On June 24, 2022, Taiwan’s Judicial Yuan announced a draft amendment to the IP Case Adjudication Act for review by Legislative Yuan, which, if approved, will be the most sizable and influential overhaul ever since its implementation in 2008. A brief report is as follows:
- Adversary System will be introduced into Patent and Trademark Administrative Disputes.
According to the planning of Judicial Yuan, the administrative remedy system for patent and trademark cases will change from the current “administrative litigation system” to “adversary system” under quasi-civil litigation proceedings. In other words, after a party files an appeal with the court against a Decision rendered by the IP Office, the case will be tried in accordance with the civil procedure, and the defendant, depending on the type of case, may no longer be the IP Office but the opposing party, e.g. an invalidation petitioner, or the applicant of a cancellation action.
- More Cases will be mandatorily represented by lawyers.
The draft amendment states that only lawyers may represent several specific types of IP civil matters. Basically, civil disputes relating to patents, software copyrights, and trade secrets shall all be mandatorily represented by lawyers. The same is true with other civil cases unless the value of the plaintiff’s claims is low.
- The draft amendment has introduced some good practices and appropriate rules adopted by IP court judges for years, as follows, to augment the effectiveness of the trial of civil suits
(1) In principle, the court should discuss with the involved parties (through their lawyers) regarding the planning of a trial, unless the case does not require legal representation or the issues of the case are relatively simple.
(2) In patent litigation cases, the judge shall, in a timely and appropriate manner, disclose his/her interpretation of any disputed terms recited in the claims, ex officio or upon the request of a party.
- The draft amendment also sets out some principles for those long-standing unsettled issues or issues in grey areas in infringement litigation, including:
(1) Under the current law, reports drafted by court experts formally known as Technical Examination Officers (TEOs) are not disclosed to any parties. The draft amendment now makes it clear that when a judge deems it necessary, he/she may disclose all or part of the content of the Reports drafted by TEOs and the parties may be given opportunities to debate vis-à-vis.
(2) In the event of infringement of patent rights, software copyrights, or trade secrets, if the plaintiff has made a prima facie showing of infringement, the defendant should make a “concrete defense” and provide the facts and evidence regarding his/her “denial of infringement.” Under such principle, the burden of proof resting with the plaintiff may be more or less alleviated.
Furthermore, painstaking effort has been put in by Judicial Yuan to reduce duplication of lawsuits. For example, the draft amendment states that, when an IP right based on in a litigation has been exclusively licensed to a third party, and the litigation is initiated by the IP right holder, the exclusive licensee shall be notified timely to ensure that he/she has opportunities to participate in the litigation and vice versa.
- Regarding amendments to the claims during litigation process
Which of the claims shall be tried, the claims before or after amendment, is a challenging procedural issue, especially when an amendment is conducted not during the proceedings of a lawsuit but in a parallel invalidation action. The draft amendment attempts to provide a comprehensive solution, including:
(1) When the patentee/plaintiff has amended the patent claims before the IP Office (usually in a parallel invalidation action), he/she should make a report to the court. Otherwise, the patentee can only claim his/her right based on the claims of the patent prior to the amendment.
(2) If a patentee has missed the opportunity to amend the claims at the IP Office (e.g. the patent has been held invalid by the IP Office in a decision being appealed), the intended amendment can be identified in an infringement litigation, but only on the premise that “not allowing the amendment is manifestly unfair.” In this scenario, the judge may, at his/her own discretion, determine whether the amendment is legitimate or not or seek the IP Office’s opinion on the amendment. In the latter case, the IP Office may present its opinion in writing or by appointing an examiner to present before the court.
- Restriction on submission of new evidence
The current Act has fewer restrictions on the submission of new evidence in invalidation/cancellation actions. According to the draft amendment, unless the patentee agrees or has no objection to the invalidation petitioner’s submission of new evidence, the invalidation petitioner may file new evidence only after the following two conditions have been satisfied:
(1) The new evidence is to strengthen the “very same legal ground (e.g. lack of inventive step) on which the invalidation action is initiated”; and
(2) The so-called “new” evidentiary materials have been presented before the court, and it is only to make a new combination or to split a combination of evidence into single pieces of evidence.
- More experts are allowed to participate in the litigation
By making reference to the Japanese Patent Law, the draft amendment mandates that the court may, upon request, designate a neutral technical expert to carry out the “verification” task in evidence gathering proceedings. In addition, not only has an expert witness system been introduced into the draft amendment with reference to the US litigation practice, but the court can also publicly solicit, on its official website, written comments from the public on specific legal issues by virtue of the introduction of the amicus curiae system.
- Trade secrets are protected by law in a more elevated manner
The draft amendment states that the IP and Commercial Court (the IPC Court) has exclusive jurisdiction over civil and criminal lawsuits relating to trade secrets infringement. If the criminal lawsuit relates to state-level key technologies, it should start from the appellate instance IPC Court. In addition, the draft amendment has introduced the offence of “breach of trade secret maintaining order abroad” to further protect trade secrets.
- Victims are allowed to participate in the trial procedure
According to the draft amendment, no matter whether an IP right infringement lawsuit is governed by the IPC Court or not, the provisions of the Criminal Procedure Law on “victims’ participation in litigation” shall apply mutatis mutandis. By this token, victims can be voiced by prosecutors in the trial procedure, and also enter the procedure themselves to express their opinions and review case files.