Jane Tsai

Partner

Ms. Jane Tsai is a partner of Lee, Tsai & Partners with over twenty years of experience.  She also heads the firm's trademark practice.

She specializes in intellectual property matters and is internationally recognized for her expertise in trademarks, patents, and trade secrets. She has a record of achieving success on behalf of her clients in complex intellectual property litigation in Taiwan.  In addition to domestic litigation, Ms. Tsai also assists the firm's domestic clients in their multi-jurisdictional intellectual property litigations, involving countries including the U.S., Canada, and Germany, by providing them with an understanding of the litigation processes abroad and advising them on a global litigation strategy.  Ms. Tsai further frequently assists her clients in intellectual property rights planning, including global trademark strategic planning and internal trade secret protection mechanisms. She was named a Litigation Star in Intellectual Property by Benchmark Litigation in 2021 and received the bronze ranking in the categories "enforcement and litigation" and the "prosecution and strategy" in Taiwan in World Trademark Review, WTR 1000 2022 guide.

In addition, Ms. Tsai served as in-house counsel for a public company prior to coming to the firm, which provided her with a strong foundation in understanding what enterprises need. She is known by her corporate clients for providing practical legal advice that balances their business objectives with legal risks when reviewing and negotiating their commercial and corporate contracts.

Ms. Tsai is currently a member of the Intellectual Property Committee of the Taiwan Bar Association and closely follows the development of new intellectual property rights related laws and regulations.

EXPERIENCE
  • The 1st Member’s representative of Taiwan Bar Association, and member of the Intellectual Property Committee
  • The 27th and 28th Director of the Taipei Bar Association, and chairperson of the Attorney and Humanities Committee
  • Attorney, Lee, Tsai & Partners (2008~)
  • Attorney-at-law, Taiwan Mobile Co., Ltd. Legal Office (2004-2008)
  • Associate, Winkler Partners (2002-2003)
  • Intern Attorney/Associate, Qi Lin International Law Offices (2001-2002)
PREVIOUS PROJECTS AND CASES
  • Represented Taipei Fubon Commercial Bank in a company name infringement litigation against Bank of Taipei
  • Represented Taipei Fubon Commercial Bank in defending a trademark non-use cancellation case
  • Advised a Taiwan listed company in handling antitrust investigations in the US and EU.
  • Advised a Taiwan listed company in handling actions involving the intersection of intellectual property rights and antitrust laws
  • Represented a Taiwan listed company in the semiconductor business in initiating criminal and civil actions for trade secret misappropriation, including filing motions for preliminary injunction to maintain the status quo
  • Represented a multi-national semiconductor equipment manufacturer in initiating a civil action for patent infringement, including filing motions for preservation of evidence
  • Represented a film distributor in filing motions for preliminary injunction to maintain the status quo and initiating copyright infringement actions
FIELDS OF EXPERTISE
  • Dispute and Litigation over Patents, Trademarks, Copyrights, Trade Secrets and other Intellectual Property
  • Intersection of Intellectual Property Rights and Antitrust
  • Trademark Strategy Planning & Portfolio Management
  • General Corporate Counseling, Contract Drafting and Negotiation
RECENT SPEECH ENGAGEMENTS
  • Panelist commentator at the International Conference on the Southeast Asia Judicial System held by the Taipei Bar Association, September 2018.
  • Spoke on IPR clauses in ODM, OEM, Distribution Agreements and Licensing Agreements at Star Rocket, January 2018.
WORKS AUTHORED
  • “A Study on the Patent and Trademark Administrative Remedies” commissioned by the Taiwan Intellectual Property Office
  • A research project for TWNIC on WHOIS Database and the Collection and Utilisation of Personal Data
  • “Cooperation between Taiwanese Companies and Foreign Companies in Submitting Unsolicited Proposals in Infrastructure Projects
HONORS
  • Ranked Litigation Star in Intellectual Property by World Trademark Review
  • Ranked Litigation Star in Intellectual Property by Benchmark Litigation
PROFESSIONAL & ASSOCIATION MEMBERSHIPS
  • Taipei Bar Association, Kaohsiung Bar Association
  • International Trademark Association (INTA)
QUALIFICATION
  • Admitted to the Bar 2001, Taiwan
EDUCATION
  • National Taiwan University (LL.B., 2000)
LANGUAGES
Mandarin and English