▍1. Introduction to Intellectual Property Cases

So-called “intellectual property rights” refers to assets of value produced as a result of activities of the human intellect and the rights pertaining to them as established under the statutes. There are many types of intellectual property rights, the main ones being set out in statutes, such as the Patent Act, Trademark Act, Regulations Governing the Protection of Integrated Circuits Configuration, and the Species of Plants and Seedling Act. The previously mentioned acts only protect rights which have been registered. Some protected rights occur naturally upon specific behavior covered in statutes such as the Copyright Act or Trade Secret Act. Other protected rights and prohibitions on unfair competition are provided by provisions set forth in the Fair Trade Act.

In order to resolve intellectual property disputes quickly and effectively, the Taiwan (R.O.C.) announced the Intellectual Property Case Adjudication Act on March 28, 2007, to be implemented on July 1, 2008. This Act provides provisions different from traditional provisions of the Codes of Civil, Criminal and Administrative Procedure, in response to the needs of intellectual property cases. The Act adds a system of confidentiality preservation orders for safeguarding business trade secrets, allows Technical Examination Officers to participate in the litigation, requires civil and criminal courts to make independent decisions regarding the assertions and defenses of the validity of intellectual property rights, permits new evidence to be admitted into intellectual property administrative litigation, and enumerates the requirements of the injunction to maintain the temporary status quo.

The Intellectual Property Court(now“ the Intellectual Property and Commercial Court”) was established on July 1, 2008. According to Article 3 of the Intellectual Property and Commercial Court Organization Act, the Intellectual Property and Commercial Court shall govern matters over first instance and second instance civil actions, second instance criminal actions, first instance administrative actions, and compulsory enforcement for the protection of intellectual property rights and interests arising under the Patent Act, Trademark Act, Copyright Act, Optical Disk Act, Trade Secret Act, Regulations Governing the Protection of Integrated Circuits Configuration, Species of Plants and Seedling Act, or Fair Trade Act as well as other cases stipulated by the law that are governed by the Intellectual Property and Commercial Court as prescribed by law or by the Judicial Yuan.

Following the establishment of the Intellectual Property and Commercial Court, civil, criminal, and administrative litigation are joined into a single court process to mitigate delays caused by separate civil, criminal, and administrative litigation systems. The introduction of associated Technical Examination Officers assists judges in accurately discerning technical issues and thus enhancing the judicial quality and effectiveness of intellectual property cases in the Taiwan (R.O.C.).

▍2. Jurisdiction of the Intellectual Property and Commercial Court

The Intellectual Property and Commercial Court is a “three-in-one” court, comprising civil, criminal, and administrative litigation. Cases heard relate to matters of intellectual property:

• Civil cases: First instance and second instance actions
• Second instance criminal actions
• First instance administrative actions

 According to Article 3 of the Intellectual Property and Commercial Court Organization Act, the Intellectual Property and Commercial Court has jurisdiction over the following:

• Civil cases: First instance and second instance civil actions for the protection of intellectual property rights and interests arising under the Patent Act, Trademark Act, Copyright Act, Optical Disk Act, Trade Secret Act, Regulations Governing the Protection of Integrated Circuits Configuration, Species of Plants and Seedling Act, or Fair Trade Act.

• Criminal cases: Offenses under Articles 253 to 255, 317, and 318 of the Criminal Code, or violation of the Trademark Act, Copyright Act, Trade Secret Act, offenses under Article 35 (1) and Article 36 (1) of Intellectual Property Case Adjudication Act, and appeals against the decisions on criminal actions rendered by district courts in the first instance in an ordinary, summary, or plea bargain proceeding. However, criminal cases involving juveniles shall be excluded.

• Administrative cases: First instance administrative actions and compulsory enforcement arising for the protection of intellectual property rights and interests under the Patent Act, Trademark Act, Copyright Act, Optical Disk Act, Regulations Governing the Protection of Integrated Circuits Configuration, Species of Plants and Seedling Act, or the Fair Trade Act.

• Other cases prescribed by law or determined by the Judicial Yuan to be governed by the Intellectual Property and Commercial Court.

It is worth noting that the Intellectual Property and Commercial Court has non-exclusive jurisdiction over intellectual property civil and administrative litigation. (Refer to paragraph 1 and 3 of Article 3 of the Intellectual Property and Commercial Court Organization Act, and Article 9 of the Intellectual Property Case Adjudication Rules.) Therefore, if parties mistakenly file civil and administrative action regarding intellectual property in ordinary courts, and the ordinary civil and administrative courts fail to discover the mistake but render decisions on the merits, without transferring the case to the Intellectual Property and Commercial Court by rulings based on error jurisdiction, these decisions are not in contravention of the laws; superior courts cannot reverse these decisions.

▍3. Intellectual Property Case Examination Process

When civil cases are accepted by the Intellectual Property and Commercial Court, the trial for the first instance action is conducted by a single judge, and the trial for the second instance action is conducted by a collegial panel comprising three judges. Any appeal against a judgment or a ruling rendered by the second instance court may be lodged with the Supreme Court, unless otherwise provided by law.

In a first instance intellectual property criminal action, jurisdiction is still within the district court. Second instance action jurisdiction shall then be changed to that of the Intellectual Property and Commercial Court. Third instance actions shall still be under the jurisdiction of the Supreme Court.

First instance administrative actions related to intellectual property are under the jurisdiction of the Intellectual Property and Commercial Court. An appeal against a judgement or a ruling by the Intellectual Property and Commercial Court may be filed with the Supreme Administrative Court.

▍4. Cases Involving Trade Secrets

Litigation materials in intellectual property cases often involve business secrets; as a result, there is a corresponding special system in-place for the trial of intellectual property cases:

May file a motion for a private trial:

• Civil cases: According to Article 9 (1) of the Intellectual Property Case Adjudication Act, “when a party’s means of attack or defense involves its own trade secrets or those of a third party, the trial may be held in private upon motion of the party and approval of the court; the same applies where both parties have agreed to have a private trial.”

• Criminal cases: According to the first sentence of Article 24 of the Intellectual Property Case Adjudication Act: Where litigation materials involve trade secrets, the court may order the trial not be held in public upon motion of the party.

• Administrative actions: According to Article 34 of the Intellectual Property Case Adjudication Act, the provisions of Article 9 for civil actions shall apply mutatis mutandis to administrative actions.

Limiting the review of documents/evidence upon motion or on the court’s own initiative

• Civil cases: According to Article 9 (2) of the Intellectual Property Case Adjudication Act: “Where litigation materials involve trade secrets, the court may refuse or otherwise allow limited reviews, transcription or videotaping of such litigation materials upon motion or on its own initiative.”

• Criminal cases: According to the final sentence of Article 24 of the Intellectual Property Case Adjudication Act: Where litigation materials involve trade secrets, the court may set limits on the review, transcription or videotaping of such dossier documents or evidence upon motion or on its own initiative.

• Administrative actions: According to Article 34 of the Intellectual Property Case Adjudication Act, the provisions of Article 9 for civil actions shall apply mutatis mutandis to an administrative action.

May file a motion for a confidentiality preservation order:

• A “confidentiality preservation order” refers to when the litigation materials in a case, such as evidence, contain trade secrets. The court may grant an order prohibiting the use or disclosure of such trade secrets upon the motion of the trade secret holder. (Intellectual Property Case Adjudication Act, Articles 11 to 15). One who violates a confidentiality preservation order may be subject to a sentence of imprisonment no more than three years, detention, or in lieu thereof or in addition thereto, a fine of no more than NT$100,000 to ensure the efficacy of the confidentiality preservation order (Intellectual Property Case Adjudication Act, Article 35 (1)).

• In accordance with the Directions on Court’s Handling of Confidentiality Preservation Orders, upon the motion of the trade secrets holder, all documents shall be sealed, and only undertaking personnel such as the judge in charge of the case or court clerks shall have access to the relevant litigation information. No other court personnel may open or view such information.

  ---

   

• Release Date : 2019-11-01
• Update : 2021-09-11