TIPS® Taiwan Intellectual Property Special
Taiwan Updates
Intellectual Property Court Organic Act
Following the passing of the “Intellectual Property Case Proceeding Act” (the “Proceeding Act”) in January this year, Taiwan’s Legislative Yuan has passed the “Intellectual Property Court Organic Act” (the “Organic Act”) on March 5, 2007. Prior to the passing of the Organic Act, judges selected from the Taiwan High Court, Taipei High Administrative Court, and District Courts across Taiwan, have been recruited and trained under a special IP Court Judge Training Course. The following paragraphs explain some of the new measures introduced in the Organic Act.
Article 2 of the Organic Act prescribes that the Intellectual Property Court will have exclusive jurisdiction over civil, criminal, and administrative lawsuits related to intellectual property rights. The Judicial Yuan will, in accordance to the law, establish a professional court and prosecution office to handle the cases. Article 3 of the Act prescribes that intellectual property rights related to Patent Law, Trademark Law, Copyright Law, the Regulation of Optical Media Management Statute, Trade Secret Law, Integrated Circuit Protection Law, the Plant Variety and Seed Act, and the Fair Trade Law, are under the governance of the Intellectual Property Court. This provides a centralized jurisdiction for future IP litigation. Moreover, the Organic Act also prescribes that civil proceedings involving intellectual property disputes are under the jurisdiction of the Intellectual Property Court. More specifically, the first and the second incidents of civil litigation and the first incident of administrative litigation are under the jurisdiction of the Intellectual Property Court. With respect to criminal proceedings, the first incident of a criminal lawsuit is not under the jurisdiction of the Intellectual Property Court; only the second incident is. The table below summarizes the level of court proceedings and the jurisdictional courts for intellectual-property-related civil, criminal and administrative lawsuits
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Type
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First Incident
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Second Incident
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Third Incident
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Civil
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IP Court
（Sole-Judge）
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IP Court
（Joint Collegiate）
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Supreme Court
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Criminal
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District Courts
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IP Court
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Supreme Court
|
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Administrative
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IP Court
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Supreme Admin. Court
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In response to the establishment of the Intellectual Property Court, the Taiwan Intellectual Property Office (TIPO) will not only assist the Judicial Yuan in the preparation of the Intellectual Property Court, but also work on an improvement of the current patent and trademark administrative appeal system, by consulting related international patent and trademark administrative appeal systems. The aim is to simplify and combine the levels of appeals, and ameliorates the three-parties litigation so that a joint collegiate examination will be available in the future. In other words, the way to simplify the level of appeals is to combine and reduce the current “four levels-four examinations system” into a “three levels-three examinations system” when handling patent and trademark administrative appeal cases. In the future, the examination will be conducted by a joint collegiate panel formed by three senior examiners within the TIPO at the first level; at the second level, the Intellectual Property Court will be responsible for the fact-finding and application of law; at the third level, the Supreme Court will review the application of law only. Additionally, to mitigate complaints about the court’s lack of technical knowledge in IP disputes, professionals with related technical backgrounds, will be assigned to assist the judges in IP litigation.
In current practice, the TIPO is the defendant in IP Administrative litigation. However, the TIPO’s position is rather unreasonable and confusing, because the TIPO is actually the IP competent authority, not a party of interests in litigation. With the TIPO being the defendant, the actual parties of interests will not be able to confront each other directly, which may prolong the litigation process and result in inefficiency. Therefore, the framework of the proceedings will be concentrating on the two parties concerned (i.e. the actual defendant and the plaintiff), so that they can begin administrative proceedings in hope to effectively settle.
Lastly, cases related to trademark, patent reexamination, and IP administrative litigation will be examined by a joint collegiate panel in the future. The examination will be even more discreet and prudent so as to provide better protection to the patentees, and also to avoid doubts and concerns that the simplification of the levels of appeals may cause defect and insufficiency in procedural protection. To ensure the efficiency and concentration of the examination, oral examination will be adopted so that the arguments can be clearly identified through debates, which can reduce the time needed to coordinate and clarify the evidence in the later examination procedures.
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