Following the foregoing amendments, the amendments to the Intellectual Property Case Adjudication Act ("Amendment") were promulgated on 15 February 2023, and are expected to come into force on 30 August 2023. The Amendment is the most substantial change to the Act in the Act's 14 years of implementation. The primary purpose of the Amendment is to establish a more professional and effective intellectual property litigation system.
Exclusive jurisdiction of the IP Court in most intellectual property cases
One of the most important aspects of the Amendment is that the majority of intellectual property cases will be brought under the exclusive jurisdiction of the Intellectual Property and Commercial Court ("IPC Court"). Specifically, the Amendment specifies that the first instance of intellectual property civil cases, as well as that of trade secret criminal cases (including supplementary civil actions), will be under the exclusive jurisdiction of the IP Court. In addition, in line with the amendment of the Taiwan National Security Act, the Amendment also stipulates that the Second-Instance Tribunal of the IP Court be the jurisdictional court for first-instance trade secret criminal cases involving infringement of National Core Key Technologies.
Protection of trade secrets involved in litigation
Furthermore, in order to strengthen the protection of trade secrets involved in litigation, the Amendment includes provisions relating to the de-identification of trade secret documents and access to court documents, as well as an update to the mechanism of the confidentiality preservation order (which means the court order that prohibits the use or disclosure of the trade secrets involved in the case). It is also noteworthy that, according to the Amendment, anyone who violates the confidentiality preservation order outside Taiwan shall also be subject to criminal liability.
Mandatory attorney representation for intellectual property civil matters
Additionally, as intellectual property cases often involve specialized legal expertise, the Amendment essentially requires mandatory attorney representation in most intellectual property civil matters (e.g., the value of a claim of intellectual property civil cases is above a certain amount, and civil litigation involving patents, copyrighted computer programs, and trade secrets). The Amendment also stipulates that the IP Court devise a trial plan with the parties in specific cases where the mandatory attorney representation system is adopted or in other complicated cases.
New mechanism for expert participation in litigation
The Amendment creates new systems in which the court may appoint a neutral technical expert to conduct an evidentiary examination in a patent dispute, and the parties in a litigation may request an expert witness to provide professional opinion on technology-related issues.
Other highlights of the Amendment include a new framework of information exchange between judicial review and administrative review, the system of consultation with specialized authorities on intellectual property, the obligation of notification of litigation over an exclusive license, and the restriction of reexamination of discrepancies in judgments on the validity of intellectual property rights.
We anticipate that the Amendment, once it enters into force, will have a substantial impact on intellectual property litigations, particularly trade secret proceedings. Henceforth, trade secret cases will exclusively be handled by the more specialized IPC Court, and the protection mechanism for trade secret contents in litigation will become more sophisticated and extensive.
In general, the Amendment has made the trial proceedings of intellectual property cases more efficient and professional, and complainants or plaintiffs in future trade secret cases will benefit from improved legal protection for their infringed trade secrets under the Amendment. Moreover, the mandatory attorney representation for more complicated intellectual property cases such as patents, copyrighted computer programs and trade secrets is helpful to strengthen the protection of the parties' interests.
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