New IP Court set to start hearing cases in September

Taiwan is set to establish a specialist IP Court, which is expected to start hearing cases by September 2007. The procedure and organization of the court will be brought into effect by the implementation of the Examination Act for Intellectual Property Rights Cases and the Organization Act of Intellectual Property Rights Court.

The provisions of the Organization Act of Intellectual Property Rights Court can be summarized as follows:

• The IP rights referred to under the act are those protected by the Patent Act, Trademark Act, Copyright Act, Optical Disk Regulations, Trade Secret Act, IC Layout Protection Act, Plant Variety & Seed Act, Fair Trade Act, plus other laws and Judicial Yuan directives. The IP Court will be the court of first instance and second instance for civil suits or the court of first instance for administrative suits involving these IP rights. As to criminal suits, the IP Court will be the appellate court, while the district court shall remain the court of first instance to ensure timely and efficient prosecution of counterfeiting cases. A corresponding Intellectual Property Rights Branch Office under the High Prosecutor's Office will also be set up.
  
  
• IP Court judges may be selected from judges, prosecutors, lawyers, professors, researchers or examiners from relevant government offices with certain credentials. The IP Court will also institute the technical examination officer to assist in the collection and analysis of technical data and provide opinions on technical issues.
  
  
• For protection of trade secrets, any parts of judgments that refer to any trade secrets cannot be disclosed to the public.

The provisions of the Examination Act for Intellectual Property Rights Cases can be summarized as follows:

• The act affords the IP Court jurisdiction over civil, criminal and administrative proceedings involving IP rights. Under the previous system, the tactics of attacking the validity of IP rights often worked to prolong the proceedings to enforce these rights. The civil and/or criminal courts handling infringement cases were often forced to suspend the proceedings on the fact that the validity of the IP rights concerned was challenged by separate administrative proceedings. The new IP Court, however, may also conduct examination on the validity of IP rights. The IP Court's judgment on a civil suit for the validity of IP rights binds only upon that civil suit itself. The cancellation or revocation of IP rights is still the authority of the Intellectual Property Office (IPO) and should be dealt with in different administrative proceedings. In addition, the IP Court may direct the IPO to intervene in the suit to attack or defend the validity of IP rights.
  
  
• To assist judges, the technical examination officer may conduct inquiries and investigations and provide opinions in order to clarify the facts and facilitate the examination of the case.
  
  
• To avoid the loss or concealment of evidence, the IP Court can verify, inspect and secure relevant documents. If the parties, without reasonable cause, refuse to obey the court's order, the court can take necessary action by force to secure the evidence.
  
  
• Under the previous laws, a preliminary injunction, which might be easily obtained by placing bonds, was an often-used tactic in an IP rights case effectively to interfere with the marketing of the adversary's products. The new laws place the burden upon the petitioner to prove the necessity for preliminary injunctions by submission of evidence, which can be investigated immediately. The IP Court is obligated to hold a hearing for both parties to determine if a preliminary injunction is necessary for the prevention of major damages or immediate danger. Even if the IP Court believes that such action is necessary, a bond may also be required.
  
  
• The protection of trade secrets during trial proceedings is also a concern addressed by the act. Upon application by an interested party, the IP Court may issue an order to maintain the secrecy of the trade secrets revealed in the trial. Based on the application or consent of the parties concerned, the IP Court may order the trial closed to the public. Any review, copying or photographing of the materials used in the litigation may also be restricted or forbidden.

The Judicial Yuan has set up a special taskforce to arrange the establishment of the IP Court. The draft of detailed rules for the Examination Act for Intellectual Property Rights Cases is on the way to being completed.

Kwan-Tao Li and Joseph S Yang, Lee and Li Attorneys at Law, Taipei