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The Role of "Experts” in the Newly Amended Intellectual Property Case Adjudication Act



The newly amended Intellectual Property Case Adjudication Act (the "IPCAA"), which will come into force on 30 August 2023, brings in two new systems to address the role of "experts" in intellectual property civil litigation. One is the introduction of the "expert investigator" system, which is based on the provisions of Japanese Patent Law, while the other is the "expert witness" system as provided in the Commercial Case Adjudication Act, which shall be applied mutatis mutandis to intellectual property civil litigation proceedings.
 
Under current practice, the Intellectual Property and Commercial Court (the "IPCC"), when conducting civil litigation on intellectual property, especially patent infringement litigation, often appoints professional authorities or individual experts to participate in the litigation at the request of the parties, either to conduct testing and analysis on the infringing products in dispute, provide professional opinions on relevant legal or technical issues, or even to enter the defendant's premises to collect and investigate financial information and provide opinions on the calculation of damages. It is also common for judgment to include expert opinions submitted by the parties themselves as evidence. Under the current Code of Civil Procedure, the only methods of evidence relating to "persons" are "witnesses", "assessors" and "assessment witnesses.” However, the legal nature of the various types of expert participation in litigation described, and the differences and similarities thereamong, do not appear to have been consistently applied by the IPCC in past practice. The Intellectual Property Case Adjudication Act (the "IPCAA"), as amended, provides clarity for the different functions and tasks of "experts" in litigation.
 
Article 19 of the newly amended IPCAA stipulates that "In order to determine the truth or falsity of the facts to be proved in patent infringement cases, the court may, at the petition of the party concerned, appoint an expert investigator to examine the instruments or devices in the possession of the other party or third parties.” According to the legislative rationale, the expert investigation system is designed to address situations in which evidence is often in the possession or management of the alleged infringer or a third party, making it difficult for the patentee to gain access thereto practice (i.e. "evidence bias"). The court shall evaluate whether the petitioner has shown "substantial grounds for infringement or risk of infringement of the patent right" (i.e. "cogency"), its "inability to find evidence on its own or by other means" (i.e. "complementarity"), "the necessity of the matter or method of conducting the expert investigation" (i.e. "necessity"), and "whether the time, cost or burden on the person conducting the expert investigation would be disproportionate" (i.e. "proportionality") before selecting a suitable expert investigator, and shall not be bound by the views of the parties concerned.
 
With regard to the implementation of expert investigation, Article 22 of the newly amended IPCAA stipulates that the expert investigator “not only may enter the location of the subject matter of the investigation, and conduct court-approved investigation methods towards the documents or devices, but also may raise questions to the party subject to investigation or request them to submit documents necessary for the investigation.” If the party subject to the investigation or the third party refuses or hinders the investigation without justified reason, for the former, the court may, at its discretion, recognize the fact asserted by the petitioner which should be verified in accordance with the investigation to be true. For the latter, the court may even impose penalties of up to NT$100,000.
 
After an expert investigator submits an investigation report, it is necessary for the petitioner to present the investigation report as documentary evidence in the proceedings in accordance with Article 25 of the newly amended IPCAA. There is no provision in the IPCAA governing whether a party can request attendance of the expert investigator to present opinions or conduct cross examination.
 
Expert Witnesses
Article 28 of the newly amended IPCAA stipulates that the provisions of the Commercial Case Adjudication Act (hereinafter the CCAC) concerning expert witnesses shall apply mutatis mutandis to intellectual property civil matters. According to the design of the CCAC, after the party declares an expert witness and obtains permission of the court (Article 47 of the CCAC), the expert witness shall in principle issue an expert opinion in writing (Article 49 of the CCAC), wherein in the period specified by the court, the party may question other experts in written forms, and the court may, ex officio or upon request, compel the expert witnesses to present their opinions (Article 50 of the CCAC). In addition, with the permission of the presiding judge, expert witnesses may question other expert witnesses or assessors at the oral hearing (Article 52 of the CCAC). In addition, when the court deems it necessary, it may order the expert witnesses of the two parties to discuss the issues or other necessary matters within a limited period, and jointly issue professional opinions in writing (Article 51 of the CCAC).
 
After the implementation of the IPCAA, further observations and practices remain to be made and developed concerning how various evidence methods involving "persons" such as expert investigators, expert witnesses, and assessors and assessment witnesses in the current civil procedure law will be employed properly in the court evidence investigation procedures, how to allocate proper missions to such persons in order to make the most of these evidence methods, and what the differences will be between actual practice and legal effect.
 
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