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

Formosa Transnational’s IP practice consists of an elite team of highly qualified and experienced attorneys and patent engineers. Partner Hsiaoling Fan serves as chairperson of the IP Rights Committee of the Taiwan Bar Association as well as chairperson of the Association’s China Affairs Committee. He is “one of the Deans in Taiwanese IP rights”, says a competitor.

The addition of partner Weh-Yueh Chung in February 2008 has seen the firm rapidly extend its work for Japanese clients.

The firm successfully defended a leading generic drug company on a patent infringement litigation case. This complex case dealt with patents for the formulation of drugs, validity issues of ever-green patents, and methods to verify infringement.

Another transaction saw the firm represent a LED manufacturer in a case filled with complicated issues in determining validity and infringement of design patents for tiny-size products.

Lee and Li is “one of the leading law firms on patent hearings”, says a competitor. The firm’s clients consist of numerous internationally renowned companies. Managing Partner CV Chen “is deeply knowledgeable of the law in China and Taiwan”, says a rival partner.

A key transaction saw the firm act for Electro Scientific Industries in an administrative suit instituted by All Ring Tech against an invalidated decision rendered by the Intellectual Property Office and upheld by the Ministry of Economic Affairs.

The firm represented Apple Inc in the IP Court, which confirmed the APPLE trade mark was a famous mark in Taiwan and further gave Apple Inc more protection against the future registration of similar marks.

Saint Island has a liaison office in Beijing, which enables it to provide foreign clients with direct patent prosecution and trade mark application services in China.

The firm assisted Underwriters Laboratories in a highly complex case where an alleged infringer was the holding company of the Compliance Certification Services (CCS) logo owner and was authorised to use the CCS logo. While the alleged infringer agreed to stop using the CCS logo within a reasonable period when it sold its shares to a third party, it continued to use the CCS logo until it received a cease-and-desist letter from Underwriters Laboratories.

Another transaction saw the firm representing Epistar at the appellate level after it lost a first instance lawsuit where two of its most important LED related patents were declared obvious and non-patentable by the IP Court.

Tsar & Tsai Law Firm specialises in patent/trade mark prosecutions, the litigation of infringement claims, and other anti-counterfeiting actions. The team has three of the most respected IP lawyers in Jennifer Lin, Dr Joyce Ho and Edgar Chen.

Last year, the firm successfully represented Pierre Fabre Dermo-cosmetique in challenging a trade mark registration applied by a Taiwanese company. It asserted the client’s registered trade mark ‘A-DERMA + device’ and received a favourable decision from the Ministry of Economic Affair.

The team successfully acted for a major Japanese construction firm to dispute an unfavourable decision by the Intellectual Property Office of Taiwan in respect of its effort to register the trade mark ‘JETCRETE’ in Taiwan.

Tsar & Tsai Law Firm also successfully represented a major client in defending a copyright infringement criminal proceeding initiated by Microchip.

Baker & McKenzie has extensive experience handling IP litigation and prosecution matters. The firm’s IP lawyers and patent attorneys are known for their ability to handle high profile cases in Taiwan, such as Peer-to-Peer copyright infringements, and pharmaceutical patent proceedings.

The firm acted for Microchip Technology in a cross border (Taiwan-China) intellectual property matter. Microchip Technology was both the plaintiff, in a copyright infringement action against Shanghai Haier Integrated Circuit, and the defendant in a counter claim of alleged patent infringement.

In another highlight, the firm advised Sanofi-Aventis in a dispute relating to the new taxoid-based compositions. A local generic company filed a patent cancellation action to challenge the validity of the patent in dispute.

Tai E International Patent & Law Office is considered one of the founding fathers of IP work in Taiwan. The firm now consists of over 200 professionals deployed across four offices.

The firm represented Kye Systems in its case against the Taiwan Intellectual Property Office. In this matter, the firm became the first to successfully convince the IP Court to accept an amendment claim with no precedence.

In another transaction, the firm advised Amanresorts International on successfully enforcing and preserving its well known trade marks Aman and Amenresort.

TIPLO is a specialist IP firm that has dedicated more than 30 years to trade mark services. It is known for providing international clients with tailored made IP protection.

The firm advised an IC designer and manufacturer when it levied charges against another IC manufacturer and notebook manufacturer for jointly infringing its patent on changed-over circuit technology.

Another key deal involved representing a Japanese fibre maker in a case where a petrol company in the Netherlands claimed a patent on “polyester and fabric made of this polyester”. This dispute eventually concluded when the petrol company was ruled to be invalid.

Tsai Lee & Chen retains its position in tier two after another strong year on prosecution matters relating to IP law. Given the increasing need for IP services in China, the firm’s strategic plan to form offshore alliances is paying dividends.

The firm acted for Zalman Tech in filing a patent invalidation against the Utility Model Patent. After the initial hearing, both Intellectual Property Office and the Board of Appeal rejected the claim. The case was then heard at the IP Court, where it succeeded on merit.

Another dispute saw the firm represent India Tea Board. In this matter, the Intellectual Property Office upheld India Tea Board’s opposition to the mark DARJEELING in respect of ‘shirts, short pants and other clothing’. This case drew a lot of attention due to the fact that the ‘DARJEELING’ word and logo marks are protected Geographic Indications in India.

Deep & Far is a dedicated specialist firm that handles all aspects of intellectual property rights. The practice is led by CF Tsai, who was the first patent practitioner in Taiwan to have a technological background and law background.

The firm represented Lumens Digital Optics in its suit against AverMedia Technology for damages valued at US$344 million. Another transaction saw the firm represent Shannon Bauerlein in enforcing a US judgment against Jumbo Surplus Corporation for tort damages of US$1.25 million.

Winkler Partners is highly regarded for its trade mark and copyright work and has advised some of the largest global corporations on IP rights. Head of practice, partner Peter J Dernbach, “is technically strong and has great analytical skills”, says one client.

The firm represented one of the world’s largest semiconductor companies in obtaining a favourable judgment from the Intellectual Property Court and subsequently the Supreme Court. This was against a local company that had incorporated the client’s well known trade mark as a trade name.

Chen & Lin

Led by Che-Hung Chen and Vanessa Weng, the Chen & Lin practice concentrates on the protection of patents, trade marks and copyrights. The firm acted for a US-based chemical products producer when it sued a Taiwan-based producer for patent infringement. Another notable transaction saw the firm represent a Taiwan-listed electronics company against a suit by Bluestone Innovations Texas for patent infringement.

Formosan Brothers

The firm’s intellectual property practice excels in providing general legal consultation, licensing negotiations and patent infringement advice. The firm represented a leading corporation in the semiconductor and nano-manufacturing technology sector in a patent infringement action against a Korean manufacturer of TFT-LCD panels. Another dispute saw the firm defend a Taiwanese biotechnology and pharmaceutical developer in a patent infringement action brought by a leading international pharmaceutical manufacturer.

Lee Tsai & Partners

Lee Tsai & Partners contains high quality practitioners that specialise in technology and have experience dealing with technology procurement and licensing. The team assisted InterServ International in negotiating various game publishing licence agreements with major operators in China, Korea, Southeast Asia and the US. The team also represented Taipei Fubon Bank in a trade mark infringement case against a local bank in Taiwan.

Finnegan Henderson Farabow Garrett & Dunner

Finnegan’s extensive knowledge in fields ranging from molecular biology to chemical, mechanical and electrical engineering allow it to tackle day-to-day issues surrounding IP protection. Last year’s deal highlight was representing HTC and its US subsidiary in an investigation seeking to exclude Apple’s iPhone, iTunes and iPad products from importation into the US.