[Taiwan] Highlights of Amendments to the Intellectual Property Cases Adjudication Act (Effected from 15th February 2023)

[ December 21, 2023 ] >Back

The most important issues in the amendment of the current intellectual property adjudication law are patent infringement and invalidity disputes, as well as the operation of trade secret litigation and secret maintenance orders; therefore, the impact on patent litigation and trade secret litigation is the most significant.

1. Reinforcing the protection of trade secret litigation

Background: The secret retention order system is designed to protect the trade secrets held by the parties or third parties, as well as to safeguard the right of debate of the parties and prevent the risk of leakage of the trade secrets due to the filing of the trade secrets in the court, and to encourage the holders of the trade secrets to file the information in the lawsuits, so as to assist the court to make the proper decisions.

Article 36  (requirements for issuing a secret maintenance order)
1. If a party or a third party explains that the following circumstances are met with respect to a trade secret held by the party or a third party, the court may, upon the party's or third party's request, issue an order to maintain the secrecy of the trade secret of the party, the client, the attorney, the counselor, the supporting person, or any other person related to the litigation; ...
3. If the court finds it necessary to issue a secret maintenance order, and if the party or a third party fails to make a request after being advised to do so in accordance with Paragraph 1, the court may, at the request of the other party or the party, and after hearing the opinion of the party or the third party, issue a secret maintenance order to the person who has not been subject to the secret maintenance order in accordance with Paragraph 1.

Article 56
1. In a criminal case involving trade secrets and its incidental civil litigation, where the contents of the files and exhibits involve the trade secrets of the parties or interested parties, and are used as a method of proving or explaining the facts of the crime or the facts of the damages, unless there are special circumstances,
the parties or interested parties may request the court to set up a de-identified surrogate name or a code before the first trial date; …

Article 72  (penalty)
1. Anyone who violates an order to maintain secrets under this Law shall be sentenced to imprisonment of not more than three years, detention, or a fine of not more than NT$1 million.
2. A person who commits the preceding offense and whose business secrets under the order are business secrets of core national key technologies referred to in Article 3 of the National Security Law shall be sentenced to imprisonment of not more than five years, detention, or a fine of not more than NT$3,000,000 (US$1,000,000) or both. (No trial without complaint)
3. If a person commits an offense in a foreign country, Mainland China, Hong Kong or Macao, the provisions of the preceding two paragraphs shall apply, regardless of whether the laws of the place where the offense was committed provide for penalties.

2. Expansion of mandatory legal representation

Background: Before the amendments, civil litigation involving patents, computer program copyrights, and trade secrets in the first instance and the second instance did not adopt the doctrine of mandatory lawyers. In principle, the parties can represent themselves without a lawyer before the court. However, litigation involving patents, computer program copyrights, and trade secrets is highly specialized and technical in nature. In order to facilitate the parties' efforts to expedite litigation and assist the court in discovering the truth, the mandatory legal representation system should be implemented, and the second subparagraph of the first paragraph is added.

Article 10

In civil litigation concerning intellectual property issues, the parties shall appoint a lawyer as a litigation representative under one of the following circumstances. (Principle) 
However, the parties or their legal representatives who are qualified as judges, prosecutors or lawyers are not subject to this limitation (Exceptional):
(1) The amount or value of the subject matter of the civil litigation in the first trial exceeds the amount that can be appealed to the third trial as stipulated in Article 466 of the Civil Procedure Law.
(2) The civil litigation involving patents, computer program copyrights, and trade secrets in the first instance.
(3) Civil litigation in the second instance.
(4) Claims or protests for preservation of evidence, preservation procedures, and other matters arising from the litigation in the preceding three paragraphs.
(5) Appealing to the matters in the preceding four paragraphs.
(6) Events in the third trial court.
(7) Any other matters that the Judicial Yuan determines that a lawyer should be appointed as a litigation representative.

Article 16

1. If the parties involved in the litigation involving patent rights under Article 10, paragraph 1, subparagraphs 2 to 7, are permitted by the presiding judge, they may jointly appoint a patent attorney and a lawyer as a representative of the litigation.
2. The trial judge may revoke the permission in the preceding paragraph at any time by a ruling, which shall be served on the person appointed for the litigation.
3. In the first case, the patent attorney and the attorney shall jointly appear in the court for litigation behavior. However, with the permission of the presiding judge, this limitation shall not apply.
4. The litigation behavior of the patent attorney and the litigation behavior of the attorney are not valid.
5. The honorarium of the patent attorney shall not be included in the litigation or procedural costs.


3. Expanding Expert/Surveyor Participation in Litigation

Background: In practice, patent infringement cases involving highly technical and specialized patents, such as computer software invention patents and semiconductor invention patents, may involve large-scale installations and complex processes in the plants of the alleged infringer or third parties, which make it difficult for the patentee to access the relevant evidence and obtain it on the market, thus making it highly difficult to prove infringement.

Article 19

1. In the event of patent infringement, the court may, in order to determine the truth or falsity of the facts to be proved, select a surveyor at the request of the party concerned to examine the documents or installations held or managed by another party or a third party. However, this shall not be limited to those cases where the time and expenses required for the verification or the burden of the person to be verified are clearly disproportionate.
4. Before the court makes the first ruling, it shall give the parties or third parties an opportunity to present their opinions.

Article 27
The provisions of Article 19 to the preceding Article shall apply in the case of infringement of copyrights of computer programs and trade secrets.

4. Dispute Resolution One-Time

Background: When a patentee wishes to correct the scope of the patent application to exclude invalid reasons in order to maintain the validity of the patent in dispute, if he/she is unable to apply for correction to the patent office due to reasons not attributable to himself/herself, and if it is unfair not to allow the correction, he/she should exceptionally be exempted from the procedure of applying for correction of the scope of the patent application to the patent office, and he/she may directly state to the court the scope of the patent application he/she wishes to correct as his/her request or claim, so as to ensure the right of defense of the patentee in lawsuit, and help the court to swiftly and correctly resolve the civil patent disputes between the parties. 
For example, in the case of another invention, the patent administrative agency made a determination that the patent invention was established, and before the controversial litigation judgment revoked the determination, the administrative sanction of the determination still had substantive survival, and the patent administrative agency had no way to accept the patentee's application for correction.

Article 43

1. If a party claims or defends that a patent should be revoked in accordance with Article 41(1), and the patentee has applied to the patent office for correction of the scope of the patent right, the patentee shall state in the court that the corrected scope of the patent right is the claim or assertion.
2. In the former case, if the patentee is not allowed to apply to the patent office for correction due to reasons not attributable to the patentee and if it is unfair not to allow the correction, the patentee may directly state to the court the scope of the patent right to be corrected and use it as the request or claim.
3. In the first two cases, the patentee shall record the facts and reasons for correcting the scope of the patent right in a written statement and notify other parties.
4. In the first and second cases, the court may make its own judgment on the legality of the correction of the scope of the patent right and express its legal opinion and appropriately disclose the evidence before making a judgment.
5. Except for the provisions of the second paragraph, if the patentee has not applied for correction or withdrawn the application for correction to the patent office, he/she shall not make any claim or assertion based on the corrected scope of the patent right.
6. If the court determines that it is lawful to correct the scope of the patent right in accordance with the fourth paragraph, the court shall adjudicate the case in accordance with the corrected scope of the patent right.

Article 44
1. In order to determine whether the claims or defenses of the parties pursuant to Article 41(1) are justified, or the legality of the correction of the scope of the patent right as described in Article 4 of the preceding Article, the court may, if necessary, seek the opinion of the Intellectual Property Specialized Authority on the relevant laws and regulations, or other necessary matters.
2. In response to the consultation on the matters above, or if the specialized agency for intellectual property recognizes the necessity to state its opinion and the court deems it appropriate, the specialized agency for intellectual property may state its opinion to the court in writing or designate a person to state its opinion to the court.
3. The court shall give the parties an opportunity to debate the opinions expressed by the specialized intellectual property authority in accordance with the preceding provisions before adopting them as the basis for a decision.

Article 45
1. Where an intellectual property right is subject to exclusive authorization, the right holder, the owner of a trade secret, or one of the exclusive licensees shall, in a civil action against a third party in respect of such exclusive authorization, notify the other party of the events and the extent of the litigation a substantial period of time prior to the termination of the verbal argument. The party to whom notice of the litigation has been given may deliver such notice.
2. The notice of the action shall be filed with the court by means of a pleading stating the reasons and the extent of the action, and shall be served by the court on the other party and on the other party.
3. If the person to whom notice has been given fails to participate or participates after the expiration of time, he shall be deemed to have participated in the proceedings at the time when he is entitled to do so.

Article 49
1. When the points of the following paragraphs are determined, the parties shall not file a reexamination against the final decision of infringement of patent right, trademark right, or variety right in accordance with the provisions of Article 496, Paragraph 1, Clause 11 of the Code of Civil Procedure:
(1) The disposition of a patent invention, the assessment or revocation of a trademark right, or the revocation or abrogation of a copyright in a variety of products.
(2) Extension of the invention patent period for the establishment of the trial.
(3) Approval of correction of the patent specification, the scope of a patent application or patent design.

2. In the preceding cases, the party against whom the false seizure, false penalty or provisional status is imposed shall not claim compensation from the claimant for the damage caused by the false seizure, false penalty or provisional status.
Background: Under the existing dual-track system in which both the judiciary and the executive authorities have the authority to make judgments, the court can make substantive judgments on these issues in civil litigation, but the court's judgment on the validity of the right and the scope of the patent is only effected on the litigation case.
When the court's judgment on the validity of a patent, trademark, or variety right, or the legality of denying the correction of the scope of a patent right, differs from the judgment of the intellectual property authority on patent invalidation, correction of the scope of the patent, trademark invalidation, or trademark revocation, the administrative disciplinary action based on the original infringement judgment has been changed, and there is a reason for a reexamination.

Article 52
1. When making a claim for provisional disposition, the claimant shall explain the facts necessary for the legal relationship in dispute, for the prevention of substantial damage, for the avoidance of imminent danger, or for other similar circumstances; if the explanation is insufficient, the court shall reject the claim.
2. Although the reasons for the claim have been explained, the court may order the claimant to provide a guarantee and then impose a sanction of temporary status.

3. The court shall give the parties a chance to express their opinions before making the provisional disposition. However, if the claimant claims that there are special circumstances that cannot be notified to the other party before the disposition and provides concrete evidence that the court deems appropriate, or if the court finds that the claimant's claim is manifestly unfounded, the claimant shall be exempted from this limitation.
4. If the claimant fails to prove to the court that he/she has filed a lawsuit within 14 days from the date of service of the temporary suspension, the court may revoke the sanction upon claim or in accordance with the court's authority.
5. The ruling on revocation of the punishment mentioned in the preceding paragraph shall take effect when it is announced.
6. If the ruling on the disposition of temporary status is revoked due to the ab initio misdemeanor, the fourth circumstance, the claimant's claim, or if the claimant is determined to be unsuccessful in the case,
the claimant shall compensate the damages suffered by the other party due to the disposition.


5. Facilitating adjudication effectiveness

Article 6
The Court may, when necessary, order the Technical Examiner to perform the following duties:
1. (1) To explain or question the parties on matters of fact and law on the basis of specialized knowledge in order to make the relationship between the parties clear.
(2) Direct examination of witnesses, expert witnesses or experts.
(3) To make a statement of opinion to the judge on the case.
(4) Assisting in the investigation of evidence when evidence is being preserved.
(5) Assisting in preservation or enforcement proceedings.
(6)To assist the surveyor in the conduct of the investigation.

2. The Court may order the Technical Examiner to prepare a report on the results of his/her duties. However, when necessary due to the complexity of the case, the court may order the preparation of an intermediate report and a final report respectively.

Background: There is no restriction on the manner in which the technical examiner may provide technical opinions, either orally or in writing, in the performance of his or her duties. However, in practice, after the judge discusses the technical issues related to the case with the technical examiner, the technical examiner provides technical opinions as directed by the judge to state in the written reports in most cases; therefore, the second paragraph is added.
3. The court may disclose all or part of the contents of the report prepared by the technical examiner when it deems necessary.

Background: The technical examiner is similar to a judge's assistant in the litigation procedure, not an appraiser of the outsider expert, and cannot replace the function of an appraiser. The report produced by the technical examiner is only for the judge's reference to be an internal opinion of a consultative nature rather than an appraisal, nor the status of evidence, so there is no need to disclose its contents to the parties for debate. However, when the court considers the circumstances of the case and deems it necessary, it may disclose all or part of the contents of the report in order to provide the parties with a timely opportunity to present their opinions, and therefore a third paragraph is added.
4. The court shall give the parties an opportunity to debate the special expertise provided by the technical examiner before adopting it as the basis for a decision.

Background: If the court wishes to make a decision by adopting the special professional knowledge provided by the technical examiner, in order to protect the parties' right to hear the request for trial and to avoid surprise decisions, the court should give the parties a chance to debate and make the litigation procedure transparent and open, so as to fully protect the parties' substantive and procedural interests; therefore, the fourth paragraph is added.

Article 30
When the court adjudicates civil litigation arising from patent rights,
it is appropriate for the court to define the scope of the patent right in accordance with the request or its duty and appropriately disclose the evidence when there is a dispute on the interpretation of the scope of the patent application.

Article 35
1. In the event of an infringement of patent rights, copyrights of computer programs, or trade secrets, if the plaintiff has explained the fact that his/her claimed rights or interests have been infringed upon or are in danger of being infringed upon, and
the defendant denies his/her claim, the court shall periodically order the defendant to make a specific defense regarding the facts and evidence of his/her denial.
2. If the defendant fails to defend himself or his defense is not specific without a proper reason, the court may, at its discretion, recognize the truth of the facts as explained by the defendant.
3. The court shall give the parties an opportunity to debate the above-mentioned cases before adopting them as the basis for its decision.