Newsletter
Revisions to Intellectual Property Case Adjudication Act
Amendments to Articles 4, 19, 23 and 31 of the Intellectual Property Case Adjudication Act, with the addition of Article 10-1, were passed by way of Third Reading during the 10th meeting of the 5th Session of the 8th Legislative Assembly held on May 20, 2014. The Act was promulgated by Presidential Order on June 4, 2014. The main amendments are as follows:
1. Relaxation of the executive powers of Technical Examination Officer:
Civil provisional remedies procedures such as provisional attachments, provisional injunctions, preliminary injunctions, or compulsory enforcement were previously handled by the judge or judicial associate officer. For civil provisional procedural cases involving intellectual property rights (in particular patent cases) which involve a high degree of technicality, the revised Article 4 has expanded the executive powers of the technical examination officer (TEO) such that the TEO is allowed to provide professional technical opinions during such procedures or compulsory enforcement procedures. The idea is to expand the TEO's professional functions as well as to effectively resolve intellectual property right disputes, thereby strengthening the protection of holders of intellectual property rights.
2. Imposition of assistance duty on alleged infringer of trade secrets by way of specific defenses:
As a result of the provisions in Articles 342 and 343 of the Code of Civil Procedure ("CCP") with respect to ordering the opposing party to provide documents, along with the provision in Article 345 of the CCP with respect to non-compliance of such order, the court shall have the discretion to deem that the claim of the party on such document or the facts to be proved by such documents are true. However, the above are general provisions in the CCP on submission of documents. In disputes between litigants involving infringement of trade secrets which may have a serious impact on competition in the technological industry, and may make the opposing party hesitate to provide documents as ordered, the exercise of the court's discretion by accepting as facts of the claims or matters to be proved by a party as a result of failure of the opposing party to provide documents relating to such trade secrets without the court hearing the opposing party's explanation may appear unfair on the burden of proof of both parties.
In the current amendment, the addition of Article 10-1 is in line with foreign legislation. It requires that when a party claims infringement (or potential infringement) on its trade secrets and has fully explained such infringement while the opposing party denies such claim, the court should give a deadline to the opposing party to give specific defense with respect to its denial. "Specific defense" in this case means that the opposing party is not only disallowed from a passive denial of infringement of the trade secrets, but it is also required to provide specific reasons for its denial, e.g. stating the source or scope of use of the trade secrets, explaining whether they are its own trade secrets, etc. The new provision adds a duty of specific defense on the alleged infringer of trade secrets in civil cases. This is in order to assist the court in determining the correct decision, while also protecting the parties' rights in litigation proceedings.
It should be noted that during the Third Reading at the Legislative Assembly, the review panel had indicated that, given that cases involving infringement of trade secrets often have a major impact on the technological industry or competitive order, when making statutory provision for the legal effect of a party's inability to provide specific defense, consideration should also be given to correspondingly increase the rights holder's duty of explanation as a means of balancing their respective rights. Therefore when claiming infringement of its rights with respect to trade secrets, the rights holder is not only required to explain such infringement but should also give clear explanation of the facts of such infringement of its trade secrets.
3. Confirmation of the Intellectual Property Court's exclusive jurisdiction as the court of second instance in intellectual property cases:
At present, the Intellectual Property Court (the "IP Court") does not have exclusive jurisdiction as the court of first instance for intellectual property cases in civil proceedings; the parties can agree or determine that ordinary civil court is to be the court of first instance for intellectual property cases. However, after the court of first instance has given its ruling, regardless of the court that makes such a ruling—normal civil court or the IP Court—all appeals shall be required to be lodged with the second-instance tribunal of the IP Court. This is in order to improve the quality and effect of the judgment as the purpose for establishing the IP Court. Thus, the latest revision involves the addition of Article 19 which expressly provides that a party who wishes to appeal against the judgment at first instance of cases involving intellectual property disputes should do so with the IP Court. In this way, the IP Court's authority with regard to its judgment can be enhanced.