Amendment to Taiwan’s Intellectual Property Case Adjudication Act passed by legislature to ensure thorough trade secrets protection

　The Legislative Yuan of Taiwan passed the third reading of the draft amendment to 77 articles (including 36 articles added and 41 articles amended) of the Intellectual Property Case Adjudication Act on January 12, 2023, which will form more substantial regulatory intensity than the current one comprising only 41 articles.  

Major points of the amendment are summarized as follows.  

1.  Augmented trade secrets protection—The Intellectual Property and Commercial Court has exclusive jurisdiction over the cases involving trade secrets under reinforced protective measures.

Under the amendment, the Intellectual Property and Commercial Court (hereinafter the “IPC Court”) has exclusive jurisdiction over the first-instance IP-related civil matters, while the first-instance criminal cases involving trade secrets misappropriation (including incidental civil actions) should be heard by the Intellectual Property Courts under the IPC Court as the court of the first instance, which is to effect professional, appropriate, and expeditious trial.  Moreover, for compliance with the National Security Act, the amendment adds stipulation that the criminal cases involving trade secrets with respect to national core technologies should be subject to the jurisdiction of the second instance of the Intellectual Property Courts of the IPC Court for the first instance proceedings.  The amendment also provides that the Supreme Court shall organize special court divisions to exclusively hear IP-related cases to ensure professional trial.  

Besides, the amendment adds provisions with respect to the codes or names for identifying the evidentiary documents including trade secrets for de-identification and with respect to the right to access to dossier information.  Also, the provisions governing the confidentiality preservation order system are amended to provide full protection for trade secrets.  Under the amendment, the offense of violating a confidentiality preservation order is a non-complaint-based one to aggravate the penalty therefor.  In addition, the amendment introduces the offense of violating a confidentiality preservation order from abroad to reinforce protection for the trade secrets involved in litigation.  

2.  Concentrated trial of IP-related cases—Introduction of trial plan 

According to the amendment, the court should discuss with the parties to a case to determine and adopt a trial plan for the cases where mandatory legal representation is required, where the circumstances of the cases are complicated, or where it is necessary.  For reinforcing the efficiency of trial, the amendment sets forth the legal effects of departure from a trial plan.  

3.  Mandatory legal representation by lawyers

In consideration of the fact that IP-related civil cases require legal specialty and in order to protect the rights of the interested parties and to enhance trial efficiency, the amendment requires in new provisions the mandatory legal representation by qualified lawyers for certain types of IP-related civil cases.  

4.  Expansion of experts’ participation—Introduction of expert verification and expert witness

For the court’s establishing facts of cases that involve highly technical characters and professional aspects and for resolving a possible situation of the unequal status of the access to evidence between the parties and also for enhancing the parties’ procedural equality during the course of trial, the amendment, by reference of the Patent Act of Japan, sets forth that the court may select and appoint a neutral expert upon motion after initiation of an action, who will conduct verification of evidence in the evidence gathering procedure.  Additionally, the amendment incorporates the “expert witness” system adopted by the Commercial Case Adjudication Act, and the relevant provisions of the Commercial Case Adjudication Act shall apply mutatis mutandis in this amendment.  

5. One-time resolution and avoidance of inconsistent judgments—Establishment of information exchange system between the court and the administrative authority

The amendment creates the systems for information exchange between the judicial trial and administrative examination, for seeking opinions from the competent authority in charge of intellectual property matters, and also establishes the obligation to disclose the ongoing litigation for the circumstance where the IP rights involved in the litigation have been exclusively licensed, and also sets up restrictions on re-trial due to the discrepancies of patent validity issue.  

6.  Enhancement of trial efficiency—Disclosure of technical examination officer’s report

According to the amendment, the court may disclose all or part of the report prepared by the technical examination officers when necessary, and the parties will be provided with an opportunity to express their opinions on the report, before the court adopts the report as a basis for making a ruling.  Furthermore, the amendment decreases the standard of proof for the evidence submitted by the infringed party, and also obligates the accused infringer to submit evidence to support his/her defense.  

7.  Promotion of use of technological equipment and electronic judicial services

The amendment enlarges the scope of the parties/people to a lawsuit that can use technological equipment to participate in the proceedings, and facilitates service of original copies of written judgments in electronic forms.  

8.  Introduction of a system allowing victims’ participation in trial proceedings

The amendment adds that the provisions governing victim participation in proceedings provided by the Code of Criminal Procedure shall apply mutatis mutandis with an aim to secure victims’ rights.  

9.  Resolution of disputes

The provisions governing the “post-grant amendment defense against invalidity defense” and “incidental civil proceedings” are amended to solidify the mechanism for resolution of disputes arising from litigation.  (Released 2023.01.12)  
/CCS