A Substantial Amendment to
IP Case Adjudication Act is put on the Agenda

The IP Case Adjudication Act will undergo the largest-scale revision seen since its enactment more than a decade ago.[1] The IP Case Adjudication Act covers the procedural rules in the trials of intellectual property cases—encompassing patents, trademarks, copyright, plant varieties, trade secrets, and others. It serves to provide exceptions to the laws applicable to civil, criminal and administrative actions. For matters not provided for under the IP Case Adjudication Act, the Code of Civil Procedure, the Code of Criminal Procedure and the Administrative Litigation Act shall apply. It is a fundamental source of law to offer Technical Examination Officers in aid of the judges and the instrument of secrecy protective orders to protect information confidentiality in the stage of litigations.

The prospective amendment places particular emphasis on the increased protection of trade secrets, including criminal cases involving trade secret misappropriation amounting to a breach of national security. For civil cases, the amendment introduces institutions for centralized adjudication and increased participation of experts to facilitate the courts in handling cases involving newly emerging technologies. The essential aspects of the prospective amendment—albeit subject to change—are as follows.

1.      The Intellectual Property and Commercial Court (IPCC) shall be vested with jurisdiction over trials of crimes of theft of trade secrets, committed in Taiwan and in foreign jurisdictions.

It is noteworthy that under the current law, first instance criminal cases—including those involving trade secret crimes—are adjudicated by district courts where prosecutors are equipped.

2.      Parallel to the February 2022 draft amendment to the National Security Act, the IPCC shall have jurisdiction over criminal offenses involving the infringement of significant trade secrets relating to national core technologies.

3.      It was proposed to introduce the right to access to dossier information and to remove the use of code names and code signs as de-identification measures for documents in cases involving trade secrets.

4.      Activities in breach of a secrecy protective order shall be subject to heavier penalties, and the crime of breaching a secrecy order beyond the border shall be codified in order to improve the protective mechanism for the trials of criminal cases involving trade secrets.

5.      For civil matters of IP, new measures—such as mandatory representation by a lawyer, formulation of a trial schedule, and expert witnesses—are proposed.

6.      An “inspection” system shall be added as a means of evidence investigation. The court, by request, may select a neutral technical specialist who would be permitted to enter a defendant’s premises to collect evidential material during a pending litigation, in reference to the Japanese Patent Law.

7.      An "amicus curiae" system shall be introduced, whereby the written opinions of individuals, societies or organizations other than the litigating parties may be recorded on the court’s website.

8.      The "Patent or Trademark Review and Dispute Procedures" shall be instituted to conform to the current draft amendments to the Patent Act and the Trademark Act. An “adversary” system shall bring about the transitioning of remedial appeals for patent and trademark cases from administrative litigation procedures to civil litigation procedures.

9.      In order to promote the development of e-justice, the scope of utilization of technological equipment in litigation shall be extended, and the original copy of a judgment can be served electronically.

10.  The amendment shall introduce the following measures: the establishment of an information exchange mechanism between the proceedings of administrative reviews and judicial trials, the requirement of a duty of notification by an exclusive licensee to the patentee, the imposing of restrictions on the filing for a retrial due to inconsistency in judgments of patentability, as well as a revision of the rules regarding the defensive post-grant amendment of claims during an infringement trial. These measures are intended to avoid discrepancies in adjudication, resolve disputes arising in the course of trial procedures, and ultimately improve adjudication efficiency.

As of this date, the Judicial Yuan (the highest body in the judicial branch) has not yet released the proposed draft amendment to the public on its website. More information and comments shall be provided at a later stage.

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