The Intellectual Property Case Adjudication Act (hereinafter referred to as the IPCAA) has been in effect since July 1, 2008. In view of the highly technical and legal professional traits of intellectual property lawsuits, and in order to facilitate professional, proper and speedy litigation proceedings, and in response to the Draft Amendments to the Patent Act and the Trademark Act, the Judicial Yuan decided to substantially revise the IPCAA, and provided the draft amendment on June 24, 2022. The proposed amendment creates two major important regulations, namely, "The Accused Party's Obligations of Specific Pleadings" and "The Investigator System", for the three special types of infringement cases: patents, computer programs copyright, and trade secrets. The following briefly introduces them.
The current Article 10-1 of the IPCAA stipulates that the accused party has an obligation to plead specifically in trade secrets infringement cases. The Draft Amendment to the IPCAA further extends the applicable scope of of this provision to the infringement case of patent and computer programs copyright, which are also highly technical and confidential in nature. In practice, the burden of proving infringement on patents, computer programs copyright and trade secrets is normally favorable to the accused party, or is relied upon the third parties’ assistance, so that it is difficult for the IP right owner to effectively prove the disputed facts. Even if the IP right owner makes effort to provide infringement evidence, said evidence is often easily denied and challenged by the accused party. In order to remedy the IP right owner’s inferior position, Article 36 of the Draft Amendment to the IPCAA stipulates that when the right owner makes a preliminary showing of infringement by presenting sufficient evidence that causes the court to obtain its conviction on the likelihood of infringement, rather than completes proof of infringement, the court shall impose an obligation on the accused party to specifically plead the IP right owner’s arguments. That is, the accused party is not allowed to simply deny the charge, without giving specific reasons. The court may, subject to the circumstances, find the IP right owner’s arguments true, if the accused party fails to plead specifically within the prescribed time limit.
According to Articles 19 to 26 of the Draft Amendment to the IPCAA, "The Investigator System" is newly stipulated for patent infringement cases. This system is a reference to the provisions of the Japanese Patent Law and is a legally compulsory evidence-taking procedure. The legislative purpose of said Draft Amendment is to address the issue brought about by the advanced technology in recent years, wherein relevant documents or information-carrying devices are often held or managed by others, which makes it difficult for the IP right owner to prove the disputed fact of patent infringement in litigation. Article 27 of the same stipulates that the aforementioned Investigator System shall apply mutatis mutandis to the infringement cases of computer programs copyright and trade secrets. Under this system, the IP right owner can make a preliminary showing that his/her right or legal interest has been or is likely to be infringed in litigation, as well as the reasons why he/she cannot take evidence by himself/herself or by other means, and apply to the court for the appointment of an investigator. In addition to entering the location of the subject matter, the investigator may inspect the relevant documents or devices held or managed by the accused party or a third party within the methods permitted by the court. The investigator may also question the person under investigation or request that he/she produce the necessary documents. Should the person under investigation refuse or obstruct the investigation without giving a justifiable reason, the court may, subject to the circumstances, find the disputed fact true.
To sum up, the purpose of "The Accused Party's Obligations of Specific Pleadings" and "The Investigator System" of the Draft Amendment to the IPCAA is to relieve the burden of proof for the IP right owner and assist the court in discovery of truth as well as in making a proper and speedy judgment. "The Accused Party's Obligations of Specific Pleadings" provision is a clause regarding re-allocation of the burden of proof. For example, in a patent infringement case involving the chemical compound of semiconductor material, when the patent owner has presented the results of material analysis of the accused product and claim chart, the accused party may not simply deny the patent owner’s material analysis results, but should specifically respond to the patent owner’s infringement theories and analysis. Otherwise, the court may, subject to the circumstances, find the material analysis results provided by the patent owner to be true. Furthermore, for cases where it is difficult to take evidence, such as manufacturing equipment located in the factory of the accused party or a third party, the IP right owner may request the court to conduct an evidence-taking procedure by means of "The Investigator System", which can also serve to facilitate the litigation proceedings.