Clarice T. H. Chen

Specialism:

–Chemical and Biochemical-Related Patent Prosecution, Trademark Registration, Invalidation, Infringement Analysis, Portfolio Management, and Litigatio

Education:

–National Taiwan University (MS and BS in Chemical Engineering)

–Franklin Pierce Law Center, Research in Intellectual Property (IPSI & ALI)

–Shih Hsin University (MS in Law)

Professional Positions:

–Patent Attorney (1997~)

–Trademark Agent (2005 ~)

–Editor for Taiwan area of “Manual for the Handling of Applications for Patents, Designs and Trademarks throughout the World” (“The Brown Book”) (2005 ~)

–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 (2005 ~)

–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 (2009 ~)

–Patent Counselor Assigned by Taiwan Intellectual Property Office for providing pro bono patent services (1998~)

Experiences:

–Review for the Counselor of Lee & Li Attorneys-at-Law Passed (2004)

–Principal (2003-2004), Deputy Principal (2002) in Patent and Technology Department of Lee & Li Attorneys-at-Law

–Senior Patent Attorney (1990-2005.3) in Patent and Technology Department of Lee & Li Attorneys-at-Law

Lecturers:

–“Patent Protection, Limitation and Extension,” 7th Pan Pacific Symposium on Stem Cells and Cancer Research (PPSSC)

–“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

–“Patent Infringement and Design Around,” Industrial Development Bureau, MOEA (invited by Medical and Pharmaceutical Industry Technology and Development Center)

–“Principles of Patent Infringement Assessment, Design Around and Case Studies,” Ministry of Education (invited by China Medical University)

–”Introduction of Patent-Related Provisions,” Ministry of Economic Affairs (MOEA)

–”Patent Prosecution Practice and Procedures,” Ministry of Economic Affairs (MOEA)

–“How to prosecute patents quickly and cost-effectively at Taiwan’s IP office,” IP Forum 2009, Managing Intellectual Property

–“Pharmaceutical Patents and Cases,” Roche Products Ltd., Taiwan

–“Patent Infringement Litigation,” Taipei Biotech Association

–“Patent Infringement and Related Examples Analysis,” Taipei Biotech Association

–“Patent Infringement Analysis,” Pharmaceutical Industry Technology and Development Center

–“Administrative Remedy Proceedings,” Chinese National Federation of Industries

–“Patent Invalidation Practice and Procedure and Related Administrative Remedy Proceedings,” Chinese National Federation of Industries

–“Practice of and Strategy for Invalidation Actions,” Chinese National Federation of Industries

–“Patent Prosecution Practice and Procedures,” Chinese National Federation of Industries

–Advanced Patent Practice Training Seminar sponsored by Chinese Society of Inventions

–“Patent Law and Related Regulations,” China Industrial & Commercial Research Institute

–“Filing Patent Applications and Tips for Drafting Patent Specifications” Taiwan Economic Development & Research Academy

–“Patent Law and Methods and Practices for Enforcing Patent Rights,” China I

–”Successful Opposition and Cancellation Actions,” Tze-Chiang Foundation of Science & Technology

–”Patent Opposition/Cancellation Practice and Procedure and Related Administrative Remedy Proceedings,” Chinese National Federation of Industries

–“Procedures for Patent Administrative Remedy,” National Taiwan Intellectual Property Training Academy (TIPA)

–“Strategy of Filing Patent Worldwidely,” National Chung-Hsing University Technology Transfer Center

–“Patent Examination Guidelines,” Feng-Chia University, Technology Transfer Center

–“Patent Systems and Related Provisions and Practices,” National Central University

–“Tips of New Patent Law,” Feng-Chia University, Technology Transfer Center

–“Technology and Patent-Related Provisions,” Yuan-Ze University, Executive Master of Business Administration

–“Introduction of Patent Law,” Kwan-Wu Institute of Technolgy

–“Introduction of Intellectual Property Rights,” Van-Nung Institute of Technology

Publications:

–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)

 

Marianne Chao

Marianne Chao’s practice encompasses a broad range of construction and infrastructure projects, complex and multijurisdictional arbitration and litigation, commercial dispute resolution, and competition issues.

Marianne represents contractors for government-owned and independent power plants and contractors and designers for LNG/oil infrastructure projects owned by CPC Corporation, Taiwan. She also recently represented an independent power plant in Taiwan in filing administrative appeals and lawsuits to challenge the Taiwan Fair Trade Commission’s decision to impose the highest fine ever in Taiwan arising from alleged participation in a cartel.

Marianne has represented the Taiwan Construction Industry Association in obtaining a favourable ruling from the Taiwan Fair Trade Commission to defeat the no-delay-damage clause, a breakthrough development in construction contracts. She led the Matra Transport cases in several highly publicized matters and successfully countered court actions brought by the Taiwan government to set aside and prevent the enforcement of an arbitral award in the amount of NT$2 billion. Marianne has advised on construction projects for CPC Corporation Taiwan, Chunghwa Telecom, CKS Airport Link, Taipei MRT, Taipei 101, Taipower, Taiwan High Speed Rail, Taichung MRT, and power plants.

Marianne is experienced in litigation and arbitration involving multiple jurisdictions and has handled commercial disputes involving disputes between shareholders, issues related to corporate governance, financial institution litigation, and general commercial disputes.

Marianne has been honoured in many prominent international legal guides. She has served as an arbitrator in arbitrations conducted in accordance with the Taiwan Arbitration Act and the ICC Rules of Arbitration. She also served as an executive supervisor of the Taiwan Bar Association and president of the International Federation of Women Lawyers, Taiwan Branch.

Jones Day:

Established in 1990, Jones Day’s Taipei Office grew from one attorney—Partner-in-Charge Jack Huang, who began as a partner in the New York Office—to approximately 30 lawyers today. Taipei was the third Jones Day office to open in Asia, after Tokyo and Hong Kong, and initially focused on providing corporate counseling to Taiwanese businesses in cross-border investments and mergers and acquisitions. Today, our practices include M&A, banking and finance, global disputes, capital markets, and intellectual property, all of which are consistently ranked in the top-tier by Chambers & Partners, Legal 500, and Asialaw.

The Taipei Office is the only worldwide partnership in Taiwan that has attorneys experienced and legally qualified in both U.S. and Taiwan law. Because of the Firm’s seamless “One Firm Worldwide” platform, lawyers in Taipei work side by side, as part of efficiently integrated teams, with the Firm’s 2,400 attorneys in offices throughout the Americas, Europe, Asia, Australia, and the Middle East. Our Asia network numbers more than 200 lawyers and includes two offices in Mainland China (Beijing and Shanghai), Hong Kong, Tokyo, and Singapore.

Public service is an essential part of our office and, since its inception, our Taipei attorneys consistently have been involved in the community. Institutions and government authorities in Taiwan often consult with us on law and policy reform proposals. Several of our lawyers hold board or other key positions in organizations such as the American Chamber of Commerce, the Taipei Bar Association, and the National Bar Association. Recently, some of our Taipei lawyers took leading roles and contributed to the amendment to Rules of Ethics by the National Bar Association and to the adoption of a set of regulations for listing by foreign companies in Taiwan for the Taiwan Stock Exchange. We are regularly engaged in pro bono activities on behalf of the rights of children, young adults, and the disadvantaged. We also undertake teaching projects with a number of Taiwan universities as well as the training of lawyers, judges, and prosecutors.

 

Yu-Li Tsai

Mr. Tsai, a patent attorney graduated from Department of Electrical Engineering of National Taiwan University (NTUEE), which is the best engineering school in Taiwan. Out of the interest of communication system, he immediately had attended in the Graduate Institute of Communication Engineering (GICE) of NTU since his graduation from NTUEE and has received his master’s degree after 2-year’s research. During his research life in GICE, he also started to get involved in knowledge and skills of patent-related matters for taking the bar examination for Patent Attorneys. He has passed the exam having a pass rate lower than 4%, and received the qualification of patent attorney.

Mr. Tsai also attended and gained an IP master degree from Law School of University of New Hampshire, also known as Franklin Pierce Center for Intellectual Property. Right after the graduation, he had an opportunity to work for InterDigital, Inc. in Delaware for a short period, and then passed the U.S. Patent Registration Examination. He also passed China Patent Agent Examination recently.

Currently, Mr. Tsai is working for Deep & Far Attorneys-at-Law as a patent attorney and concurrently majoring a law master in National Chiao Tong University.

Mr. Tsai is quite proud of the fact that more than one fifth of the top 100 corporations have been clients of Deep & Far, and that more than 50% of the patent-experienced companies in the Hsinchu Science Industrial Park have entrusted their IPR work to this firm. It is Mr. Tsai’s firm belief that in the competition market, clients will only entrust their

Education

Mr. Tsai, a patent attorney graduated from Department of Electrical Engineering of National Taiwan University (NTUEE). He immediately had attended in the Graduate Institute of Communication Engineering (GICE) of NTU since his graduation from NTUEE and has received his master’s degree after 2-year’s research. Mr. Tsai also attended and gained an IP master degree from Law School of University of New Hampshire, also known as Franklin Pierce Center for Intellectual Property. Currently, Mr. Tsai is majoring a law master in National Chiao Tong University

Admission

  • Taiwan Patent Attorney
  • U.S. Patent Agent
  • China Patent Agent

Deep & Far – Firm Overview:

Deep & Far attorneys-at-law was founded in 1992 and is dealing with all phases of laws with a focus on the practice in separate or in combination of all aspects of intellectual property rights (IPRs) including patents, trademarks, copyrights, trade secrets, unfair competition, and/or licensing, counseling, litigation and/or transaction thereof.

It is our philosophy to provide competent legal services that other firm cannot comparably provide. The necessitated ensuing problem is how we can so provide? Deep & Far so achieve by selecting, edifying and nurturing peoples who have the following personalities: learned in expertise, morally earnest and sincerely behaved in mind and strictly disciplined between give and take. It is well-believed that such properties are key factors for peoples to properly and competently behave themselves.

 

Pijan Wu

Pijan Wu is a Senior Counsel with LCS & Partners, specializing in energy and project finance. He received his J.S.D. degree from New York University School of Law and a LL.M. degree from Soochow University Graduate School of Law (LL.M., 1989).

Pijan is the head of the Energy Practice Group at LCS, and has frequently advised the Taiwan Bureau of Energy on highly sensitive regulatory matters.  In 2012, the Group was given the Corporate Intl Magazine Global Award “Energy Law, Firm of the Year in Taiwan.”

Furthermore, Pijan works extensively on international transactions and dispute resolution. He is an renown expert of international trade regulations including foreign investment and the WTO rules. He is able to leverage this expertise in energy related international trade and foreign investment issues.

Publications:

● “Solving the Problems of Incapacity of Unrecognized Foreign Juristic Persons under Taiwan Law: From the Transnational Legal Perspective”, Chinese (Taiwan) Review of International and Transnational Law, Vol.7:2, Dec. 2011, pp.293-320 (in Chinese).

● “Investment Protection Issues under ECFA between Taiwan and China”, in the COMMERCIAL ARBITRATION PAPERS (Chinese Arbitration Association, Taipei, October, 2011) (in Chinese).

● “Corning (Taiwan) — Case Study on Corning’s Investment in Taiwan”, in OPPORTUNITIES AND CHALLENGES FOR FOREIGN INVESTMENT IN THE APEC REGION (APEC Human Resources Development Working Group Capacity Building Network, December 2008).

● “Study on the Cross-border Mergers and Acquisitions Engaged by Born Globals”, National Taiwan University EMBA thesis, June 2008.

● “Taiwan‘s Legal Strategies in Response to the Emerging Regional Trading Arrangement – Proposal for WTO Rules”, 17 CHINESE REVIEW OF INTERNATIONAL LAW, 2003, pp.29-67 (in Chinese)

● “An Analysis of the WTO Case ‘United States – Investigation of The International Trade Commission in Softwood Lumber From Canada’”, in TAIWAN INTERNATIONAL TRADE COMMISSION JOURNAL, December 2005 (in Chinese).

● “An Analysis of the WTO Case ‘United States – Section 129(C)(1) Of The Uruguay Round Agreements Act’”, in TAIWAN INTERNATIONAL TRADE COMMISSION JOURNAL, December 2005 (in Chinese).

● “An Analysis of the WTO Case ‘United States – Anti-Dumping Act of 1916’”, in TAIWAN INTERNATIONAL TRADE COMMISSION JOURNAL, December 2005 (in Chinese).

● “An Analysis of the WTO Case ‘Argentina – Definitive Safeguard Measure On Imports Of Preserved Peaches’”, in TAIWAN INTERNATIONAL TRADE COMMISSION JOURNAL, December 2004 (in Chinese)

● “An Analysis of the WTO Case “Chile – Price Band System And Safeguard Measures Relating To Certain Agricultural Products’”, in TAIWAN INTERNATIONAL TRADE COMMISSION JOURNAL, December 2003 (in Chinese)

● “Development of International Investment Regulations”, TAIWAN LAW REVIEW, October 1997 (in Chinese).

● “A Model of Regulatory Cooperation between Global and Regional Trading Regimes”, J.S.D dissertation at NYU Law School, 1996.

● “Trade and Environmental Protection: NAFTA”, in ROC RESPONSE TO INTERNATIONAL ENVIRONMENTAL PROTECTION: REFLECTION, OUTLOOK AND SUGGESTIONS (Research Project Commissioned by Environmental Protection Administration of ROC, 1996; in Chinese).

 

David T. Liou

David Liou is the co-chair of the Firm’s Real Estate, Hotel & Resort, Patent and Litigation & Arbitration practice groups in Taipei. Prior to joining Baker & McKenzie in 1996, Mr. Liou was the head of the Corporate & Investment Department of Taiwan International Patent & Law Office. He also served as an associate professor of Soochow University Law School, where he taught commercial and civil law from 1984 to 1986. Mr. Liou was admitted to the Taiwan Bar in 1986, and served as President of the Taipei Bar Association from 2006 to May 2008. He is also the Supervisor of Monte Jade Science Technology Association of Taiwan for many years.

Mr. Liou has significant experience practicing in the areas of real estate law, major projects, mergers and acquisitions, intellectual properties, as well as litigation and arbitration. His impressive track record includes acting as arbitrator for important cases in the panel under the ROC Arbitration Association.

Law Practice:

Businesses around the world need to continue to maximize the efficiency of their real estate portfolios and investments.

At Baker & McKenzie, our world-class international Real Estate team has the expansive cross-border capabilities and experience to confidently manage our clients’ global real estate legal needs. Our ‘market niche’ is providing corporate clients with coordinated, cost effective, real estate counsel across multiple jurisdictions. We help our clients coordinate and manage real estate in an international market.

Baker & McKenzie was named by Euromoney as the Number 1 Global Law Firm for Real Estate in the 2014 Euromoney Real Estate Awards for the sixth year running.

Baker & McKenzie:

Baker & McKenzie defined the global law firm in the 20th century, and we are redefining it to meet the challenges of the global economy in the 21st .

We bring to matters the instinctively global perspective and deep market knowledge and insights of more than 11,000 people in 77 offices worldwide. We have a distinctive global way of thinking, working and behaving – “fluency” – across borders, issues and practices.

We understand the challenges of the global economy because we have been at the forefront of its evolution. Since 1949, we have advised leading corporations on the issues of today’s integrated world market. We have cultivated the culture, commercial pragmatism and technical and interpersonal skills required to deliver world-class service tailored to the preferences of world-class clients worldwide.

Ours is a passionately collaborative community of 60 nationalities. We have the deep roots and knowledge of the language and culture of business required to address the nuances of local markets worldwide. And our culture of friendship and broad scope of practice enable us to navigate complexity across issues, practices and borders with ease.

Ken-Ying Tseng

Ken-Ying’s practice focuses on mergers and acquisitions/joint ventures of TV channels, cable TV system operators, e-commerce/dotcom companies, on-line game companies, news media, telecommunications, and other high-tech companies dealing in technology industries such as electronics/semiconductors/EMC testing industries etc. She has extensive experience in cross-border M&A transactions having advised multinational companies on compliance, procedure and requisite applications in respect of this particular branch of the law. She currently heads the Mergers and Acquisitions Practice Group (non-financial sector) of Lee and Li.

A few outstanding examples of the transactions that she has successfully handled include: the forming of China Times Media Group, the restructuring of the Mstar Group, Micrel’s acquisition of Phaselink, Yahoo!’s investment in Gomaji and RIC, the transfer of the CNS Group (the largest MSO in Taiwan) to MBK, the acquisition of Neocom by eBay, and NTT DoCoMo’s investment in KG Telecomm, etc.

In addition to the above, Ken-Ying formed the Personal Data Protection Practice Group at Lee and Li in 2012. Since the Computerized-Process Data Protection Act (the “Act”) was amended in 2010, Ken-Ying has been invited by various corporations and organizations to deliver speeches or conduct training programs on the amendments to the Act. She frequently writes for newspapers and magazines concerning the amendments to the Act and the relevant impacts on the private sector.

Educational Background

Harvard Law School (LL.M., 1998).

National Taiwan University, Graduate Institute of Law (LL.M., 1995), Department of Law (LL.B., 1993)

Practices

Mergers and Acquisitions,Corporate Governance,Personal Data and Privacy Protection ,Telecommunications,E-commerce,Internet Law,Medical & Pharmaceutical,Employment,

Experiences

Member, International Affairs Committee of TWNIC (since 2012)

Director, Secure On-line Shopping Association of Taipei City (Since 2012).

Supervisor, Secure Online Shopping Association of Taipei City (2007 to 2011)

Associate, Ablondi, Foster, Sobin & Davidow, U.S.A. (1998-1999)

Qualifications

admitted 1996, R.O.C.; 1999, New York