March 2023
Jane Tsai and Tina Lee
The largest scale amendments to the Intellectual Property Case Adjudication Act (hereinafter, the “Act”) since its enactment in 2007 cleared through three readings at the Legislative Yuan on January 12, 2023 and were promulgated by the Presidential Decree of February 15, 2023.[1] The effective date of the Act, which consists of 77 articles in total, will be set by the Judicial Yuan, which has already announced[2] that the Act will go into effect on August 30, 2023.
The draft amendments proposed by the Judicial Yuan in consultation with the Executive Yuan were basically adopted in their entirety in the version adopted by three readings at the Legislative Yuan and promulgated by the President (for an introduction of the gist of the Executive Yuan’s version of the draft amendments, please refer to the new knowledge article titled Taiwan Executive Yuan Approves the Draft Amendments to the “Intellectual Property Case Adjudication Act” of Lee, Tsai & Partners) and only contain the following major differences:
I. The “adversarial system” for patent or trademark reexamination cases and the dispute handling procedure is not included.
The draft amendments of the Executive Yuan version originally intended to change the relief procedure of patent and trademark cases from the existing administrative litigation procedure to the “adversarial system” of civil litigation procedure (Articles 55 to 58 of Chapter 3 of the draft amendments of the Executive Yuan version). It is understood that the relevant draft amendments to the Patent Act and the Trademark Act, which may be linked, are still under consideration by the Executive Yuan and have not been sent to the Legislative Yuan for deliberation at the same time. Therefore, these draft amendments have not yet included the “adversarial system” of patent or trademark reexamination cases and dispute handling procedures.
As previously indicated, to enhance the effectiveness of trial and reduce litigation involving cycles of disputes over the validity of rights, Article 56 of the draft amendments of the Executive Yuan version originally intended to limit in administrative litigation procedures for disputes over the revocation of patent rights or the revocation or cancellation of trademark rights the presentation of new evidence not submitted in the examination procedure, which was limited to the following circumstances: (1) the new evidence was not presented due to the violation of laws and regulations by the competent intellectual property authority, (2) the evidence submitted in the invalidation procedure was changed into a single piece of evidence or a combination of evidence; or (3) the opposing party agrees to or does not object to the presentation of such evidence to proceed with the debates in this case. However, since the above adversarial system was not adopted, this article was also not included.
II. The “amicus curiae” system was not adopted.
Article 29 of the draft amendments of the Executive Yuan originally intended to introduce the “amicus curiae” system. However, since some lawmakers raised the following concerns in the course of legal revision, the “amicus curiae” system was not included in these amendments:
1. The “amicus curiae” system is a system in which the court, upon the request of the parties, solicits opinions or information from unspecified third parties on the court’s website regarding the necessary issues, and the written opinions or information may be used as the basis of a decision after an oral argument between the parties is conducted. However, this is in conflict with the principle of party autonomy and the adversarial principle, under which “facts not asserted by the parties shall not be adopted by the court as the basis of the decision,” in civil intellectual property cases.
2. The “amicus curiae” system is currently only regulated under the constitutional litigation system and has not been widely applied yet, and the relevant system design and supporting measures still need to be improved.
3. The “amicus curiae” system allows opinions and information from unspecified third parties to be used as the basis of the decision, but there are risks to the rights and interests of the parties to the litigation if this system is implemented without reviewing the quality and sources of information and in the absence of preventive measures against potential problems.
III. The scope of the exclusive jurisdiction of criminal intellectual property cases is expanded.
Article 59 of the draft amendments of the Executive Yuan version previously stipulated that “cases involving a potential violation of Article 13-1, Article 13-2, Article 13-3, Paragraph 3, and Article 13-4 of the Trade Secrets Act” and “cases involving a potential violation of Article 8, Paragraphs 1-3 of the National Security Act (cases involving misappropriation of trade secrets that are key core technologies of the nation)” shall be tried exclusively by the Intellectual Property Court as the court of first instance. To avoid controversies, the version adopted this time has taken into account Article 18, Paragraph 3 of the National Security Act, and clearly stipulates that for other criminal cases related to the above cases that pertain to the same offense in the decisions or are linked or connected under Article 7, Paragraph 1 of the Code of Criminal Procedure and fall under the jurisdiction of district courts as the courts of first instance, if they are prosecuted or jointly prosecuted by the prosecutor, they should also fall under the jurisdiction of the Intellectual Property Court as the court of first instance (Article 54, Paragraph 3 of the Act).
[1] The Hua-Zhong-One-Yi-11200010201 Presidential Directive of February 15, 2023
[2] The Yuan-Tai-Ting-Hang-Three-11200031521 Directive of February 22, 2023 from the Judicial Yuan
The contents of all materials (Content) available on the website belong to and remain with Lee, Tsai & Partners. All rights are reserved by Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors’ opinions do not represent the position of Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Lee, Tsai & Partners.