Since the establishment of the Intellectual Property Court in 2008, Taiwan has adopted the institution of Technical Examination Officers (in intellectual property litigations), who provide their technical knowledge for assistance to judges in comprehending technical-related facts in each respective case. The institution of Technical Examination Officers receives praise from various industries because the participation of Technical Examination Officers in patent trial cases has elevated the trials and proceedings of patent cases to a more accomplished level. However, on the other hand, certain concerns arise regarding the non-disclosure of reports compiled by Technical Examination Officers during the trial. Article 16, paragraph 2, of the Intellectual Property Case Adjudication Rules stipulates that “reports compiled by a Technical Examination Officer will not be disclosed.” The forgoing provision not only prevents the parties or their agent(s) from accessing any reports of a Technical Examination Officer critical to the outcome of a trial, but also renders it difficult for the parties or their agent(s) to prepare their cases or litigation strategies with a focus on the viewpoint(s) of a Technical Examination Officer in the said Technical Examination Officer’s report(s). Complaints from the industries against the aforementioned provision are not something rare to hear. From time to time, we have heard calls demanding the access of the parties or their agent(s) to report(s) of a Technical Examination Officer during the trial.

A recent decision of the Supreme Court in Taiwan (the “Court”) offers an insight of the Court into the foregoing issue. In the 111 Tai Shang No. 15 civil judgment rendered by the Court on August 31, 2022, the Court held that “. . . intellectual property cases involve cross-disciplinary technology expertise. The Intellectual Property and Commercial Court (the “IPCC”) . . . is staffed with Technical Examination Officers, who are under the direction and supervision of judges and who provide assistance to judges, in accordance with the law, in the determination of technical issues, the collection of technical information, and the analysis of relevant technologies, as well as by providing their viewpoint(s) to judges. Moreover, under Article 16 of the Intellectual Property Case Adjudication Rules, the presiding judge or the commissioned judge may order a Technical Examination Officer to prepare a written report on the results of his performance of duties while that report will not be disclosed. Furthermore, in order to protect the parties from being surprised by any unpredictable decision of the IPCC (where any of the parties was surprised by that the special professional knowledge related to the case before the bench, either already known to the IPCC or acquired by the IPCC from the viewpoint(s) presented by a Technical Examination Officer, is different from the finding(s) of designated authorities), and also to balance the protection of the substantive and procedural interests of the parties, Article 8, paragraphs 1 and 2, of the Intellectual Property Case Adjudication Act requires that a court may adopt special professional knowledge already known to the court as a ground for a judgment of the court only if the court has given the parties an opportunity to present their arguments regarding such knowledge; the presiding judge or the commissioned judge shall direct the parties to issues concerning the legal relations of the disputed matters, and may timely provide his legal opinions and aptly disclose (potential) convictions.” “However, the proceedings conducted by the lower court were inappropriate because the lower court made a decision in disfavor of the appellant without conforming to the meaning and purpose of the aforementioned requirement to aptly disclose the lower court’s (potential) convictions to the parties and give the parties an opportunity to present their arguments regarding the aforementioned special professional knowledge.”

In other words, the Court found that the proceedings conducted by the lower court were flawed, and the Court vacated the lower court’s decision and remanded the case to the lower court, on the ground that the lower court failed to aptly disclose the special professional knowledge already known to the lower court and also failed to give the parties an opportunity to present their arguments regarding the said special professional knowledge. In light of the meaning and purpose of the Court’s aforementioned decision and other relevant regulations, a court adopting a report of a Technical Examination Officer as a ground for a judgment of the court should aptly disclose the said Technical Examination Officer’s report (despite that a report compiled by a Technical Examination Officer will not be disclosed) to the parties and give the parties an opportunity to present their arguments regarding the said Technical Examination Officer’s report. Otherwise, the proceedings will be (found) in violation of the law.

Accordingly, a party or its agent(s) troubled by no access to the viewpoint(s) of a Technical Examination Officer during the trial may, by referring to the aforementioned decision of the Court and on the ground of Article 8 of the Intellectual Property Case Adjudication Act as well as the proviso of Article 16, paragraph 2, of the Intellectual Property Case Adjudication Rules, request a court to aptly disclose the content of the report(s) of a Technical Examination Officer to the parties and give the parties an opportunity to present their arguments regarding the content of the said Technical Examination Officer’s report(s).