Clarice Chen

Clarice (Tsui-Hua) Chen is the Managing Director of Sigma IPR. Before starting her own career in 2005, Chen worked for the largest international law firm in Taiwan for about 15 years, and was the Principal of the Patent and Technology Department of said firm. Clarice Chen excels in not only patent and trademark prosecution matters, but also the offence and defence of patent and trademark rights, as well as litigation involving patent/trademark rights. She has been engaged in international IP practice since 1990, especially in patent and trademark matters. Chen has lectured for local and national organisations in Taiwan on various intellectual property topics.

In Taiwan, there are only a handful of IP firms equipped with a full-fledged chemical/biochemical team, among which the chemical/biochemical team of Sigma IPR has particularly been recognised as the most responsive, detail-orientated and disciplined. The technical fields covered by the unique chemical/biotech team include, but are not limited to, chemistry, chemical engineering, material science, polymer, semiconductor, pharmaceutical, agricultural, life science and biotechnology. In addition to the chemical/biotech team, Sigma IPR is also equipped with staff skilled in handling patent cases related to mechanics, electrics, AI, etc.

Practice Areas:

• Patent Prosecution
• Patent Invalidation
• Patent Infringement Analysis
• Litigation
• Trademark Registration
• Trademark Opposition, Invalidation and Revocation
• Intellectual Property Law

Experience:

• Director of Patent Examination Practice Committee, Taiwan Patent Attorney Association
• Lee & Li Attorneys-at-Law (1990–2005): Principal of Patent and Technology Department (2003–2004; passed review for Counselor in 2004)
• Editor for Taiwan area of Manual for the Handling of Applications for Patents, Designs and Trademarks throughout the World (“The Brown Book”)
• Educator assigned by the National Taiwan Intellectual Property Training Academy (TIPA) for delivering course “Practice of and Guidelines for Patent Application Procedures” to the instructors and advisors of TIPA
• Educator assigned by the National Taiwan Intellectual Property Training Academy (TIPA) for delivering course “Practice of and Guidelines for Patent Application Procedures (Advanced)” to the instructors and advisors of TIPA
• Patent Counsellor assigned by Taiwan Intellectual Property Office for providing pro bono patent services
• Speaker of “How to Prepare and Handle Patent Infringement Litigation,” Chang Chun Group
• Speaker of “Patent Protection of Biomedicals and Its Relationship to Clinical Trial,” China Medical University, Taiwan
• Speaker of “Patent Protection of Novel Technology,” National Taiwan University of Science and Technology
• Speaker of “Patent Protection, Limitation and Extension,” 7th Pan Pacific Symposium on Stem Cells and Cancer Research (PPSSC)
• Speaker of “Protection, Limitation and Infringement of Biotechnology Patent in Taiwan,” 6th Pan Pacific Symposium on Stem Cells and Cancer Research (PPSSC), in conjunction with the 1st Biotechnology Industry Forum of Hsinchu Biomedical Science Park
• Speaker of “Patent Infringement and Design Around,” Industrial Development Bureau, MOEA (invited by Medical and Pharmaceutical Industry Technology and Development Center)
• Speaker of “Principles of Patent Infringement Assessment, Design Around and Case Studies,” Ministry of Education (invited by China Medical University)
• Speaker of “Introduction of Patent-Related Provisions,” Ministry of Economic Affairs (MOEA)
• Speaker of “Patent Prosecution Practice and Procedures,” Ministry of Economic Affairs (MOEA)
• Speaker of “Pharmaceutical Patents and Cases,” Roche Products Ltd., Taiwan
• Speaker of “Patent Infringement Litigation,” Taipei Biotech Association
• Speaker of “Patent Infringement and Related Examples Analysis,” Taipei Biotech Association
• Speaker of “Patent Infringement Analysis,” Pharmaceutical Industry Technology and Development Center
• Speaker of “Administrative Remedy Proceedings,” Chinese National Federation of Industries
• Speaker of “Patent Invalidation Practice and Procedure and Related Administrative Remedy Proceedings,” Chinese National Federation of Industries
• Speaker of “Practice of and Strategy for Invalidation Actions,” Chinese National Federation of Industries
• Speaker of “Patent Prosecution Practice and Procedures,” Chinese National Federation of Industries
• Advanced Patent Practice Training Seminar sponsored by Chinese Society of Inventions
• Speaker of “Patent Law and Related Regulations,” China Industrial & Commercial Research Institute
• Speaker of “Filing Patent Applications and Tips for Drafting Patent Specifications,” Taiwan Economic Development & Research Academy
• Speaker of “Patent Law and Methods and Practices for Enforcing Patent Rights,” China I
• Speaker of “Successful Opposition and Cancellation Actions,” Tze-Chiang Foundation of Science & Technology
• Speaker of “Patent Opposition/Cancellation Practice and Procedure and Related Administrative Remedy Proceedings,” Chinese National Federation of Industries
• Speaker of “Procedures for Patent Administrative Remedy,” National Taiwan Intellectual Property Training Academy (TIPA)
• Speaker of “Strategy of Filing Patent Worldwide,” National Chung-Hsing University Technology Transfer Center
• Speaker of “Patent Examination Guidelines,” Feng-Chia University, Technology Transfer Center
• Speaker of “Patent Systems and Related Provisions and Practices,” National Central University
• Speaker of “Tips of New Patent Law,” Feng-Chia University, Technology Transfer Center
• Speaker of “Technology and Patent-Related Provisions,” Yuan-Ze University, Executive Master of Business Administration
• Speaker of “Introduction of Patent Law,” Kwan-Wu Institute of Technology
• Speaker of “Introduction of Intellectual Property Rights,” Van-Nung Institute of Technology
• Speaker of “How to Prosecute Patents Quickly and Cost-Effectively at Taiwan’s IP Office,” IP Forum 2009, Managing Intellectual Property

Publications:

• Patent Protection of Medical Use in Taiwan, January 2017 (http://www.corporatelivewire.com/CorporateLiveWireExpertGuides/IP2017/flipviewerxpress.html; password: 2017IP)
• Textbook entitled Practice of and Guidelines for Patent Application Procedures for TIPA (2005)
• Textbook entitled Practice of and Guidelines for Patent Application Procedures (Advanced) for TIPA (2009)
• Study on Patent Term Extension System (I), June 2008, Intellectual Property Right Journal (published by the Taiwan Intellectual Property Office)
• Study on Patent Term Extension System (II), July 2008, Intellectual Property Right Journal (published by the Taiwan Intellectual Property Office)