Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Formosa Transnational offers a comprehensive IP practice with expertise in IP management, due diligence, patent prosecution, trade mark application, IP enforcement and dispute resolution. The firm boasts a number of multinational clients including Microsoft, which it represented on a number of patent disputes. Philips Electronics has used the firm too, in antitrust and unfair competition disputes for a patent licensing programme.

Japanese company Sanrio used Formosa Transnational on a trade mark enforcement, litigation and licensing case, while Realtek used the firm for patent litigation. Formosa has a strong Japanese client base, helped by the hiring of Weh-Yueh Chung. Partner Hsialing Fan passed the People’s Republic of China bar exam, one of the first from Taiwan to do so, giving the firm broader capabilities in China.

Lee and Li has a wide-ranging IP practice that offers prosecution, enforcement, dispute resolution, strategy consulting and other areas. The firm has professionals covering industries like chemistry, bio-tech, mechanical, electronics, telecommunications and semiconductors. This last year it was kept busy on a patent infringement case. The plaintiff was seeking NT$1 billion damages in a case that was one of the first under the new IP Adjudication Act. Lee and Li won a dismissal of the complaint from the civil court for its client.

French fashion company Chanel is using the firm to defend itself against a company that is trying to trade mark the Chinese equivalent of Chanel’s No 5 brand name for wine products. The Ministry of Economic Affairs accepted Lee and Li’s argument, revoking the granting of a patent to the company by the Taiwan Intellectual Property Office. The firm boasts a number of leading professionals including Daisy Wang, TC Chiang, Dennis Huang, Joseph Yang and Cathy CW Ting.

Saint Island International Patent & Law Offices has a leading IP practice that includes trade mark and patent prosecution, litigation, and other matters relating to intellectual property. It has four branch offices in four major cities of Taiwan and an international department that primarily deals with foreign cases. This includes filing patent and trade mark applications in Taiwan for its foreign associates and clients, and consolidating patent and trade mark applications from branch offices for filing in foreign countries. Patrick IC Yun founded the firm in 1974 and is still a respected practitioner today.

Tai E International Patent & Law Office was established in 1952 and has developed a strong reputation for defending the IP rights of international companies. The firm can count Nikon Corporation, L’air Liquide and Ciba Specialty Chemicals as clients. Recent work has seen the firm represent a US toy manufacturer collect royalty payment under a certain Barbie trade mark license agreement.

The litigation group has been busy defending foreign proprietors in filing or performing customs procedure on trade mark infringement. Fred CT Yen is the biggest name at the firm, having practiced as a patent attorney for over 20 years. He is in charge of patent trade mark matters at the firm.

Tsai Lee & Chen is one of the top intellectual property law firms in Taiwan with its full-service expertise primarily in the field of semiconductors, TFT-LCD, LED, computer hardware and software, e-commerce, business method, telecommunication, biological materials, chemical and pharmaceuticals, mechanical and electrical engineering.

Its clients include individual inventors, educational institutions, small and medium-sized businesses, non-profit organisations as well as multinational corporations. The firm contains partners who are qualified to practice before the USPTO, or practice laws in the US, while some others studied and taught IP law in China.

Tsar & Tsai is an expert in the IP practice areas of trade marks, copyrights, patents and litigation. Recent high profile work saw the firm represent multinational Johnson & Johnson in a case as plaintiff in front of the Intellectual Property Court. Tsar & Tsai managed to overturn a decision made by the Taiwanese Intellectual Property Court (TIPO) that had registered a mark that bore resemblance to the ‘J&J’ mark that is synonymous with the Johnson & Johnson brand.

Another interesting case saw the firm represent Gamma Optical, a company that manufactures optical film for LCD, against a temporary injunction brought by a competitor on the basis of trade secret infringement. Tsar & Tsai successfully defended the client in the injunction and is now defending it in the civil court. The firm can boast a number of respected partners on its bench. Jennifer Lin is the standout name, while the department is led by Joyce Ho.

Baker & McKenzie boasts an enviable list of international clients such as Sanofi-Aventis Singapore, Philips Electronics, Eli Lilly & Company, and Hi-Life International. The firm offers a comprehensive IP practice to its clients, with its team kept busy representing Sanofi-Aventis as a patentee in litigation against a manufacturer of generic drugs. The firm brought the case before the generic drug hit the market, protecting Sanofi-Aventis’ revenues from the drug.

Philips has used the firm almost continuously since 2005 in cases relating to the patent for its CD-R technology. The latest case saw Bakers represent Philips against Lead Data in 2009 for breach of a patent license contract. Eli Lilly and Company has used the firm’s expertise since 2005 too; first gaining an injunction order against a generic pharmaceuticals company and then continuing to enforce the injunction. Bakers’ IP team is headed by the duo of Stacey Lee and Joy Pan.

Jones Day is another international firm that has an established IP practice in Taiwan. In line with the firm worldwide, the Taipei office boasts a top-notch IP litigation capability that can call on Taiwanese, Chinese and US capability. One standout deal saw the firm represent Nokia in cases in the US and mainland China against Qualcomm. Jones Day reached a settlement on behalf of its client with Qualcomm.

CPDC has retained Jones Day’s services in three cases of patent infringement brought by Celanese International Corporation. The final case saw the firm have the High Court overturn the decision of a lower company to award US$34 million to the plaintiff. Jones Day also represented Taiwanese firm Primax on a US Trade Commission Investigation with Microsoft. Primax successfully settled the case. The firm can call on talents like Victor CM Chang, Jason Chen and Ya-Chiao Chang.

Winkler Partners boasts genuine international capability with a mix of US and Taiwanese lawyers. Peter Dernbach heads the firm’s department in this practice area and brings a wealth of experience from the US. The firm frequently represents European and US companies that have had their patent or trade mark infringed by a Taiwanese company.