Taiwan to Amend Trade Secrets Act
published on 3 May 2017
The Trade Secret Act was first promulgated in 1996 and since then has been amended once in 2013. Throughout the years it has been found that several provisions have become rather unfitting to swiftly-changing economic development and social demands. Therefore, the Taiwan IP Office, in aide of the legal community and related authorities, proposed and announced a drafted Amendment to the Trade Secret Act (“Draft”). The focuses of the Draft are set forth as follows.
Trade Secrets Infringement Indictable Only upon Complaint
According to the Draft, any intended use of misappropriated trade secrets beyond the territory of Taiwan will only be prosecuted upon a complaint. Committing trade secrets misappropriation outside of this jurisdiction is an aggravated crime being publicly prosecuted under the current law. However, as the practice demonstrates, evidence collection and fact finding during investigation of a trade secret infringement case can be very difficult and time-consuming. It becomes even harder when the stolen secret is to be used overseas. If a victim is able to withdraw the complaint against offenders who cooperate with the investigation, it may also provide an incentive for some suspects to reveal the truth and thus facilitates and advances the course of the criminal investigation.
Unrecognized Foreign Entity to Have a Standing Filing a Complaint
Pursuant to a judicial interpretation, without being recognized by Taiwan’s Company Registry, a foreign entity organized and incorporated in accordance with pertinent laws of a foreign country is ineligible to bring a suit to a court. If the access to judicial remedies in cases of trade secret infringement is absent, it could discourage international trade and foreign investment. Therefore, in reference to relevant provisions in other intellectual property statutes, unrecognized foreign entities will hopefully have a standing before the court in respect of the matters regulated under the Trade Secrets Act.
Limited Accessibility of Secret-related Materials during Criminal Investigation
Secrecy Order is available upon request during the court proceedings and therefore file warppers are either denied or limited access to other party. However, it was rather ambiguous and not specified in the law about the accessibility to evidentiary materials during the phase of prosecutor’s criminal investigation. It is the plaintiff’s risk that more trade secrets would be disclosed if he or she attempts to prove the secrecy being misappropriated but the evidentiary materials are accessible to the opponents during prosecution stage. To reduce such a risk, when the contents of an investigation involves any trade secrets the public prosecutor may, upon request or discretion, order to deny or limit the accessibility to review, duplication, photographing of the evidentiary materials.
Reciprocal Treatment for Foreign Trade Secrets
Under the current law, reciprocal protection on a foreigner’s trade secret excludes cases where the foreigner’s country of origin does not have relevant bilateral treaty or agreement with Taiwan or refuses to grant trade secret protection to Taiwan nationals. But the law does not encompass circumstances other than bilateral treaties between countries or expressive denial by a foreign country. According to the draft, reciprocity rule is further clarified that protection will be excluded if the foreigner’s country of origin
- is not a signatory to a relevant international treaty that Taiwan also joins;
- does not enter into a relevant bilateral treaty or agreement with Taiwan;
- does not enter into a relevant bilateral agreement with Taiwanese organization/institute which later approved by Taiwanese authority; or
- de facto denies protection for Taiwan nationals.
Postscript
This is the first draft for the proposed amendment. The Office may, and is likely, to revise the draft after receiving public comment.
for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw |