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How to Balance Protection of Secrets in a Dossier with Safeguarding of the Right to Defense
The right to apply to inspect, transcribe, photograph or otherwise reproduce dossiers constitutes a fundamental right of a party to litigation. However, Paragraph 3 of Article 242 of the Code of Civil Procedure provides that, where the documents in a dossier that a party requests permission to review or reproduce involve the private information or the business secret of the other party to litigation or a third party, and where the granting of such permission may result in significant harm, the court may, upon application or ex officio, render a ruling to deny or restrict the requesting party’s right to inspect, transcribe, photograph, or otherwise reproduce such dossier ("Restriction of Inspection"). In addition, Paragraph 1 of Article 32 of the Intellectual Property Case Adjudication Act stipulates that, where the documents in a dossier involve trade secrets, the court may, without prejudicing the parties' right to present arguments, render a ruling to restrict the inspection of such documents upon the application of the other party to litigation or a third person. Supreme Court Civil Ruling Ref. 113-Tai-Kang-Zi-908, dated May 12, 2025, addressed the issue of how to balance the protection of business secrets or trade secrets in a dossier ("Secret Dossier") with the safeguarding of the right to defense.
In the abovementioned case, Company A asserted that Company B’s act of sending a patent infringement warning letter to Company A constituted an abuse of rights due to Company B’s failure to fulfill its duty of care, and filed a lawsuit seeking damages from Company B. In response, Company B argued that, prior to sending the warning letter, it had dismantled and analyzed the allegedly infringing product and submitted it for third-party examination, and the issuance of the warning letter was a legitimate exercise of its rights. Company B submitted the examination report as evidence in the second instance of the case. Furthermore, Company B asserted that the examination report constituted its own trade secrets and business secrets, and petitioned the second-instance court to issue a ruling of Restriction of Inspection against Company A’s litigation representatives, permitting only the inspection of the examination report but prohibiting copying, photographing, or reproducing the report by any other means. The second-instance court granted such petition by ruling (the "Original Ruling"), and Company A’s litigation representatives filed an interlocutory appeal to the Supreme Court.
Subsequently, Supreme Court Civil Ruling Ref. 113-Tai-Kang-Zi-908 held as follows: The examination report concerns whether the chip products manufactured by Company A infringe the patent rights of Company B’s U.S. patent. Since the technical content of Company B’s U.S. patent has already been disclosed, it is questionable whether the examination report constitutes Company B’s trade secrets or business secrets. In addition, Company A contends that the examination report is important evidence regarding whether Company B's issuance of the warning letter constituted an abuse of rights, and the examination report appears to be relevant to the outcome of the present litigation. Since the examination report involves specialized knowledge and has a large amount of content, it would be difficult to fully comprehend and memorize such content merely by visual inspection. Preventing Company A’s litigation representatives from transcribing, photographing, or otherwise reproducing the examination report would impede Company A’s right to defense. Therefore, the Original Ruling is set aside regarding the prohibition of the transcription, photographing, or other reproduction of the examination report, and the second-instance court is ordered to render a new ruling.
In addition to the aforementioned civil ruling, other civil rulings (such as Supreme Court Civil Ruling Ref. 99-Tai-Kang-Zi-133, and Intellectual Property and Commercial Court Civil Rulings Ref. 113-Min-Yin-Kang-Zi-6 and Ref. 113-Min-Sen-Zi-7, 8, 9) have all held that, where a Secret Dossier is relevant to the outcome of the litigation and it is impossible to fully understand and memorize the contents of such dossier merely by visual inspection, the Restriction of Inspection would impede the parties’ right to present arguments. Furthermore, Supreme Court Civil Ruling Ref. 107-Tai-Kang-Zi-372 elaborated that "the Restriction of Inspection constitutes an exception to the principle of equality in litigation; the court may issue such a ruling only within a scope that does not prejudice the parties’ right to present arguments."
In such regard, if the right owner of a Secret Dossier aims to protect such secrets in intellectual property cases, it is advisable for such owner to consider applying for a confidentiality preservation order, thereby restricting the disclosure of the trade secrets to only those subject to the confidentiality preservation order and prohibiting the use by or disclosure to others. It is also advisable to conduct data-masking of extremely confidential documents (within a scope that does not prejudice the parties’ right to present arguments) before the submission of such documents to the court. If a confidentiality preservation order cannot be obtained, or if the Restriction of Inspection is still necessary even after the issuance of such an order, the right owner may suggest appropriate methods for reviewing the documents to the court to balance the protection of Secret Dossiers with the safeguarding of the right to defense. For example, where the other party is prohibited from copying a Secret Dossier, their litigation representatives may be permitted to transcribe or take notes, and the notes can be kept by the representatives only after confirmation by the court and the right owner.