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TAIWAN

DUANE MORRIS & SELVAM TAIWAN

Duane Morris & Selvam Taiwan lawyers work closely with clients to achieve their business goals, with an emphasis on intellectual property for the country’s robust high-technology, pharmaceutical and bio-tech industries, as well as legal issues involving commercial and corporate transactions, antitrust and regulatory compliance, white-collar litigation and investigations, and foreign trade and investment.

Members of our Taiwan office have years of experience working in Taiwan and include: the former senior vice president and general counsel of Taiwan Semiconductor Manufacturing Company, Ltd.; the former in-house counsel for Texas Instruments for the Asia Pacific Region and, afterwards, the legal director at Lite-On Technology Corporation; and another member of our team worked in-house at Winbond and was a law clerk at TSMC. Because our team is fully fluent in Mandarin and quite familiar with the customs of Taiwan and China and the West, they help clients seamlessly navigate amongst the multiple cultures.

ABOUT DUANE MORRIS

Duane Morris LLP is a 110-year-old U.S. law firm with over 800 lawyers in 29 global offices, providing clients with innovative solutions to today’s legal and business challenges. In 2011, Duane Morris entered into a joint venture with Selvam LLC in Singapore in order to better service our Asia clients. In addition, the firm also has offices in Singapore, Vietnam, Myanmar, China and the Middle East.

Range of Services

• Intellectual Property

• Life Sciences and Biotechnology

• Trade Secret Protection and Enforcement

• Patent Prosecution, Licensing and Strategy

• Litigation and Administrative Proceedings

• Commercial and Corporate Transactions

• Corporate Governance and Regulatory Compliance

• Asia-Pacific Strategic Planning and Development

• International Trade and Investment

Corporate/Transactional

Our lawyers provide practical and creative legal counsel to help companies with investments in the United States, the European Union and Southeast Asia to comply with regulatory, statutory and other legal mandates. We advise clients in negotiating investment packages

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and in forming business entities. We assist in defining the rights and relationships of owners and stockholders. For companies in other stages of the business life cycle, we assist with pre-IP matters, develop and implement exit strategies, and handle succession planning matters, particularly for closely held or privately held entities.

We negotiate, draft and review agreements of all types, including employment, distribution, manufacturing, licensing, outsourcing and other agreements. Our lawyers regularly advise on technology licensing, transfer and collaboration arrangements for electronics, semiconductor and other technologies. We provide guidance for compliance with international trade, FCPA, import-export controls, customs and other regulatory requirements.

Strategic Intellectual Property Management

Duane Morris’ IP lawyers focus on leveraging their clients’ intellectual property to help them achieve success in the marketplace. We provide guidance on the most efficacious methods of protecting innovations, establishing and developing IP holdings and protecting IP rights so clients can realize the most value from those assets. From patents, trademarks and copyrights to licensing and technology transfers to IP audits and IP asset due diligence, our lawyers offer clients a full range of IP services designed to add value while protecting and maximizing their IP portfolios.

• Intellectual Property Litigation

Duane Morris is one of the most-active law firms in the United States in all aspects of intellectual property litigation. Duane Morris patent litigators have handled litigation and disputes in fields such as biotechnology, pharmaceuticals (including ANDA-related litigation), medical devices, semiconductor, consumer electronics, television set-top boxes, Internet and e-mail related technologies, factory automation, oil drilling, water treatment and purification, electrical components and fiberglass boat manufacturing.

• Patent Prosecution

Clients rely on the technical and legal acumen of Duane Morris’ registered patent lawyers and agents to obtain patentability opinions, prepare and file U.S. and non-U.S. patent applications in all subject matters and disciplines, and render validity and infringement opinions. Our IP lawyers thoroughly grasp the science and technology behind each client’s ideas. All of the firm’s patent lawyers and agents have science or engineering backgrounds and most have real-world experience in their respective disciplines.

• U.S. Inter Partes Review (IPR)

IPR allows a petitioner to challenge a patent claim after it has been granted by the USTPO. Understanding the importance of IPR, the firm has established a focused IPR practice group comprising lawyers with extensive procedural, technical and litigation experience, as well as the oral advocacy skills required for this specialized area. From early strategizing to working with experts, through declarations, depositions and cross examination, to presenting an invalidity case at a hearing in front of the Patent Trial and Appeal Board (PTAB).

• Trade Secrets

Duane Morris lawyers work tirelessly and creatively to develop, maintain, protect and enforce clients’ trade secret rights and to vigorously defend them against claims for trade secret misappropriation across a range of industries and technologies.

Our Taiwan office is led by Richard Thurston, who previously served as general counsel of Taiwan Semiconductor Manufacturing Corp. for over a decade, where he earned recognition for his outstanding leadership with respect to trade secret protection and litigation. With Dr. Thurston, we work closely with companies to design and implement state-of-the art programs aimed at preventing the misappropriation of trade secrets, tailoring such programs specifically to meet the needs of each client. Our lawyers also have extensive experience representing companies in trade secret litigation in the U.S., Asia and beyond.

• Trademark Prosecution and Litigation

We resolve trademark disputes for major companies, exploring risks, opportunities and costs associated with various strategies, including litigation, mediation, arbitration and negotiated settlements, handling claims in federal courts, the Trademark Trial and Appeal Board and the International Trade Commission. We protect the brand value of our clients in disputes concerning trademarks, business names, trademark dilution, counterfeiting, false advertising, clothing and accessory designs and trade dress.

For example, we represented Unilever, the world’s largest trademark owner, in a lawsuit seeking trademark cancellation, injunctive relief and damages, based on state and federal trademark laws. Additionally, we represented a Wal-Mart subsidiary before the International Chamber of Commerce in a proceeding

involving claims of breach of a licensing agreement, reverse passing off, trademark dilution and unfair competition, and deceptive trade practices.

White-Collar Criminal Defense and Regulatory Compliance

In today’s global business environment, good business practice demands that multinational companies take steps to ensure that they are acting in a lawful manner and avoiding even the appearance of impropriety. Duane Morris helps clients develop programs designed to educate directors, officers, owners and employees in all aspects of compliance. We also counsel our clients on conducting internal investigations and defend clients in government investigations, criminal prosecutions and civil enforcement actions. We provide regulatory compliance and defense services within the United States and around the world in such divergent areas of law as antitrust (including the U.S. Hart-Scott-Rodino and Clayton Acts), FCPA, customs and international trade, employment, insurance and securities (including Sarbanes-Oxley Act). We also provide advice and counsel in connection with the USA Patriot Act and other anti-money laundering statutes and regulations.

Antitrust and Unfair Business Practices

We advise Asian clients, including manufacturers, distributors, licensors, financial institutions, healthcare institutions, insurance companies, joint ventures, trade associations and other collective organizations, on compliance and risk avoidance in a variety of contexts to minimize the potential for antitrust violations and liability. Our counseling includes advice relating to the Federal Trade Commission and Department of Justice Horizontal Merger Guidelines, Antitrust Guidelines for Collaboration Among Competitors, Statements of Antitrust Enforcement Policy in Health Care, and Antitrust Guidelines for the Licensing of Intellectual Property. In addition to generalized audits and compliance programs, we regularly counsel clients on antitrust risks and compliance in connection with potential transactions, business and distribution arrangements, pricing practices and other conduct.

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This publication is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specifi c facts or circumstances. The invitation to contact the attorneys in our fi rm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.

FOR MORE INFORMATION,PLEASE CONTACT:

CHRISTOPHER M. NEUMEYER Special CounselDuane Morris & Selvam TaiwanP: 886.2.8978.9311 cmneumeyer@duanemorrisselvam.com

The fi rm’s Asia offi ces in Singapore, Yangon, Hanoi, Ho Chi Minh City, Shanghai and Taipei are backed by a global infrastructure of offi ces across the United States, United Kingdom and the Middle East.

JOHN ALISONOf CounselDuane Morris & Selvam Taiwan and Duane Morris LLPP: 202.776.5257 jralison@duanemorris.com

RICHARD L. THURSTON, PH.D.Of CounselDuane Morris LLPP: 212.471.1873 rlthurston@duanemorris.com

Duane Morris & Selvam TaiwanForeign Legal Affairs Law Firm13F., No. 1, SongGao Rd.Xinyi Dist., Taipei City 11073Taiwan (R.O.C.)T: 886.2.8978.0088F: 886.2.2722.1187www.duanemorris.com© Duane Morris LLP 2019 | June 2019

ERIC CHU ConsultantDuane Morris & Selvam TaiwanP: 886.2.8978.2251 echu@duanemorrisselvam.com

TINA KAOTechnical Advisor / Offi ce ManagerDuane Morris & Selvam TaiwanP: 886.2.8978.2257 tkao@duanemorrisselvam.com

OFFICE LOCATIONS AND REACH

ACCOLADESNational publications in the United States have repeatedly ranked Duane Morris among the leading U.S. law fi rms handling patents, trademarks, copyrights and related litigation, including Corporate Counsel, Managing IP and IP Law360.

Top Firm in Pharma and Biotech

• TOP 10 Global Legal Advisor in Biotech and Pharma Licensing Agreements in BioPharm Insight (Q3 2015)

• TOP 5 Defense Firm in ANDA Cases by Lex Machina

• TOP 10 Law Firm for Pharmaceutical Industry by BTI Consulting Group

U.S. News-Best LawyersU.S. NEWS-BEST LAWYERS BEST LAW FIRMS 2019 TOP-TIER national rankings in Appellate, Banking and Finance, Bankruptcy, Construction, Corporate, Employment Law, Healthcare,

Immigration, Insurance, IP Litigation, Patent Litigation, Mass Tort Litigation/Class Actions, Real Estate, and Trademark.

Most Recommended Law FirmNamed to BTI Consulting’s MOST RECOMMENDED list four years in a row, endorsed by GCs and decision makers at large organizations with $1 billion or more in revenue.

Harvard Business SchoolSecond HBS case study of the fi rm, titled “Duane Morris: Collaborating for Growth,” was part of the Harvard Business School curriculum and made available to business schools around the world for

course study.

2019