Advising on the spectrum of IP services, Jones Day has experience in licensing, patent counseling, and litigation. The practice is particularly skilled at cross-border cases and technology matters, leveraging the firm’s strong tech team; the department is active in semiconductor matters. Jason Chen handles commercial disputes, with a focus on IP matters. He co-leads the team with Po-Chien Chen, who has expertise in a range of IP issues, notably trade secret disputes, trademark, and privacy policy matters; and litigation expert Simon Yu, who acts in commercial and IP disputes. Also active in the area is associate Barry Lai, who advises on patent litigation and IP contractual disputes.

Practice head(s):

Jason Chen; Po-Chien Chen; Simon Yu

Other key lawyers:

Yu-Chung Hsu; Barry Lai

Key clients

Taiwan Semiconductor Manufacturing Company Limited

Ability Opto-Electronics Technology Co. Ltd

Educational Testing Service

E-Lead Electronic Co., Ltd.

Gudeng Precision Co., Ltd.

Work highlights

  • Represents TSMC in potential patent disputes and license agreements, as well as drafting and prosecuting U.S. patent applications.
  • Represents AOET in high-profile trade secret and copyright matters brought by Largan Precision, which are the highest value trade secret-related disputes ever in Taiwan, and in patent litigation in federal court of Texas.
  • Represents Gudeng in an appeal in the Taiwan IP court against its competitor, Entegris, for patent infringement. This is the third-highest value patent dispute ever in Taiwan.

Lee and Li, Attorneys-at-Law

Providing the full range of patent services, Lee and Li, Attorneys-at-Law represents domestic and international clients in IP issues locally and in other jurisdictions, with particular expertise in the Greater China region. The firm has experience in patent prosecution, maintenance, drafting, and procurement, notably in the technical and innovative fields. Key names in the team include Daisy Wang, who focuses on patent and IP cases, handling patent procurement, dispute resolution, and technology licensing; Hsiu-Ru Chien, who specialises in trademark and patent law; and Dennis Huang, who handles IP litigation, licensing, IP transaction and antitrust matters. In a recent prosecution matter of note, Roger Chang is acting for a global tech giant on a high-value in an infringement action case.

Other key lawyers:

Dennis Huang

Lexcel Partners

Combining legal knowledge and technological expertise, Lexcel Partners handles the application process and dispute resolution for a range of IP matters domestically and internationally. The firm advises on patent and trademark applications, protection, and litigation, with particular skill in technical fields including biomedical, biotech, pharmaceutical science, fintech, and robotics. Jolene Wang has broad IP experience, notably in patent and trademark-related matters. She co-leads the team with Linda Cheng, who specialises in drafting patent specifications, filing patent applications, and responding to office actions, as well as the maintenance and management of patents.

Practice head(s):

Jolene Wang; Linda Cheng

Other key lawyers:

Huaili Lu

Key clients

OwlTing Group

CoolBitX Technology

TaiMed Biologics Inc.

Academic Sinica

Microbio Group

Taipei Veteran General Hospital

Wellhead Biological Technology Corp.

Taiwan Tobacco & Liquor Corp.

Arjil Biotech Holding Company Limited

Line Corporation

YO-KAI EXPRESS INC.

Work highlights

  • Assisted TaiMed Biologics Inc. to organize and file patent applications globally, including Patent Corporation Treaty (PCT), Taiwan, the U.S., China, Europe, Japan, etc., for their technologies and products, especially relating to pharmaceuticals and formulations of small molecular compounds and protein drugs and their uses in therapeutic methods, to protect their right of the intellectual property.
  • Assisted Academic Sinica to draft patent specification and file patent application globally, including Patent Corporation Treaty (PCT), Taiwan, the U.S., China, Europe, Japan, Australia, etc., especially relating to the technology in the field of molecular biology, immunology, antibodies, stem cells, peptides, diagnosis, nucleic acid amplification and detection, transgenic plants, etc.
  • Assisted Obook Holdings Inc. to file patent/trademark application globally, including Taiwan, the U.S., China, etc., to protect their IP right in the area of e-commerce, Fintech, informative technology, blockchain, and provide consultation and maintenance/management for patent/trademark cases globally.

Orrick, Herrington & Sutcliffe LLP

The experts in multinational litigation and cross-border disputes at Orrick, Herrington & Sutcliffe LLP assist Taiwanese companies in managing all aspects of their IP rights in Taiwan, Greater China, Europe, Japan and the US. The team is co-led by the US-based Jared Bobrow and Sten Jensen. Key names in the area include Robert Benson, who has experience in patent litigation, licensing and other commercial and IP litigation in federal and state courts; and counsel Hsiwen Lo, who specialises in technology matters and IP litigation.

Practice head(s):

Jared Bobrow; Sten Jensen

Other key lawyers:

Robert Benson; Hsiwen Lo

Testimonials

‘The patent litigation team has very strong technical capabilities and demonstrated fully in several litigation matters, including IPRs’

‘Robert Benson is a very responsive and thoughtful partner and puts in the extra effort for his client’

Key clients

Taiwan Semiconductor Manufacturing Company Limited

HTC Corp.

MediaTek Inc.

Realtek Semiconductor Corp.

Leedarson Lighting Co. Ltd.

Acer Inc.

ViewSonic Corp.

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

Compal Electronics, Inc.

Nanya Technology Corp.

Delta Electronics, Inc.

Innolux Corp.

TPK Touch Solutions, Inc.

Work highlights

  • Defended TSMC against GlobalFoundries in a massive multi-patent, multi-jurisdictional matter that threatened TSMC and its customers with injunctions in the U.S. and Europe.
  • After securing a critical IPR victory for MediaTek against patents asserted by AMD, MediaTek retained Orrick as co-counsel in an appeal to the Federal Circuit from an adverse International Trade Commission decision.
  • Represented Innolux, the third largest LCD panel manufacturer in the world, in four related cases in which Vista Peak Ventures asserted 19 patents against its TFT-LCD panels. The Orrick team also filed an IPR challenging the patentability of one of the key patents asserted by VPV, as part of a broader litigation and IPR strategy that enabled Innolux to reach a very favorable settlement.

Saint Island Group

Advising on a range of patents, trademarks, and litigation matters, Saint Island Group’s lawyers, patent attorneys, and patent engineers are experienced in international intellectual property. The firm acts for local and international clients, with particular strength in issues related to the Greater China Region. The team is co-led by Patrick Yun, Frank Liu, William Chen, Yu-Jiunn Kao, Tony Chang, Julia Hung, and Sumin Lai.

Key clients

INTEL

Panasonic

Samsung

Nitto Denko

NIKE

FORD

IKEA

SWATCH

ADOBE

World Trade Center

STARLUX Airlines

BenQ

Sitronix

Work highlights

  • Represented Crocodile the brand owner against a reseller of Crocodile-branded clothing produced.
  • Represented Vitalon, one of the best known iced tea brands in Taiwan, to file a declaratory judgment (DJ) action with the Taiwan IP Court against a tea culture expert in 2016, after the latter, in a strong-worded demand letter, accused Vitalon of trademark infringement on her mark, which we found hardly similar to Vitalon’s accused mark.
  • Represented KYMCO, the leading Taiwanese motorcycle and motor scooter manufacturer, in a trademark dispute against KOUGOU, a Chinese music streaming and download service provider, in Taiwan’s IP Court.

Tai E International Patent & Law Office

Tai E International Patent & Law Office provides a full range of IP services, with particular expertise in patents and trademarks for international clients. The firm is active in international and domestic IP prosecution and protection matters, as well as being experienced in general IP management. The team is co-led by patent attorney and trademark agent Henry Guei; Fred Yen, who is a skilled patent attorney, trademark agent, arbitrator, and mediator; and Jerry Lin, who focuses on patent and intellectual property litigation.

Practice head(s):

Henry Guei; Fred Yen; Jerry Lin

Key clients

Abercrombie & Fitch Europe SA

Audi AG

Bulgari S.p.A.

Des Procedes Georges Claude

Fresenius Group

Giorgio Armani SpA

H. LUNDBECK A/S

Hewlett-Packard Development Company, L.P.

KARL MAYER TEXTILMASCHINENFABRIK GMBH

L’air Liquide -Societe Anonyme

Linak A/S

Mattel, Inc.

Novartis Pharma AG

OMYA International AG

Pour L’etude Et L’exploitation

Promerus, LLC

Robert Bosch GmbH

Sandoz International GmbH

SKODA AUTO A.S.

Work highlights

  • The client Alanod-Xxentria Technology Materials Co., Ltd was sued for infringement of an invention patent owned by the opposite party. On behalf of the client, Tai E successfully persuaded the court in the first instance by establishing that the patent in dispute shall be invalidated for lack of novelty.
  • For TENDER FOREVER INTERNATIONAL Co., Ltd. successfully assisted the IP police to conduct a raid action against the trademark infringer who engaged in distributing counterfeit rainwear bearing the client’s trademarks. The IP police seized 7,999 pieces of counterfeit rainwear at the defendant’s warehouse.
  • The client is the trademark owner of the well-known “Superdry” brand. The firm brought a civil action against a defendant who distributed various kinds of clothing and towels bearing “Superbitch” and “Superlazy” marks.

Top Team International Patent & Trademark Office

Known for patent drafting and international patent prosecution, Top Team International Patent & Trademark Office assists clients in and from Taiwan, the US, Europe, Japan, and other jurisdictions. As well as specialising in design strategy, the IP rights protection team is particularly experienced in the areas of technology, pharmaceuticals, and life sciences, including semiconductors, displays, mechanical engineering, and biotech. The practice is co-led by Henry C.W Hong; Jonathan Yen; Jessica Chen; Nick Tung; Peggy Wu; Mei-Chun Wang; and Lydia Wong.

Tsai Lee & Chen Patent Attorneys and Attorneys at Law

IP prosecution and litigation boutique Tsai Lee & Chen Patent Attorneys and Attorneys at Law specialises in patent and trademark prosecution, with a focus on Taiwan and mainland China. The firm’s expertise covers semiconductors, displays, computer hardware and software, telecommunications and electrical engineering, as well as biochemistry and pharmaceuticals. Crystal J Chen handles patent prosecution, enforcement, and infringement litigations related to copyright, design, trademark, and unfair competition. She co-leads the team with Victor Lee and Candy K Y Chen  . Yiling Liu is a core member and represents clients across the consumer driver sectors. The practice has been strengthened with the arrival of Lilly Hwang who joined from the District Court.

Key clients

Applied Materials

Corning

Qualcomm

Gogoro

Rimowa

TSMC

Quanta Computer

AU Optronics

Hitachi Chemical

Illinois Tool Works

Work highlights

  • Advised Enermax to successfully invalidate competitor’s patent.
  • Advised ATEN to win over a losing litigation for unpaid license royalty.
  • Advised Rimowa to fight in Supreme Court catching media’s attention.

Tsar & Tsai Law Firm

Tsar & Tsai Law Firm has broad experience in trademarks, copyrights, patents and other IP matters, including the protection of trade secrets. The firm acts for domestic and international clients in anti-counterfeiting measures, prosecute infringement claims and defence against infringement allegations. The team consists of patent and trademark experts, as well as licensed patent attorneys. Key names for the firm are Jennifer Lin, who represents multinationals in a range of IP matters; Vincent Lin, whose expertise covers patent rights abuse, patent infringement, fair trade and antitrust issues; Joyce Ho, who focuses on advising high-tech industries in IP right protection and infringement disputes; and Jeanne Wang, who handles IP and antitrust disputes, locally and cross-border.

Key clients

Man Truck & Bus SE

Price Costco International, Inc.

Tiger Coatings GmbH & Co. KG

Power Integrations, Inc. and Taiwan Branch of Power Intergrations Netheriands B.V.

EirGenix Inc.

Work highlights

  • Representing Man Truck & Bus SE to successfully revoke the registration of the mark “SHACMAN” by Shaanxi Heavy-Duty Automobile Co., Ltd. for use on the goods “land carriers, automobiles, land vehicle chassis, automobile bodies, etc.” in Class 12 by citing the “MAN” trademark previously registered by MAN.
  • Representing Price Costco International, Inc. (“PCII”), to successfully revoke the registration of the mark registered by a Taiwanese company.
  • Representing Tiger Coatings GmbH & Co. KG (“TCGC”), an Austrian company, to successfully  file an opposition petition against Twin Tigers Coatings Co., Ltd.’s trademark registered on paints, coatings etc.

Winkler Partners

As well as providing a strong enforcement and litigation team, Winkler Partners advises content providers with a range of copyright and licensing matters. The firm has particular experience in trademark infringement cases and global IP conversation. Areas of expertise include luxury goods, pharmaceuticals, software, semiconductors, alcoholic beverages, and internet companies. Peter Dernbach focuses on IP strategy, protection, and enforcement. He co-leads the practice with senior consultant Jason Yan, who specialises in trademark clearance, prosecution, and registry dispute issues.

Practice head(s):

Peter Dernbach; Jason Yan

Other key lawyers:

Christine Chen; Gary Kuo

Zoomlaw Attorneys-At-Law

Experienced in domestic and foreign trademark and patent applications, Zoomlaw Attorneys-At-Law assists clients from the US, Europe, China, Taiwan and Southeast Asia. The firm has particular experience in post-grant proceedings and re-examinations. Kuoha Fan leads the team and specialises in Taiwan-RPC issues.

Practice head(s):

Kuoha Fan