Formosa Transnational - Taiwan
There is a growing wave of criticism and unfavourable opinions of the current IP case adjudication system, which could result in the overhaul of the Intellectual Property Case Adjudication Act. The act was introduced in 2008, in response to the need for relatively speedy trials in IP cases, and in addition to the Civil, Criminal, Administrative Procedure Codes
There have only been two minor amendments to the act in the 12 years since it came into force. The first was in 2011, which expressly stipulated that summary proceedings do not apply to administrative actions concerning intellectual property – this is the remit of an ordinary proceeding. The second was in 2014, which addressed the following issues and led to:
- an increase in the scope of duties of the technical examination officer;
- a clarification that the IP court must be the competent second-instance court for IP cases; and
- a strengthening in the protection of trade secrets through:
- enhancing the burden of preliminary showing of the plaintiff; and
- making it obligatory for the defendant to raise a specific defence as to the reasons for the denial against the plaintiff’s allegation.
In order to ensure the international competitiveness of enterprises, to resolve IP disputes in a more professional and efficient manner and to establish an IP litigation system in line with international trends, the Judicial Yuan held several consultation meetings and symposia in 2020 to collect different views from various sectors to conduct a comprehensive review of civil, criminal and administrative litigation procedures for IP cases.
The new amendments
On 31 March 2021 the Judicial Yuan convened the first committee for researching and amending the act, led by the former presiding Supreme Court judge. Representatives from various sectors, including judges, prosecutors, lawyers, patent attorneys, academics, TIPO staff and other related parties were invited. It is expected that by integrating opinions of experts from different fields, and referring to relevant foreign legal systems, a more sound and complete IP adjudication system can be properly established.
The main aspects of the act that the committee wish to amend include:
- the prohibition or limitation of obtaining litigation materials concerning trade secret cases;
- the necessity of introducing expert participation into the adjudication system;
- the priority jurisdiction with regard to labour incidents involving IP rights;
- restrictions to rehearing actions with regard to patent validity judgement discrepancies;
- the patent/trademark review process and litigation;
- the scope of new evidence;
- the legitimacy of granting the court the authority to determine whether to approve a request of amending a granted patent; and
- criminal liability for violating a confidentiality preservation order within or outside the territory.
It is evident that the government is keen to strengthen trade secret protection through procedural law.
The Economics Committee of the Legislative Yuan held a meeting on the same day as the committee meeting to discuss how to react to various Chinese actions in Taiwan’s industries and to examine the Trade Secret Act. The Mainland Affairs Council and National Security Council have expressed their concern about the necessity of amending the Act. The deputy ministers of the former stated that relevant laws will not only be amended for commercial practice and personal interest reasons, but also for national security. The minister of economic affairs believes that the current laws are sufficient, stating that the recruitment of enterprises may be affected if they are too strict.
Although there is as yet no specific bill with regard to the Intellectual Property Case Adjudication Act or Trade Secret Act, relevant committees and governmental department should have proposals in the near future.