As a renowned litigator, what is your take on using alternative dispute resolution methods in place of patent litigation, and what should rights holders be aware of when considering this path? 

Alternative dispute resolution has recently become more important in the global IP landscape – however, in Taiwan, there is only arbitration and mediation, which is insufficient. Therefore, in practice, we rarely use alternative dispute resolution to protect IP rights. It is thus necessary to introduce much more diverse alternative dispute resolution methods into our judicial system.

You have successfully represented both local and multinational clients across various industries. How do you adapt your approach depending on the type of client you are dealing with?

Li & Cai Intellectual Property Office provides customers with the most professional and exclusive services. As an international firm, we offer a one-stop service for global IP rights strategy and implementation. We assist clients in applying for patents in various jurisdictions according to their different regulations. However, the most important thing is to listen to clients’ needs to create a customised patent strategy.

What recent decisions or legislative developments are having the biggest impact on IP strategy in Taiwan right now, and why?

The IP office intends to move the review of patent prosecution cases to hearings in order to make the process more transparent and open. The Programme for Hearing Patent Invalidation Cases has been introduced to do this. If you are dissatisfied with the review result, you can waive the appeal procedure and file an administrative lawsuit directly to the IP court.  

However, since this is a brand-new system that will reduce the number of administrative disputes, clients are adopting a more conservative ‘wait-and-see’ approach. For firms, conducting hearings also requires more intense offensive and defensive efforts.

How do you manage expectations and maintain close working relationships with clients when the stakes are so high?

Li & Cai has many long-term clients and usually develops a certain tacit understanding with them. Our specific approach is to establish a standard operating procedure. For example, different clients may have different processes for new cases, ongoing agreements, annual fees, licensing and payment requisition and account cancellations. Li & Cai can provide customised administrative processes based on client needs to maintain a win-win relationship for both parties and ensure smooth cooperation.

If you could change anything about the patent prosecution process in Taiwan, what would it be, and do you think it is likely to happen?

We are happy to see patent prosecution cases move to hearings. We also hope that the hearing system will be more rigorous to comply with the principle of legal fairness. If the hearing system matures, it will become a strong alternative dispute resolution method in Taiwan.