Next Generation Partners

Firms To Watch: Intellectual property

Chen & Lin Attorneys-at-Law‘s contentious IP practice specialises in patent and copyright infringements and cases concerning the theft of trade secrets. Practice heads Edward Liu and Shelly Chen have significant experience of litigious IP work.
Orrick, Herrington & Sutcliffe LLP specialises in patent enforcement and competition law trials pertaining to IP on behalf of tech sector clients, with the semiconductor industry being a particular area of expertise. The firm is also notable for its cross-border abilities, defending one Taiwanese client in a patent infringement case in the US.

Intellectual property in Taiwan

Tai E International Patent & Law Office

Tai E International Patent & Law Office caters to a broad spectrum of well-known international brands and manufacturers operating in Taiwan and Greater China. As well as handling an impressive body of IP prosecution work, the firm is regularly trusted to handle complex, cross-border IP litigation disputes including copyright and trademark infringement. The firm’s patent division is particularly active in the biotech, technology and automotive industries. An expert in IP law in the biotech and pharmaceutical fields, Fred C. T Yen is also noted for his extensive pro-bono work. Registered as a patent attorney in Taiwan and China, Jerry CY Lin handles complex IP litigation matters across a wide range of industries.

Responsables de la pratique:

Fred C.T. Yen; Jerry C.Y. Lin

Autres avocats clés:

Henry C.H. Guei

Principaux clients

Abercrombie & Fitch Europe SA

Audi AG

Bulgari S.p.A.

H. Lundbeck A/S

Ifixit

Karl Mayer Textilmaschinenfabrik GmbH

L’air Liquide, Societe Anonyme

Pour L’etude Et L’exploitation

Des Procedes Georges Claude

Mattel, Inc.

Omya International AG

Promerus, LLC

Ricola Group AG

Robert Bosch GmbH

Sierra Space Corporation

Skoda Auto A.S.

SuperGroup PLC

Syngenta Crop Protection AG

Syngenta Participations AG

Volkswagen AG

Principaux dossiers

  • Represented Han Lin Publishing, Nan I Book Enterprise, and Bridge Cultural & Educational Enterprise in invalidating the patent of the plaintiff to avoid total damages amounting to USD $107,000.
  • Represented Tender Forever International Co. in a civil action against a trademark infringer who distributed counterfeit products and secured damages of USD $180,000.
  • Represented Wo Shou Electric Industrial Co. in a civil action against a utility model patent infringer who distributed infringing products and secured damages of USD $60,000.

Baker McKenzie

With a growing client base consisting of the world’s most recognisable luxury brands and technology companies, Baker McKenzie offers a catch-all IP office capable of handling a full spectrum of contentious and non-contentious matters. Global trademark registrations and patent portfolio reviews in the pharmaceutical, cosmetics, electronics, high-tech and telecom industries are core strengths for the department. US-qualified Grace Shao utilises her experience with enforcement matters in the pharmaceutical, high-tech and entertainment industries, while Lindy Chern caters to technology and finance companies. Former prosecutor Jo-Fan Yu is a seasoned litigator in digital infringement and cyber security matters, while Da-Fa Feng’s technical expertise in patent litigation is routinely trusted by a wide range of tech and material science manufacturers. Recently promoted partner Monica Chao focuses on trademark prosecution and enforcement for luxury and high-tech consumer goods.

Responsables de la pratique:

Lindy Chern; Grace Shao

Autres avocats clés:

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

Principaux clients

Integrated Service Technology Inc. (iST)

Louis Vuitton Malletier (LVM)

Principaux dossiers

  • Successfully epresented Louis Vuitton Malletier in their highly publicised trademark infringement case against MF Production Co.

DTT Attorneys-At-Law

A member of Deloitte’s international legal outfit presence, DTT Attorneys-At-Law boasts a strong IP practice with a keen focus on trade secrets matters. The office acts predominantly for multinational tech companies and banks. Team leader Justin Chen is fluent in Japanese, and routinely handles complex cross-border matters for Japanese corporate clients, while Sungmei Hsiung brings 10 years’ experience as a High Court IP judge. The firm maintains offices in Taipei and Kaohsiung.

Responsables de la pratique:

Justin Chen ; Sungmei Hsiung

Eiger

Assisting a diverse pallet of European companies with a presence in Taiwan and Greater China, Eiger offers a global perspective to high-value multinationals operating in the region. Department head John Eastwood serves as chair of the IP Rights Committee of the European Chamber of Commerce in Taiwan, working closely with the EU, US and Taiwanese governments on IP policy. He routinely handles contentious and non-contentious matters for high-profile tech companies and luxury brands. Heather Hsiao leads the firm’s IP prosecution practice, specialising in complex cross-border matter for European luxury goods retailers. Michael Werner’s fluency in German and English is a key asset for European companies with a Taiwan foothold. Joanne Lee is also noted for her work at the associate level.

Responsables de la pratique:

John Eastwood; Heather Hsiao

Autres avocats clés:

Michael Werner; Joanne Lee

Principaux clients

Danone

Carrots by Anwar

Conair

Dolby

eBay

Penhaligon’s

Major renewable energy company

IVERIC bio

Global medical technology business

Famous Japanese burger chain

Tiffany

eBay

Amazon

Lenovo

Conair

Dolby

Tiffany

Ebay

Major energy company

Danone

Principaux dossiers

  • Assisted Amazon in trademark opposition litigation against one of Taiwan’s most famous retailers.
  • Won a key domain-name arbitration victory for a world-famous luxury-goods client.
  • Handled all IP transactional matters in an Irish multinational’s Taiwan acquisition of Phoenix Technologies R&D presence, and the establishment of a presence in Taiwan.

Formosan Brothers Attorneys at Law

Formosan Brothers Attorneys at Law advises a broad selection of well-known tech companies and international companies on IP law, regularly handling cross-border patents, trademarks, and copyright matters. Practice head Yvonne Lin  focuses on fair trade law and licensing matters, particularly for high-value clients in the automotive, manufacturing, and technology sectors. Jessie C.Y. Lee specialises in cross-border trademark licensing negotiation and patent infringement cases for high-tech companies in Taiwan, Japan, and the United States. Yow-Lun Su is recommended for his in-depth knowledge of counterfeit law, while his dual-US and -Taiwan qualification is a particular asset for US clients. Associate Tim Tsai is recommended for his IP work in the medical sector.

Responsables de la pratique:

Yvonne Lin

Autres avocats clés:

Yow-Lin Su; Tim Tsai; Jessie Lee

Innovatus Law

Innovatus Law regularly advise various public bodies and multinational corporates on a broad mix of regulatory and commercial advisory matters. Jamie C. Yang  leads the department with a focus on cross-border copyright, trademark and trade secrets matters in the film, television, music, publishing, video games, architecture, and VR production industries. Dora Chiang is active in the capital market and fintech spaces, and is noted for her public policy work, most recently working with the Ministry of Culture.

Responsables de la pratique:

Jamie C. Yang

Autres avocats clés:

Dora Chiang

Les références

‘The collaborating lawyers from Innovatus Law have in-depth knowledge of personal information law, intellectual property, and provide strategic solutions thanks to their broad experience.’

Principaux clients

Bureau of Audiovisual and Music Industry

Taiwan Creative Content Agency

Taiwan Institute of Economic Research

Ministry of Culture

Sysco Machinery Corporation

FamilyMart Co., Ltd.

Kuai Kuai Co., Ltd.

Tiger Airlines

ENLA Media Limited

Joint Entertainment International Inc.

Principaux dossiers

  • Advised the Ministry of Culture on drafting rules and creating a digital copyright title ledger for music in Taiwan, reviewing recently promulgated US Music Modernization Act and other best practices.
  • Invalidated trademark registrations of an adverse prior shareholder of Kuai Kuai, and obtained an order from the Trademark Office confirming Kuai Kuai as a famous brand name. Persuaded the courts to uphold the Office’s order in later proceedings.
  • Represented Sysco Machinery in a theft of trade secret and copyright infringement action against rival firm for poaching trade secrets and employees, and successfully secured a preliminary injunction against the rival firm from the Taiwan IP Court.

Jones Day

Representing some of Taiwan’s largest technology manufacturers and major international corporations, Jones Day boasts one of the leading IP practices in the market. With a strong front bench of partners, the firm routinely handles complex, multi-party, cross-border IP disputes. The firm is particularly adept at handling high-stakes patent infringement cases, as well as trade secret misappropriation and protection issues. Former IP law judge and current chair of the IP Law Committee of the Taipei Bar Association Jason Chen jointly leads the department with privacy policy specialist Po-Chien Chen and cross-border specialistSimon Yu. Barry Lai is noted for his broadwork across the technology sector.

Responsables de la pratique:

Jason Chen; Po-Chien Chen; Simon M. Yu

Autres avocats clés:

Baary Lai

Principaux clients

Taiwan Semiconductor Manufacturing Company Limited

Ability opto-Electronics Technology Co. Ltd

Educational Testing Service

E-Lead Electronic Co., Ltd.

Gogoro Taiwan Limited

Gentle Pharma

Principaux dossiers

  • Represents Taiwan Semiconductor Manufacturing Company Limited in connection with patent disputes, license agreements, investment projects, protective orders, and with drafting and prosecuting U.S. patent applications.
  • Represents Educational Testing Service in civil and criminal copyright infringement cases concerning the leak of test questions for the Test of English for International Communication test.
  • Assisting Gogoro with filing criminal and civil complaints against former employees for intentional misappropriation of Gogoro’s trade secrets.

K&L Gates

With access to a network of trademark practitioners in the US, China and beyond, K&L Gates’ IP practice offers clients strong domestic capabilities with international reach. The team has extensive experience in complex, cross-border IP litigation cases in the manufacturing and technology sectors, with a focus on patent infringement. Shilin Huang jointly leads the department with decades of experience in IP-related dispute resolution. US qualified litigator Jay Chiu joins him, catering to high-profile tech clients in Taiwan, China and the US.

Responsables de la pratique:

Shilin Huang; Jay Chiu

Lee and Li, Attorneys-at-Law

Catering to multinational technology manufacturers, energy conglomerates and pharmaceutical companies, Lee and Li, Attorneys-at-Law’s IP practice is highly regarded for its capabilities in copyright enforcement and patent infringement litigation. Whilst handling all aspects of copyright protection and management, licensing, and multi-jurisdictional registration for private clients, the firm is also a frequent advisor to public research bodies on IP legislation reform. The firm is noted for its efficient patent translation work and routinely caters to Chinese and Japanese clients in this regard. Hsiu-Ru Chien, a China-qualified patent attorney, is recognised for her patent prosecution and patent infringement litigation work, while Shu-Ching Wang and Kate Shu-Yin Chu are key contacts in global patenting strategy. Chia-Hsing Lin and Tony C. H. Lin  are also highly recommended.

Responsables de la pratique:

Chia-Hsing Lin; Hsiu-Ru Chien; Kate Shu-Yin Chu; Shu-Ching Wang; Tony C. H. Lin

Top Team International Patent & Trademark Office

The patent and trademark office at Top Team International Patent & Trademark Office is a highly capable outfit specialising in global patent drafting, patent and trademark prosecution, patent strategy development, and litigation support. Catering to multinational clients in Taiwan, the US, Europe, and in particular, Japan, the firm is a well regarded for its contentious and non-contentious IP work. Henry C.W Hong focuses on operations management and patent strategy development in the technology sector, while Lydia Wong brings decades of experience to her leadership of the trademark department. Peggy Wu, chairperson of International Affair Committee of the Taiwan Patent Attorneys Association, is an expert in worldwide patent prosecution. Jessica T.C Chen focuses on patentability, non-infringement, and invalidity opinion letters for semiconductor and material science manufacturers.

Responsables de la pratique:

Henry Hong; Peggy Wu; Jessica T.C. Chen; Lydia Wong

Les références

‘TopTeam is one of the best IP firms in Asia that I have worked with for many years. The firm truly understands the needs of clients as well as the value of IP, and delivers their services according to every clients’ expectations. From my experience the firm is particularly strong in the Electronics and High-Tech space.’

‘Peggy Wu is one of the most well-known patent attorneys in Taiwan. In-house Counsels in companies in Taiwan often told me that any firms who wants a person to run an IP firm brilliantly should have Peggy on their team. I have worked with Peggy for many years and have had also recommended Peggy to other attorneys other countries. Peggy is extremely responsive and expects the team to takes pride in their role in delivery brilliant client services.’

Principaux clients

Media Tek

Christopher Ward

FoodPanda

Media Tek

Christopher Ward

FoodPanda

Principaux dossiers

  • Assisting MediaTek on a wide range of patents prosecution matters.
  • Represented Christopher Ward, a British watch maker, in a trademark invalidation case.
  • Acted as local counsel for FoodPanda in the prosecution, enforcement, and dispute of their trademark and trade dress rights.

Tsai Lee & Chen Patent Attorneys and Attorneys at Law

With a strong team of partners, barristers and standalone patent attorneys qualified across multiple jurisdictions, Tsai Lee & Chen Patent Attorneys and Attorneys at Law acts for a wide range of multinational corporates and SMEs in the fashion, food and drink, and technology sectors. Crystal Chen is trusted by high value multinationals for her work in patent prosecution and enforcement as well as copyright, design, and trademark litigation, particularly in the fashion industry. Patent agent Candy K Y Chen  brings particular expertise in patent prosecution strategy, while barristers Jesse K Y Peng  and Parkson N H Hsu  bring decades of broad litigation experience to the team. At the associate level, Nick J C Lan  is noted for his due diligence work, while Kevin CW Feng is recommended for invalidation and freedom to operate matters.

Responsables de la pratique:

Crytal Chen; Candy Chen; Victor Lee

Autres avocats clés:

Jesse KY Peng; Parkson NH Hsu; Nick JC Lan; Kevin CW Feng

Les références

‘Tsai, Lee & Chen are some of the best attorneys I work with. Their attorneys are responsive and provide the best legal analysis and recommendations of the attorneys I work with throughout the world.’

‘The team at Tsai, Lee & Chen has provided us a comprehensive IP and legal service. Their team consists lawyers and patent attorneys with many years of professional experiences of Intellectual Property in Taiwan. The team can respond to our needs and ad hoc tasks instantly. Also, they provide us many updates of IP laws in Taiwan regularly.’

Principaux clients

Applied Materials

Corning

Qualcomm

Mercedes-Benz

Rimowa

TSMC

AU Optronics

Hitachi Chemical

ASUSTek Computer Inc.

TSH Biopharm

Delta Electronics

CMP Group (China Metal Products)

Applied Materials

Corning

Qualcomm

Mercedes-Benz

Rimowa

TSMC

AU Optronics

Hitachi Chemical

ASUSTek Computer Inc.

TSH Biopharm

Delta Electronics

CMP Group (China Metal Products)

Principaux dossiers

  • Successfully represented Rimowa in the exercise of a post-sale confusion theory on a well-known symbol of goods protected under the Fair Trade Act.
  • Advised CMP in a trademark infringement case as the plaintiff with a new theory for calculating damages.
  • Represented Lensar on an administrative suit in attempt to overturn Taiwan IP Office’s decision that excessively demands formality requirements of patent priority documents.

Tsar & Tsai Law Firm

Working with domestic and international clients across a wide range of industries, Tsar & Tsai Law Firm’s IP outfit is a go-to for patent and trademark assistance.  The team is experienced in the full spectrum of non-contentious IP work, including copyrights, trade secrets, licensing, and anti-piracy strategies. Jennifer Lin brings 30 years’ experience acting for private and public entities, regularly obtaining high-profile pharmaceutical patent approvals, and having represented Taiwan’s Board of Foreign Trade in the negotiation on IP issues with the US government. Joyce Ho  is an experienced litigator focusing on the technology sector, assisting clients on IP rights protection, licensing agreements, and customs issues concerning counterfeit goods. Yenling Liu  is experienced in IP enforcement, while Vincent Lin  focuses on patent rights abuse. Jeanne Wang  is also recommended.

Responsables de la pratique:

Joyce Ho; Jeanne Wang

Autres avocats clés:

Yen-Ling Lin; Vincent Lin; Jeanne Wang

Principaux clients

Micron Technology Taiwan

Micron Technology, Inc.

Chang Chun Plastics Co., Ltd.

Bayer Intellectual Property GmbH

Taimide Tech. Inc.

HP. Inc.

Academia Sinica

V3 Brands Asia Limited

Principaux dossiers

  • Successfully represented Micron in their criminal complaint against its former employee in a trade secrets matter.
  • Successfully represented Micron Technology, Inc. and its Taiwan subsidiary, in its criminal complaint against five former employees for defendants’ misappropriation of trade secrets for disclosure and use in China.
  • Successfully represented Chang Chun Plastics Co., Ltd. Against in their criminal complaint against its former employee in a trade secrets matter.