Taiwan IP market overview
Taiwanese firms have admitted that IP practice in the island has been hard-hit. Drastically falling numbers in IP-related applications prove so: in 2008 there were 54,000 patent applications, 46,000 in 2009 and 17,000 for 2010 to date. "The volume of patent applications by companies has significantly decreased and the number of new patent applicants has also fallen," says CF Tsai, a partner at Deep & Far.
"Companies which would usually apply for hundreds of patents a year are filing less because of legal budget issues," he explains.
IP firms are fighting to survive, and many have sought to do so by cutting legal fees. According to Tsai, even mid-sized IP firms with 30-40 legal professionals have had to shut down over the past 12 months. "It is very competitive, domestic firms are offering 50-60% discount in legal fees but the Chinese firms can go even lower than that."
Given the IP drought in the market across the Strait, Deep & Far, which has had to lose many clients due to their budget constraints, has been forced to devise alternative billing arrangements. The firm now offers an option to clients - an exchange of legal advice for stock shares. "Clients who have had to resort to engaging legal service in exchange for their shares are a minority. But so far it has proven to be rather workable."
According to Tsai, clients may choose to buy back their shares but the selling price might fluctuate according to market trends. "It's a "new kind of business," he says. ALB
CHINA
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Full Service Practices
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Specialist IP firms
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Kangxin & Partners
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Fangda
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Beijing Sanyou
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Liu, Shen & Associates
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CCPIT
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Zhongzi Law Office
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Jeekai & Partners
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HONG KONG
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Full Service Practices
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Specialist IP firms
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Eccles & Lee
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ONC Lawyers
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Rebecca Lo & Co
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Robin Bridge & John Liu Solicitors
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Wilkinson & Grist
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GREATER CHINA - INTERNATIONAL FIRMS
TAIWAN
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Full service practices
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Specialist law firms
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Tsai, Lee & Chen
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Deep & Far
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Saint Island International Patent & Law Office
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TIPLO
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China’s leading IP firms
Domestic – Full service
- Member of INTA, AIPPI, China Trademark Association, China Trademark Agents Association, All-China Patent Agents Association and China Intellectual Property Society
- Offers both foreign and domestic clients a broad and comprehensive range of IP legal services relating to patents, trademarks, domain names, copyrights, unfair competition, customs protection and IP infringement resolution
- Launched a Shanghai office this year
- Member of INTA, International Association for the Protection of Intellectual Property, Copyright Society of China and International Association of Restructuring and the Insolvency & Bankruptcy Professionals
Fangda
- Handles technology and know-how transfer, licensing and protection of confidential information in the PRC
- Launched IP agency in Beijing last year
- Merged with IP agency Beijing Xinzheng Zhitong; gained six more IP lawyers
- Large law firm and IP agency of 300 people with 5 offices, especially strong in anti-counterfeiting by raid and litigation, investigation on counterfeiting, commercial credit and business fraud
- Provides full-range services in all aspects of IP practice including prosecution, enforcement and litigation, unfair-competition, trade secret, internet, franchising, licensing, culture and entertainment, news and publications, customs protection and litigation and arbitration
- Seized three new IP partners from international firms
- Planning launch of Silicon Valley office
- Dedicated IP legal team (20 IP experts in Beijing, Shanghai and Shenzhen) providing commercial and corporate legal advice
- Acquired an 30-lawyer strong IP team
- Merged with Guangzhou IP specialist Liu & Partners
- Patent filings grew to nearly 3000 applications in 2009.
- Opened offices in Nanjing and Guangzhou; gained over 10 partners
- IP cases sharply increased in quantity and quality. Accepted the commission from a number of the world-class companies for the patent application, such as Panasonic, Sanyo and Sharp
Zhongzi
- Serviced by more than 100 lawyers and patent agents
Domestic - Specialist
Beijing Sanyou
- Has nine business departments with more than 200 professionals
- Expertise covers virtually all technical fields, including biochemistry, biology, chemistry, medicine, computer science, telecommunications, semi-conductor, electrics & electronics, physics and mechanics
CCPIT
- Winner of IP Law Firm of the Year at the ALB China Law Awards 2010
- Largest full-service IP firm in China with the longest history with over 470 staff including more than 170 patent and trademark attorneys
- Offices in Beijing, New York, Munich, Tokyo, Hong Kong, Shanghai and Guangzhou
Jeekai & Partners
Kangxin & Partners
- Has more than 90 in-house patent professionals who are skilled in translation in English, German, Japanese, Korean, and Chinese
- Established Wenzhou branch in 2009, the firm’s sixth office globally
Liu,Shen & Associates
- Known for its specialised advice on both filings and contentious IP matters
- Has a team of around 320, including 190 professionals of patent and trademark attorneys, lawyers, and patent engineers with expertise that covers almost all areas of technology
International firms
- Formed an association with Beijing Xiang Kun, a boutique contentious firm with a high degree of specialisation in IP
- able to file trade marks directly in China through its own trade mark agency Bird & Bird IP (Beijing) Co. Ltd. which was established in 2007
- 20-lawyer strong IP team with partner level practitioners who are equipped with technical knowledge
- Merged with Hogan & Hartson earlier this year
- Appointed IP specialist Clifford Borg-Marks as of counsel in its current 30-lawyer Greater China IP team and promoted IP lawyer Geoffrey Lin to partner in the Shanghai office
Rouse & Co
- Has been in China since 1993 and advises on a wide range of IP matters including trademarks, copyright, domain names, litigation & ADR, investigations, patents, designs, commercialisation, enforcement and strategy & management
- Named its new China country manager, Linda Chang, added four IP experts – Tim Smith, Luke Minford, Jenny Luo and Rachel Tan
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TOP 10 Chinese IP litigation cases 2009- 2010
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Chint vs Schneider
- Parties settled for the largest amount in China’s patent litigation history
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Schneider to pay Chint US$23m within 15 days, otherwise China would have the right to apply for enforcement of the first instance judgement rendered by the Wenzhou Intermediate People’s Court against Schneider in the amount of US$48.5m
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Pfizer vs Wellman
- Foreign plaintiff lost an extremely popular Chinese translation mark under the first to file regime
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Pfizer lost a Chinese translation mark “伟哥” to plaintiff Guangzhou Wellman, ending a 11-year legal battle
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Strix vs. Zhejiang JiaTai and Leqing FaDa
- A British kettle company was awarder an unprecedented US$1.3m compensation for patent infringement against Chinese small appliance maufacturer
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The Beijing No.1 Intermediate People’s Court rules that JiaTai and FaDa should stop producing and selling the two models of electrical kettles containing Strix’s patented control devises and pay damages of approximately US$1.04m and US$294,000.00 respectively
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Tomato Garden vs Microsoft Windows XP
- Criminal liability was imposed
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Illegal income of Chengdu Gongruan seized and company was fined US$1.23m. Two principal individual defendants were sentenced to jail for three and a half years and fined US$147,000.00. Two subordinate criminal suspects were sentenced to jail for two years and fined US$14,700.00
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People vs. Tantian
- First trademark criminal case relating to 2010 Shanghai World Expo
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Changzheng company, another defendant in the case, was found to have committed the crime of selling goods bearing counterfeit registered trademark and was fined US$26,471.00. Tantian was punished with imprisonment of two years and fined US$27,471.00. Counterfeits were seized.
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Wuhan Jingyuan vs Japanese Fujikashui and Huayang
- Injunctive relief was not granted due to public interest consideration in an environmental sector IP infringement case
- Largest patent compensation involving environmental products in China
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Supreme People’s Court adjudicated that Wuhan Jingyuan won the patent infringement case against defendant, ending an 8-year legal battle. Defendants were to jointly pay plaintiff US$7.4m
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Michelin Group vs. Tan Guoqiang and Ou Can
- Parallel import of goods without 3C approval was held to constitute an infrinment of the trademark owner’s right in China
- First trademark parallel import case in China
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Injunction against the sale of Michelin’s products and a small amount of compensation to plaintiff
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Siemens vs. Co-trust
- Seven patent infringement actions between parties
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In the first instance, Siemens won two cases and lost five before the Shenzhen Intermediate People’s Court. All cases are pending for appeal
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People vs. Bohai
- A trade secret case where an employee stole and disclosed employer’s trade secret
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The first instance court held that Bohai committed trade secret crime and was sentenced to a fine of US$235,294.00. Designers Liu Xian and Chen Chunyuan were sentenced to two-year imprisonment and a fine of US$ 117,647.00 respectively. Designer Chu Naibing sentenced 10-month 14 days imprisonment and was fined US$ 117,647.00. Case was appealed but rejected
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Exxon Mobil vs. American Mobil Intermediate Petroleum Group
- Registration of Internet keyword and domain name may constitute trademark infringement
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Defendants’ conduct held as unfair competition. Exxon Mobil was awarded with an injunction and a compensation of US$73,209
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