Patent Enforcement, Trade Secret Protection and Dispute Resolution
This practice group consists of partners, senior counselors, hundreds of lawyers, patent attorneys, patent agents (including U.S. and CN patent agents), legal specialists, and associates, fluent in English and/or Japanese. More than 90% of the team have a master's degree or higher. In addition to expertise and experience in the fields of mechanics, electronics, electro-optics, medicine, chemistry, biochemistry, software engineering, telecommunications, industrial design, automation, semiconductor or material science, many members of the team also have expertise in law and management.
Our team has employed innovative techniques and strategies for proving infringement of method patents, explaining technical issues in court, presenting expert opinions, etc. In addition to handling domestic patent, technology and trade secret matters, we also assist clients with patent enforcement, trade secret protection and dispute resolution in the mainland and abroad. Through our established relationships with top firms overseas, our clients benefit from an established global network of professional resources with experience in legal affairs, dispute resolution and court procedures, to secure the greatest possible protection of interests in countries around the world.
Scope of Services
- Patent Management and Strategy Consultation
- Patent Infringement Prevention Consultation
- Patent Infringement Investigation and Evidence Collection
- Patent Licensing Consultation and Negotiation
- Patent Infringement Litigation
- Patent Validity Evaluation
- Fair Trade Act Disputes Arising from Misuse of Patent Rights
- Patent Transactions (Technology Licensing/Pledges/Transfers/Trusts/Valuation etc.)
- Patent Audit Procedures Arising from Company Mergers and Acquisitions
- Contract Planning & Dispute Resolution Related to Patent Rights
- Tax Planning, Tax Exemption Application, and Dispute Resolution Involving Patent Licensing Fees & Royalties
- Patent Expert Analysis and Contract Consultation and Drafting
- Trade Secret Management System Planning and Consultation
- Trade Secret and Non-compete-Related Dispute Resolution
- Third Party Application and Substantial Examination
- Compulsory License
- Expedition of Examination Process (Due to Third Party Commercial Claimant)
- Other Relevant Dispute Resolution and Legal Services
Awards and Honors
- Managing IP – Tier One Patent Firm for Taiwan in Patent Prosecution
- Managing IP – Tier One Patent Firm for Taiwan in Patent Contention
- Apex Asia – Patent Firm for Taiwan—Patent Prosecution & Patent Contention
- Asialaw- Taiwan IP Firm
- Legal 500 – Tier 1 Law Firm for Intellectual Property in Taiwan
- Chambers and Partners – Band 1 Firm for Intellectual Property
- Asian Legal Business –Tier One Patent/Copyright/Trademark Firm for Taiwan
- Since 2000, Represented Sony—Engaged in licensing negotiations for patent technologies, including I2C, CD-R, CD-RW, DVD-ROM, DVD+R, DVD-R, DVD+RW, DVD-RW, DVD Player, and CTV. In recognition, the firm received the CNC Award from the president of Sony's Taiwanese headquarters.
- 2005, Represented Celanese—The Taiwan Kaohsiung District Court awarded over NT$890 million in damages for patent infringement.
- 2006, Represented Celanese—The Taiwan Kaohsiung District Court awarded NT$23.82 million in damages for patent infringement once again.
- 2007, Represented Celanese—The Taiwan Taipei District Court awarded another NT$2 billion in damages for patent infringement.
- 2008, Represented Philips—The Intellectual Property Court (renamed the Intellectual Property and Commercial Court in July 2021) awarded more than ¥2.2 billion to Phillips as royalties for its patent license.
- 2010, Represented Philips—The Intellectual Property Court awarded Philips NT$2 billion in damages for patent infringement.
- 2011, Represented ESI—The Taiwan Kaohsiung District Court awarded ESI NT$700 million in damages for patent infringement.
- 2011, Represented Machvision—Handled patent infringement lawsuit against Yayatech, and obtained a judgment from the Intellectual Property Court of nearly NT$100 million in favor of Machvision.
- 2011, Represented Korean Company MK Electron—Handled patent lawsuit against Japanese company Tanaka Denshi Kogyo: the Intellectual Property Court appointed three technical examiners for the first time, and the firm achieved favorable results.
- 2011, Represented EFUN Technology—Handled case on trade secret and copyright infringement against Gamma Optical: an indictment was filed by the prosecutor, a great number of provisional attachments were granted by the court, and a large settlement was obtained.
- 2012, Represented Silicon Touch Technology—Handled patent lawsuit against Macroblock: the case was tried twice under the old and new intellectual property adjudication system and the client was victorious in both the ordinary court and Intellectual Property Court.
- 2012, Represented MTI Technology—MTI Technology was sued for patent infringement by competitor Powerwave Technologies in California, USA. The firm was in charge of the litigation strategy.
- 2013, Represented Philips—The Intellectual Property Court awarded Philips NT$300 million in damages for patent infringement.
- 2014, Represented Apple—Patent infringement charges were filed against Apple's well-known, high market share smartphone products. The Intellectual Property Court ruled in Apple's favor.
- 2014, Represented Nike—Patent infringement charges were filed against Nike's well-known series of shoes. The Intellectual Property Court ruled in Nike's favor.
- 2016, Represented ACTi—Handled a US patent infringement case against NPE: our client obtained a favorable settlement within a few months.
- 2016, Represented Toshiba—The Intellectual Property Court awarded Toshiba NT$200 million in damages for patent infringement.
- 2016, Represented FETC Technology—The firm successfully persuaded trial courts that the other party's patent was invalid, and therefore there was no infringement, thereby ensuring continued use of the eTag system, which has over 7 million users in Taiwan.
- 2016 & 2017, Represented Philips—The Intellectual Property Court awarded Philips NT$1.05 billion in damages for patent infringement.
- 2017, Represented Auras—The client was the only supplier of thermal modules for Apple computers in Taiwan. The firm succeeded in persuading the court of three instances to rule that the counter party's patent was invalid.
- 2019, Represented BASF—The Taoyuan District Prosecutors Office filed an indictment for a trade secret leak with economic value exceeding NT$3.5 billion.
- 2019, Represented a major semiconductor manufacturer in Taiwan—Handled a case over an employee quitting to work for a competitor in mainland China: successfully obtained a preliminary injunction within 1 month and prohibited the employee from working at the mainland competitor.
- 2019, Represented Entegris—The Intellectual Property Court awarded Entegris more than NT$980 million in damages over patent infringement.
- 2019, Represented Race Face, other companies, and their legal representatives—The firm successfully persuaded the Intellectual Property Court that Race Face, other companies, and their legal representatives did not infringe patents when relevant overseas courts ruled against the firm's clients.
- 2019, Represented a major semiconductor manufacturer in Taiwan—Successfully handled a multinational patent lawsuit, helping the client initiate counteractions and rapidly secure settlement.
- 2021, Represented an international technology company—Successfully handled a multinational patent lawsuit, helping the client successfully persuade the Intellectual Property Court that the client did not infringe any patent and the asserted claims of the patent should be revoked.
- 2021, Represented MSD—Handled the first-ever patent linkage litigation case in Taiwan, helping the client successfully obtain a court judgment prohibiting the generic company from manufacturing its generic drug.
- 2022, Assisted a Taiwan machinery company file a lawsuit involving patents, trademarks, domain names, and unfair competition disputes—Successfully persuaded a U.S. court to accept our arguments at the claim construction stage and further successfully assisted the client obtain a favorable settlement in their intellectual property disputes.
- 2023, Assisted a Danish Chemical Corporation file a lawsuit in Taiwan for trade secret infringement—Successfully convinced the public prosecutor and the courts to conduct police raids in Kaohsiung and Miaoli, thereby assisting the client obtain a double damages award from the Intellectual Property Court.