Taiwan IPO holds public hearing for Trade Secrets Act amendment

　To perfect trade secrets protection and integrate intellectual property developments, Taiwan IPO has formulated a collection of draft amendments to Trade Secrets Act and also held a public hearing on May 5, 2017 to seek comments with respect to the following three main issues:  “prosecution for trade secrets misappropriation in a foreign jurisdiction may only be instituted upon a complaint”, “unrecognized foreign corporations may file a complaint for trade secret misappropriation”, and “confidentiality protective order may be issued during investigative proceedings”.  Participants at the public hearing actively gave their feedbacks and comments.  Here is the current consensus reached in the public hearing. 

1.  Should prosecution for trade secrets-related offenses in a foreign jurisdiction only be instituted upon a complaint?

Participants at the hearing reached a consensus that trade secret offenses should remain subject to public prosecution due to practical factors and in consideration of the actual political and economic environment.  The basis of their consensus is that the plea bargaining set forth in the current Witness Protection Act and the Taiwan Code of Criminal Procedure has brought the effect of “whistleblower protection” to achieve and fulfill the purpose of investigation and trial.  Also, Taiwan-based enterprises are mostly small and medium sized companies that possess limited resources and need assistance from the prosecution and investigation authorities.  Therefore, trade secret offenses should remain subject to public prosecution. 

2.  Can unrecognized foreign companies file a complaint against trade secret-related offenses? 

In order to promote international trade and attract foreign investments by multinational corporations, participants from all sectors agreed to the introduced additions proposed by reference of Taiwan Patent Act, Taiwan Trademark Act, and Taiwan Copyright Act that unrecognized foreign companies may file a complaint against trade secret offenses to protect such companies’ rights. 

3.  Can confidentiality protective order be issued during investigative proceedings?

Currently, confidentiality protective order is applicable only at trial proceedings according to Intellectual Property Case Adjudication Act, but is not applicable at the investigative proceedings.  In this regard, participants from all sectors appearing at the public hearing all recognize and agree to the proposed addition that confidentiality protective order may be issued during the prosecutorial investigation proceedings so as to prevent second-time trade secrets divulgence during the prosecutorial investigation proceedings.  In addition, participants at the public hearing suggested that Taiwan IPO should revise the amendments by reference of the instances of legislation for Intellectual Property Case Adjudication Act.  Further, Taiwan IPO will discuss with the Judicial Yuan and the Ministry of Justice on whether the availability of protective order should be added and incorporated into the Intellectual Property Case Adjudication Act or the Trade Secrets Act and whether the order should be issued by the judge or the prosecutor. 

In addition to the aforesaid three main issues, participants at the public hearing also raised other relevant issues, such as, “non-disclosure of trade secrets in judgments on cases involving trade secrets offenses”, “employee poaching being a type of unfair competition”, and “difference between the offense of commercial and industrial secrets disclosure as set forth in the Criminal Code and the trade secrets related offenses as defined in Trade Secrets Act”.  The Taiwan IPO will convey those comments to relevant divisions and departments for negotiation and handling.  (June 2017)
/CCS