Newsletter
DRAFT ENFORCEMENT RULES OF IP CASES HANDLING ACT
On 10 December 2007, the Judicial Yuan published the draft Enforcement Rules of the Intellectual Property Cases Handling Act (Draft Rules) for comments by the general public. The main points of the Draft Rules are as follows:
‧The scope of the IP Court's jurisdiction over civil, criminal, and administrative suits involving intellectual property rights is expressly defined under the Draft Rules. (Arti-cles 2 to 4)
‧Upon an appeal against the judgment rendered by the lower court on a criminal case the reclassified as an IP case due to the public prosecutor's change of the legal provisions cited, the case should be transferred to the IP Court. (Article 8)
‧An appeal against a civil or administrative court judgment on a case which involves IP issues but does not fall within the exclusive jurisdiction of the IP Court should not be set aside by the appellate court on the ground of lack of jurisdiction. (Article 9)
‧The judgment rendered by a court, other than the IP Court, on a non-IP case based on laws and regulations applicable to IP suits, should be reversed or annulled by the appellate court. (Article 10)
‧The IP Court may, if deemed necessary, appoint a technology review officer to perform various duties. Other courts should request the IP Court to appoint such an officer to provide assistance if they deem such assistance necessary in the IP suits being heard. (Articles 11 and 12)
‧Description technology review officer's provision of assistance in a suit must be duly recorded in the court transcript. With the permission of the presiding judge or commissioned judge, a technology review officer may directly question the parties to the suit as well as the witnesses. (Articles 13 and 14)
‧Either party to a suit may respond to the statements made by the technology review officer in court. The judge may order the technology review officer to submit a report in reply to that party's response. (Articles 15 and 16)
‧If deemed necessary, the court may dismiss or replace the appointed technology review officer. (Article 17)
‧The statements made by a technology review officer are not direct evidence of the facts being investigated. The parties to a suit must present evidence in support of the facts being investigated in accordance with the rules of evidence prescribed under the Procedural Code. (Article 18)
‧If the judge orders a party to present a piece of evidence which contains any trade secret the party may object and explain to the judge the type, nature and scope of the trade secret. The judge may order the party to present the evidence in camera. Criteria governing the court's deliberation of such an objection are also defined. (Article 19)
‧The requirements for applying with the Court for a confidentiality protection order are expressly stipulated under the Draft Rules. Public officials involved in court proceedings who already bear a duty of confidentiality in their official capacity may not be the subjects of a confidentiality protection order. (Article 20)
‧A confidentiality protection order applies only to those persons who have legitimate access to the trade secret concerned because of their involvement in the case. Any and all documents or articles containing the trade secret concerned should not be appended to pleadings, petitions or briefs nor kept in court files after the conclusion of the case. In determining whether or not to issue a confidentiality protection order, the judge may question the parties and the subject of the order, conduct necessary investigations, and suspend the proceedings of the suit. (Articles 21 to 24)
‧Regardless of whether or not it issues a confidentiality protection order, the court must not disclose the trade secret concerned, and the court should refer to the trade secret in an indirect manner. The original of the ruling on the application for a confidentially protection order should be docked together with the document(s) containing the trade secret. Documents containing the trade secret should not be appended to any official copy of the ruling. (Articles 25 and 26)
‧The effective date of a confidentiality protection order is expressly stated under the Draft Rules, and its service should not be through public announcements. While reviewing an application for a confidentiality protection order, the court may inform the parties to agree that the subject of the order should collect the order from the court. The subject of such order must notify the court of any change of residence or domicile. (Article 27)
‧If a party to an IP civil or criminal suit asserts as a defense the reasons justifying the revocation or amendment of the intellectual property right concerned, and that such revocation or annulment would affect the outcome of the suit, the judge should make a determination on such defense in stating the grounds for its judgment. Since an. (Article 28)
‧Either party to an IP civil suit is prohibited from filing a separate suit or a counter suit to assert or challenge the validity of an intellectual property right or the grounds for its revocation or annulment. (Article 29)
‧Where an administrative dispute resolution proceeding has been instituted for determining revocation or annulment of an intellectual property right relevant to the subject IP in an IP civil suit, the court should take into consideration the progress of the administrative dispute resolution proceeding and the opinion of the parties to the suit in setting the hearing date. If necessary, the court may order the Intellectual Property Office (IPO) to participate in the civil suit, and to present evidence. (Article 30)
‧The court may seek the opinion of the IPO on any specific knowledge or legal principle relevant to the issues being disputed in the civil suit. (Article 31)
‧If the patentee, in a civil suit for patent infringement, has filed an application with the IPO for amending its patent application, unless the amendment is obviously unacceptable, the court should take into consideration the progress of the amendment procedure and the opinion of the parties to the suit in setting the hearing date. (Article 32)
‧For an IP civil suit of which the intellectual property right concerned is being reviewed for revocation or annulment in a separate proceeding, if either party to the suit deliberately delays the proceeding of the suit or significantly delays in presenting claims or defenses by gross negligence, thus disrupting the civil suit proceeding, the court may dismiss the civil suit. Any claim or defense not presented by either party in the preparatory or lower court hearing cannot be introduced in any oral debate hearing subsequent to the preparatory hearing or in the appellate court. (Article 33)
‧The final judgment rendered on an IP suit involving the revocation or annulment of an intellectual property right should be taken into consider action by the IP Court in rendering judgments on other IP suits involving the same intellectual property right based on the same underlying facts. (Article 34)
‧The Draft Rules contain the process of determining infringement and deciding on damage is in a civil IP infringement suit, and the procedures for seeking and enforcing a civil injunction. (Articles 35 to 39)
‧In an administrative suit for revocation or annulment of a trademark registration or for revocation of a patent, the court should consider any new evidence within the scope of the same grounds asserted for revocation or annulment, introduced by either party before the end of oral debate, and should allow time for the IPO to prepare and submit a defense. Any new evidence not introduced in a timely manner as an attempt to delay the proceeding of the suit or due to gross negligence thereby obstructing the conclusion of the suit should be rejected. (Article 40)
‧Multiple IP suits of which the underlying facts are the same may be heard by the same judge. (Article 41)
The IP Court will start accepting cases in July 2008. We will keep our readers updated on further developments.