TIPS^®  Taiwan Intellectual Property Special

Taiwan Updates 

The year of 2007 has been exciting for IP professionals in Taiwan so far, as in the course of merely six months, the Legislative Yuan (Taiwan’s Congress) has passed three important laws and regulations related to the protection and enforcement of intellectual property rights. The three long-waited laws include Intellectual Property Case Proceeding Act (the “Proceeding Act”), Intellectual Property Court Organic Act (the “Organic Act”), and Patent Attorney Act. This special update will provide a brief summary of the three acts, which marks a new milestone in Taiwan IP system.
Intellectual Property Case Proceeding Act.

The procurement of intellectual property rights is governed by laws such as the Patent Law and the Trademark Law in Taiwan. Although both laws contain provisions related to intellectual property litigations, they are insufficient and imprecise in actual practice. Due to the time-sensitive nature of intellectual property rights, an IP-related litigation should be processed expeditiously, so as to maximize the rights of the patentees and trademark holders. The introduction of the Intellectual Property Case Proceeding Act, aims to accelerate IP litigations by solving problems such as difficulty in burden of proof, means for collecting evidence, and lack of technical background of the judges, etc.

The Proceeding Act comprises 5 chapters and 39 articles, with new measures to improve court efficiency, solve technical barriers, protect trade secrets and evidence, and enhance judicial professionalism, etc. The key measures in the Proceeding Act are as follows:

1. stipulating the scope of civil, criminal and administrative litigations related to intellectual property;

2. defining the jurisdictions for prosecution, appeal from judgment, and appeal from ruling, of civil, criminal and administrative litigations related to intellectual property;

3. using long-distant video conference between the party-concerned or associated-party of an IP case and the court during the trial is allowed, provided that audio and video transmission devices are available;

4. the court may, if deemed necessary, appoint a technical examiner to assist with the technical part of an IP case. The disqualification of involvement of a technical examiner is also regulated;

5. excluding the applicability of summary litigation procedures and small-claim litigation procedures of Civil Procedures;

6. allowing the party-concerned to defend his/its position, before making the basis of judgment, despite the court’s professional knowledge involved in a case;

7. giving explicit direction to the issues and disclosing the evaluation when appropriate by the court in an IP civil and administrative proceeding ;

8. allowing a private trial and restricting copying or recording of litigation documents and materials in an IP case proceeding involving trade serest;

9. imposing fines and issuing compulsory order toward the holder of documents or objects of inspection, if the said holder fails to obey the court’s order to provide evidence during an IP civil and administrative proceeding;

10. making a confidentiality protection order available of confidentiality and imposing criminal sanctions upon a violator ;

11. allowing the court to decide the validity or invalidity of IP rights in an IP civil and criminal proceeding, instead of going through the lengthy administrative procedures; and excluding the provisions of other legislation that allow for the stay of the trial;

12. allowing the court to request the involvement of the Intellectual Property Authority in an IP civil proceeding,, when it is necessary for determining the reasons for the revocation or cancellation of an intellectual property right; and allowing the TIPO to participate the proceeding to assist either the defendant or plaintiff, and make statements;

13. in the evidence preservation proceeding in an IP civil and administrative proceeding, where a party refuses to cooperate without legitimate grounds, allowing the courtovercome such refusal by force when necessary; provided that such force shall not exceed the degree that is necessary ;

14. requesting the party-concerned to clarify and explain the cause and reason, with sufficient supporting evidence, whenapplying for a preliminary injunction in an IP civil and administrative proceeding; rejecting the application if the applicant cannot convince the court the necessity of a preliminary injunction; and revoking the injunction, if the party-concerned fails to initiate a proceeding within 30 days;

15. apart from during the third instance, allowing to try a criminal intellectual property proceeding with incidental civil proceedings separately but concurrently; and when necessary, making a decision for the incidental civil proceeding within 60 days after the decision of the criminal proceeding is rendered, if the incidental civil proceeding is initiated during summary litigation procedures;

16. applying the provisions in the Taiwan Code of Civil Procedures concerning an appeal from a judgment or an appeal from a ruling taken to the third instance from decisions made in the second instance under summary procedures, mutatis mutandis to an appeal from a judgment or an appeal from a ruling taken to the third instance from decisions made in the second instance under the incidental civil proceeding of criminal summary proceeding;

17. in an administrative proceeding concerning the revocation or cancellation of a patent right or trademark registration, taking into consideration the new evidence on the same ground of revocation or cancellation before the end of the oral argument.