APAA e-Newsletter (Issue No. 34, April 2023)

Brief Introduction of the Amendment of the Intellectual Property Case Adjudication Act in Taiwan

Man-Ting Liao and Chi-Che (AL) Tung, Formosan Brothers Attorneys-at-Law (Taiwan)

The amendment of the Intellectual Property Case Adjudication Act was passed in the Legislative Yuan on January 12, 2023 and will be enforced on August 30, 2023. This is the most significant amendment after more than 14 years since its implementation on July 1, 2008. The main points of the amendments to the Intellectual Property Case Adjudication Act are as follows:

1. Enhancement of the procedure of IP litigation as well as the protection of trade secrets during IP litigations

(1) In matters of the first instance of intellectual property civil cases, the Intellectual Property and Commercial Court (IPC court) has exclusive jurisdiction.
(2) In matters of the first instance of criminal cases committed in Article 13-1, Article 13-2, Article 13-3(3), and Article 13-4 of the Trade Secrets Act, the IPC court has jurisdiction.
(3) In line with the National Security Law promulgated by the President on June 8, 2022, criminal cases regarding trade secrets that infringe the country’s key technologies are under the jurisdiction of the IPC court.
(4) Increase of the punishment for the offence of the “crime of violating the confidentiality preservation order” and introduction of the “crime of violating the confidentiality preservation order in offshore” to improve the protection mechanism for trade secrets that may be disclosed during IP litigation.
(5) Adding code names or pronouns for the de-identification of trade secret documents.

2. Expand the adoption of compulsory representation by attorneys

To protect the rights and interests of the parties and promote the efficiency of the trial, it is mandatory for a party to appoint an attorney as his/her advocate for a specific type of intellectual property civil case.

3. Expand the participation of experts in trials

(1) Introduction of a “verification” system that may move the court to select a neutral technical expert to carry out the evidence-collecting process after a litigation has been initiated.
(2) The “Expert Witness System” adopted by the Commercial Case Adjudication Act shall apply mutatis mutandis.

4. The upgrading of the electronic process in IP litigations

Expanding the use of technology equipment in litigation, and specifying that the original judgment can be served as an electronic document when the person to be served agrees.

5. Renewal of the victim’s litigation participation system in IP criminal cases

To protect the rights and interests of victims, the provisions of the Code of Criminal Procedure on “Participation of Victims in Proceedings” shall apply mutatis mutandis for IP criminal cases.

6. Centralized trial of intellectual property cases

For specific cases where compulsory representation by attorneys is adopted or for complicated cases or necessary situations, the court shall discuss the trial plan with the parties.

7. Promoting trial efficiency

(1) The court may disclose the Technical Examination Officer’s internal analysis report if necessary, and the court should allow the parties to present their arguments regarding the report.
(2) For the litigations regarding infringement of patent rights, computer program copyrights, and trade secrets, the right holders’ burden of proof for the infringement has been reduced. Specifically, if the right holders have provided certain infringement facts but the accused infringers still maintains denial, the court may ask the accused infringers to respond on the merits.

8. One-off dispute resolution

(1) Establish an information exchange system between the court and the administrative agency as well as the duty of the litigation notification for IP rights under an exclusive license.
(2) When there is a conflict in the judgments between the court and the administrative agency regarding the validity and scope of the patent right, initiation of a rehearing action against the final judgment based on the conflict of the judgements is now prohibited.

9. Solve the disputes in real practice

Relevant regulations such as the “re-defense of correction” system and “supplementary civil action proceeding” were amended.

The change of the rules and the process in the amendment encapsulates the accumulated experiences in handling IP litigations since the IPC court was founded, and reflects the voices of the industry and the attorneys. After the enforcement of the newly amended Intellectual Property Case Adjudication Act, the process of IP litigations in Taiwan is expected to be more efficient and reliable.