A foreign-national claimant in a civil action in Taiwan, whether an individual or a juristic person seeking to enforce its IPR, will often ask its local counsel: If we prevail in this lawsuit, can we demand that the respondent reimburse us for the lawyer’s fees we incurred, in addition to the court fees paid at each instance?

In the past, the prevailing view was that if representation by a lawyer is legally compulsory throughout a specified stage of litigation, the attorney’s fees incurred in that stage are essential to the litigation and, by their nature, constitute litigation expenses. Therefore, the prevailing party may request the court to assess a comparable amount of attorney’s remuneration, to be borne by the losing party. (Note: This award represents a court-assessed amount of attorney’s remuneration comparable to, but not necessarily identical with, the actual attorney’s fees incurred for lawsuit.)

Prior to August 30, 2023, the claimant or respondent in a civil action was not legally required to appoint an attorney-at-law for representation in the courts of first and second instance. At that time, legal representation in civil procedure was compulsory only in litigations before the court of third instance (if the case was appealable), as required under Articles 466-1 and 466-3 of the Code of Civil Procedure. The attorney’s remuneration for such compulsory representation in the third-instance litigation was treated as part of the litigation expenses, and the prevailing party could request the court of third instance to assess a comparable amount of attorney’s remuneration to be borne by the losing party.

With respect to IP-related civil cases, this arrangement is illogical both in practice and in theory. From both technical and substantive perspectives, IP-related civil litigation or proceeding requires specialized knowledge. Accordingly, it is common for parties in such cases to retain an attorney-at-law from the outset of proceedings in the court of first instance. Some parties, however, choose to represent themselves in the first and second instances. As a result, their rights and interests often receive diminished protection and, more often than not, the effectiveness of the court’s adjudication is undermined.

The Intellectual Property Cases Adjudication Act (“the Act”) was amended in 2023, with the amendment promulgated on February 15, 2023, and coming into force on August 30, 2023. The amendment expressly provides that representation by a lawyer is compulsory in certain categories of IP civil cases, including the litigation or proceeding. It further allows the prevailing party, upon conclusion of the procedure, to request the court to assess a comparable amount of attorney’s remuneration to be borne by the losing party.

Paragraph one, Article 10 of the amendment reads:

” A party to an intellectual property civil procedure shall retain a lawyer as its agent ad litem if the procedure belongs to any of the following, unless the party or its legal representative is qualified as a judge, prosecutor, or lawyer:

1. a first instance civil action, where the amount or value of the claim exceeds the amount where an appeal may be taken to the court of third instance as provided in Article 466 of the Code of Civil Procedure;
2. a first instance civil action over patent rights, copyrights in computer programs or trade secrets;
3. a second instance civil action;
4. a motion for preservation of evidence or injunctive procedure, or a motion or interlocutory appeal over other case arising out of an action as in any of the preceding three subparagraphs, which is filed before a suit is initiated;
5. a retrial of the action in any of the preceding four subparagraphs;
6. a proceeding before the court of third instance;
7. other proceeding in which an agent ad litem is required by the Judicial Yuan to be retained.”

Article 15 of the same Act provides “Remuneration of lawyers referred to in the main text of paragraph one of Article 10 and paragraph one of Article 11 is part of litigation or proceeding expenses and shall be capped. The Judicial Yuan will prescribe the standards for paying remuneration in consultation with the Ministry of Justice and Taiwan Bar Association etc.” (Note: Paragraph one, Article 11 of the Act provides that if a party as provided in paragraph one, Article 10 is not financially viable to retain an agent ad litem, it may file a motion with the court for the court to appoint a lawyer to act as its agent ad litem.)

According to the above provision, nearly all IP-related civil cases can be put into the scope of procedure where the winning party may seek to have a comparable amount of remuneration assessed by the court for the losing party to bear.

With respect to representation by an Attorney-at-Law in the first instance civil litigation and the relevant proceeding,

1)  Though the litigation, motion or interlocutory appeal relating to a first instance civil procedure in which the value of claim is less than TWN 1.5 million (the threshold amount to bring the case to the court of third instance) do not fall within the category of the procedure where the winning party may seek to have a comparable amount of remuneration assessed by the court, as pointed out in the reasoning of the legislation, if the value of claim increases over the above threshold amount as a result of the claimant’s request to broaden the scope of claim during the first instance, representation by an agent ad litem appointed shall be therefrom compulsory.

2)  According to paragraph four, Article 10 of the Act, no reduction or amendment of a claim which results in the amount or value of the claim falling short of the amount mentioned will affect the circumstance in subparagraph 1 of paragraph one. In other words, where the claimant has been represented by a lawyer in the litigation as required upon initiation of the action but later on requested to reduce the amount claimed during the first instance, representation by lawyer shall remain compulsory still for the purpose of litigating the case, filing related motions and/or interlocutory appeals.

3)  According to paragraph three, Article 10 of the Act, the amount or value of the claim provided in subparagraph 1 of paragraph one is separately calculated among parties in a common joint action. In other words, the total claim value does not determine whether the TWD 1.5 million threshold is met; rather, the claim value asserted by each claimant, or against each respondent, must be considered individually. This determines whether the prevailing party may request the court to assess a comparable amount of attorney’s remuneration, for relevant proceedings before the court of first instance (including the principal action, motions, and interlocutory appeals connected with the action), to be borne by the losing party.