On January 12, 2023, Taiwan's Legislative Yuan passed the Amendment to the Intellectual Property Case Adjudication Act (referred to hereafter as "the Amendment"). The Amendment represents the most significant revision to the Act since its implementation more than 14 years ago. Key aspects of the Amendment are summarized as follows:

 

 

The Amendment stipulates that first-instance civil matters related to intellectual property are under the exclusive jurisdiction of the Intellectual Property and Commercial Court. In addition, the Amendment provides that first-instance criminal cases in violation of the Trade Secrets Act should be heard before the Intellectual Property and Commercial Court and that first-instance criminal cases related to misappropriation of trade secrets categorized as national core technologies should be heard by the Second-Instance Tribunal of Intellectual Property, which falls under the Intellectual Property and Commercial Court.

 

 

(I)     The Amendment extends the scope of the movant of a confidentiality preservation order, providing that, under certain circumstances, one party of the litigation who is not listed as a secret holder may petition the court to issue a confidentiality preservation order for persons who are not bound by such an order.

 

(II)   The Amendment increases penalties for violations of a confidentiality preservation order and introduces the crime of violating a confidentiality preservation order from abroad.

 

(III)  In addition, the Amendment stipulates provisions detailing prohibition of or limits on review of litigation materials pertaining to trade secrets in civil and criminal cases. Furthermore, the Amendment provides that the parties or stakeholders to a criminal case involving trade secrets, as well as any ancillary civil action, may, prior to the first trial date, petition the court to determine an alternative identification number or name for evidentiary documents containing trade secrets for the purpose of de-identification.

 

 

The Amendment stipulates provisions stating that legal representation is mandatory for certain types of civil intellectual property matters (e.g., civil lawsuits for patent infringement, computer program copyright infringement, or misappropriation of trade secrets).

 

 

(I)     The Amendment states that, after a lawsuit for patent infringement, computer program copyright infringement, or misappropriation of trade secrets is initiated, the parties may petition the court to appoint a neutral expert who possesses professional knowledge to act as an inspector to conduct evidence collection.

 

(II)   The Amendment introduces the expert witness system.

 

 

The Amendment expands the scope of people who can use technological equipment to participate in litigation proceedings. The Amendment has also added a regulation that the original copy of a judgment may be served electronically with the consent of the corresponding recipient(s).

 

 

The Amendment states that provisions governing victim participation in proceedings, as set out in the Code of Criminal Procedure, may apply, mutatis mutandis, in criminal intellectual property cases.

 

 

The Amendment provides that the court should, through consultation with the parties, determine a trial plan in certain cases where the mandatory legal representation system is utilized, where the circumstances of a case are complex, or as otherwise necessary.

 

 

(I)     The Amendment states that the court may, when it deems necessary, fully or partially disclose the report provided by a Technical Examination Officer. Additionally, the court should provide the parties with an opportunity for argument on the special expert advice acquired from the Technical Examination Officer.

 

(II)   Aside from incidents involving misappropriation of trade secrets, the Amendment adds that, for patent or computer program copyright infringement, if one party has made a preliminary showing of misappropriation but the other party still denies such allegation, the court should order the other party to raise a concrete defense, so as to ease the burden of proof in infringement actions.

 

 

The Amendmentcreates an information exchange system between the court and the competent authority for intellectual property, adds duty to disclose ongoing litigation to concerned parties of exclusive license, and imposes restrictions on re-trials pertaining to discrepancies in patent validity judgments.

 

 

(I)     The Amendment stipulates how to handle instances in which the patentee advocates for a re-defense based on correction of claims against patent invalidity defense and that the legality of the post-grant amendment to the claims is at the court's discretion.

 

(II)   The Amendment modifies provisions pertinent to ancillary civil proceedings, as well as other relevant provisions.

 

Finally, the Amendment originally proposed amended provisions for proceedings of patent or trademark review and dispute cases (i.e., the remedy for patent or trademark infringement was to be changed from the current administrative litigation proceedings to civil litigation proceedings). However, the Draft Amendment to Partial Provisions of the Patent Act and the Draft Amendment to Partial Provisions of the Trademark Act have yet to be submitted to the Legislative Yuan for deliberation. Therefore, the Amendment removed these relevant stipulations as they appeared in the earlier Draft version.

 

The Amendment improves current trial procedures, making them more complete (these improvements include the introduction of trial plans, an investigation system, and an expert witness system; the establishment of a judicial and administrative information exchange system to avoid contradictory judgments; and more public and transparent Technical Examination Officer reports). The Amendment also strengthens the protection of trade secrets within the legal procedure system. Furthermore, the introduction of mandatory legal representation for certain types of civil intellectual property cases will help improve the protection of intellectual property rights in terms of both form and substance. This will greatly assist in establishing Taiwan as a country where intellectual property litigation is user friendly.

 

Lee and Li Attorneys-at-Law has formed practice groups including patent enforcement, trade secret protection, and dispute resolution copyright enforcement, maintenance, and dispute resolution; and trademark dispute resolution to provide planning and consultation services for different types of intellectual property transactions, execution, and dispute resolutions. Please do not hesitate to contact us if you have any questions about recent amendments to the Intellectual Property Case Adjudication Act or intellectual property transactions, enforcement, and dispute resolutions.