Patent Registration / Prosecution
Consisting of attorneys and engineers, the Lee, Tsai & Partners’ patent group provides comprehensive patent services to domestic and overseas clients by assisting them with patent planning, portfolio management, patent dispute prevention, and patent dispute resolution. Our services include but are not limited to:
- Patent planning consulting: Advising clients on an appropriate approach, timeline, country/region for patent application based on their commercial needs.
- Patent applications: Submitting invention (utility) patents, utility model patents, and design patents in Taiwan, China, the United States, and other countries.
- Patent prosecution, re-examination, invalidation, appeal, and administrative suits.
- Patent search: Conducting clearance searches for potentially infringing products, conduct patentability/validity searches for the client’s own patent proposals or patents/applications of competitors.
- Patent infringement opinion and patent research: Providing infringement analysis, patentability/validity analysis, design around analysis, and suggestions.
- Patent dispute resolution: Providing risk analysis prior to litigation, collecting evidence, and obtaining expert opinions. Attorneys and patent engineers work together to handle domestic patent litigation as well as assist clients in instructing foreign attorneys in handling patent litigation overseas.
- Patent portfolio management: Assisting companies with establishing and implementing their internal patent systems, handling transnational patent transactions, conducting due diligence, and helping clients register patent transfers.
Representative Matters in Domestic and Foreign Patent Dispute Resolution
- Assisted a domestic biosensor equipment firm in a patent invalidation case in China.
- Represented a domestic IC packaging and testing company in litigation against another domestic flexible printed circuits company involving patent infringement, patent right ownership, and trade secrets.
- Assisted a domestic PCB exposure box firm in a patent invalidation case in China.
- Assisted a domestic automotive lighting company in handling patent infringement and patent invalidation litigation in Germany, Spain, and France.
- Assisted a domestic biotechnology firm in handling a patent litigation matter in the United States.
- Represented a domestic LED company in responding to a petition filed by a Japanese LED company to maintain the status quo and enjoin continued patent infringement.
- Represented a domestic R&D institution in handling patent infringement litigation and negotiations with a US integrated circuit design company.
- Represented a domestic electronics company in handling patent royalty litigation and negotiations with another US electronics company.
- Represented a domestic integrated circuit design company in handling an administrative action over a patent invalidation matter with another domestic integrated circuit design company.
- Represented a domestic photoelectric materials company in handling a patent infringement action and negotiations with a Korean photoelectric materials company.
- Represented a domestic sporting goods company in handling a patent infringement action and negotiations with another domestic sporting goods company.
- Represented a domestic general consumer goods company in handling an administrative action over a patent invalidation matter with the Taiwan Intellectual Property Office.
- Represented a US lighting products company in handling a patent infringement action with a domestic company.
- Represented a domestic company in handling a patent infringement action with another domestic company over RFID patents.
- Represented a domestic online media platform in handling an administrative appeal over a patent invalidation matter with the Taiwan Intellectual Property Office.
Major Clients (Alphabetical Order)
- Apex Biotechnology Corp.
- Baoshan Iron & Steel Co., Ltd.
- Carl Zeiss SMT AG
- Chipbond Technology Corp.
- GLOBALFOUNDARIES Inc.
- LiTV Co., Ltd.
- Signal Trust for Wireless Innovation
- Synaptics Inc.
- The TRUMPF Group
- TSRC Corporation
- 2020 年 11 月 1 日
The “interested parties” who may file an invalidation on the ground that the patentee of a utility model patent is not the person entitled to file the application include the actual inventors, creators or whose assignees or successors or parties with a relationship of employment or commissioned research and development (Taiwan)
- 2020 年 8 月 1 日
The term “using” under Article 22 of the Patent Act shall include producing, offering for sale, selling, using, or importing that product for the aforementioned purposes. To determine that an invention has been publicly used, its technical contends must have been made public through the aforementioned acts and not necessitated by the actual making, offering for sale, selling, using, or importing that product for the aforementioned purposes by the public. (Taiwan)
- 2020 年 6 月 1 日
Whether the requirement for “identical invention” under Article 28 of the Patent Law is met should be determined based on whether the invention set forth in the patent application claims is disclosed in the specification, patent application claims or drawings of the counterpart serving as the basis for claiming the right of priority (Taiwan)
- 2020 年 4 月 1 日
The so-called “availability to the public” concerning prior art during the examination of inventive steps means that a prior art reference has been disclosed with its technical details in such a state that they become available to the public, and it is not required that the technical details have actually been known to the public (Taiwan)