On 12 January 2023, Taiwan’s Congress passed Intellectual Property Case Adjudication Act. The Judicial Yuan introduced the legislation to strengthen trade secret protection and to establish a more professional, effective and internationally trendy IP litigation system. The amended act includes several major points.

The implementation date of this Amendment is yet to be decided by the Government. 

1.Trade secret criminal case jurisdiction

In order to protect companies’ legitimate business rights and encourage and protect continuous innovation and R&D through a professional, appropriate and expeditious trial, the amended act stipulates that trade secret criminal cases (including civil damage cases) are to be subject to the jurisdiction of the Intellectual Property and Commercial Court as the court of first instance. Further, in parallel with the newly amended National Security Act, the amended act states that criminal cases involving infringement of national key technologies’ trade secrets are also to be subject to the jurisdiction of the second instance of the Intellectual Property and Commercial Court.

2.Mandatory representation of lawyers on certain types of cases.

Unless a party or its legal representative is a qualified attorney, the party must appoint one as its legal representative in the proceedings. This applies to:

(1)civil cases involving patent rights;

(2)computer program copyright or trade secrets;

(3)appeals of a second instance court’s judgment; and

(4)rehearing proceedings.

3.Evidence and trial procedure for IP civil proceedings

For complex cases, the court should adopt a trial plan based on agreement from both parties to increase the possibility for them to anticipate the proceedings, in order to strengthen their right to participate.

4.Expert trial participation

The amended act has added relevant provisions for expanding expert participation in trials, including the introduction of the ‘investigation’ and ‘investigator’ system outlined under Japan’s Patent Act; the provisions concerning expert witnesses in the Commercial Case Adjudication Act will apply to IP civil proceedings, once necessary changes have been made. If necessary, the court may publicly solicit opinions or information from individuals, institutions or organizations other than the parties involved.

5.Patent and trademark remedy cases: Patentee /trademark owner v. Disputed party. Leave IP office alone!

In light of litigation process reforms for patent and trademark remedy cases from administrative litigation to civil litigation (seen in draft amendments to the Taiwan Patent Act and Taiwan Trademark Act), the amended act adopts certain rules and procedures related to these reforms. For lawsuits in which a party challenges rulings made by Taiwan Intellectual Property Office’s review board in inter parte proceedings, Taiwan’s IP office will no longer be named as a party of the proceedings. The lawsuit will be filed and defended between the patentee or trademark owner and the disputed party of said intellectual property. Neither the IP office nor the review board will be involved in the lawsuit proceedings.

6.”Victims” to be heard by participating in the trial procedure

After the Amendment takes effect, no matter whether an IP right infringement lawsuit is governed by the IPC Court or not, the provisions of the Criminal Procedure Law on “victims’ participation in litigation” shall apply mutatis mutandis. That is, victims can be voiced by prosecutors in the trial procedure, and also enter the procedure themselves to express their opinions and review case files.

7.Trial effectiveness: Reports by TEOs(technical examination officer/技術審查官) to be revealed. Burden of proof reduced on plaintiff.

According to the amended act, the court may disclose all – or part – of the report’s contents prepared by the technical examination officer if it deems it necessary. The parties will be given an opportunity to express their opinions over said report before the court uses it as the basis for a ruling. The amended act has also reduced the plaintiff’s degree of proof in infringement proceedings involving patent rights and computer program copyright or trade secrets, and has imposed a duty on the defendant for submitting evidence and facts to support its defense.

2. https://www.iam-media.com/article/six-key-outcomes-of-taiwans-ip-law-overhaul

By Victoria