Newsletter
IPR COURT BILL PASSED FIRST READING
On 29 May 2006, the draft Act of Organization of Intellectual Property Rights (IPR) Court passed its first reading at the Legislative Yuan. If the legislative process runs smoothly, the Judicial Yuan will set up the IPR Court in March 2007 as originally scheduled. During the first reading, legislators were unable to reach a consensus on "qualifications for technology review officers" as set out in Article 16 of the draft Act. The article was held back for further discussions by the Legislative Yuan.
The Judicial Yuan has sent two legislative bills to the Legislative Yuan in connection with the set-ting up of IPR courts in Taiwan: (1) the draft Act of Organization of the Intellectual Property Rights Court, and (2) the draft Law of Handling Intellectual Property Cases by IPR Court. Salient features of the Organization Act include the fol-lowing:
The IPR Court's jurisdiction shall extend to IPR-related civil litigation, criminal prosecu-tions, and administrative litigation.
In principle, a single IPR Court will be estab-lished for the entire country, with the Judicial Yuan empowered to select an appropriate lo-cation. Taking account of geographical fac-tors and casework needs, the Judicial Yuan may establish additional branches in order to meet operational needs.
First-instance trial proceedings in IPR civil litigation and summary trial proceedings in administrative litigation will be heard by a single judge. Second-instance proceedings in civil and criminal cases (comprising appeals against judgments and motions to set aside rulings) and ordinary proceedings in adminis-trative litigation will be heard by panels con-sisting of three judges.
To enhance the IPR Court's expertise, judges should be recruited from diverse sources. In addition to judges who have already served with courts handling IPR cases being eligible for appointment, other former or serving judges and serving prosecutors may qualify by selection and training for appointment as judges in the IPR Court. Lawyers, academics, and senior officials who have handled IPR work, may qualify by examination and train-ing. The Judicial Yuan will prescribe the or-ganization of selection or examination review committees, the review process, training of committee members, and related matters.
IPR cases frequently involve scientific and technological issues. For this reason, the IPR Court will recruit technology review officers to assist judges in reviewing technical issues. The draft Act defines their official grades, qualifications for appointment, and duties. When necessary, the Judicial Yuan may also second personnel with IPR expertise to serve as technology review officers.
Main points of the draft Act of Handling Intel-lectual Property Cases by IPR Court are as fol-lows:
The draft Act defines the scope of IPR-related civil, criminal, and administrative cases.
The courts having jurisdiction over trials, ap-peals, and motions to set aside rulings in IPR-related civil, criminal, and administrative suits are defined.
If facilities are available for two-way audio and video transmission between the court and the location of involved or interested parties in IPR-related proceedings, the court may con-duct hearings by videoconference.
When the court considers it necessary for conducting a hearing of an IPR case, it may instruct a technology review officer to per-form various duties. The draft Act sets out rules for technology review officers to refrain from reviewing specific cases on grounds of conflict of interest.
To enhance the quality of adjudication in IPR civil litigation, the draft Act provides that the provisions of the Code of Civil Procedure re-garding summary trial proceedings and small claims proceedings do not apply.
When hearing IPR cases involving trade se-crets, the court may close the court session or proceedings to the public, and may restrict access to review, transcribe, or photograph the case files and other information relating to the litigation.
In civil and administrative IPR litigation, a party to the case or a third party that holds documents or items for inspection, who, without legitimate grounds, fails to comply with a court order to produce such evidence may be fined, and if necessary the court may order compulsory enforcement.
When hearing an IPR case, the court may, upon request, issue a confidentiality order and impose criminal liability for a violation of such order, so as to facilitate the progress of the litigation and protect trade secrets.
In civil and criminal IPR cases, the court should make its own determination as to whether the asserted intellectual property right should be invalidated or annulled. The draft Act excludes application of the various provi-sions in IPR laws with respect to suspension of litigation pending the outcome of proceedings over the validity of IPR rights.
When hearing IPR civil litigation, if the court considers it necessary to judge whether there are grounds for invalidating or annulling the asserted intellectual property right to be in-validated or annulled, it may order the in-charge governing authority to participate in the litigation. The draft Act also sets out the legal effects of such participation.
In evidence preservation procedures in civil and administrative IPR litigation, if a respon-dent, without legitimate grounds, refuses to cooperate in the implementation of such preservation measures, the court may over-come the refusal by force, but such force shall not exceed the level that is necessary.
With regard to civil or administrative IPR litigation, if a party files a petition with the court for an injunction to preserve the status quo, the party must clearly set out the reasons for such an injunction. If its reasons are in-adequate, the court may reject the petition. If no formal litigation is filed within 30 days after the court grants such an injunction, the court may revoke the injunction grant.
We will closely follow the progress of the above legislation, and keep our readers informed.