Intellectual Property Case Adjudication Rules

Link to law: http://law.moj.gov.tw/ENG/LawClass/LawAll.aspx?PCode=A0030222

Subscribe to a Global-Regulation Premium Membership Today!

Key Benefits:

Subscribe Now
Article 1


These adjudication rules are enacted pursuant to Article 38 of the Intellectual Property Case Adjudication Act (hereinafter referred to as the "Act'').


Article 2


Pursuant to Subparagraphs 1 and 4, Article 3 of the Intellectual Property Court Organization Act and Article 7 of the Act, intellectual property civil actions include the following:
1. Disputes over the ownership of intellectual property rights, relevant application rights, and compensation.
2. Contract disputes:
(1) Intellectual property licensing agreements.
(2) Disputes over assignment, pledge, trust, agreement to registration, assignment of application right, and other contractual disputes.
3. Disputes over torts:
(1) Disputes over infringement upon economic rights of intellectual property rights.
(2) Disputes over infringement upon moral rights of intellectual property rights.
4. Disputes over compensation and royalty arising out of the use of intellectual property rights.
5. Matters concerning the protection of intellectual property rights and interests under the Fair Trade Act.
6. Matters concerning the preservation of evidence and provisional remedies proceeding in connection with intellectual property rights.
7. Other cases prescribed by law or determined by the Judicial Yuan to be within the jurisdiction of the Intellectual Property Court.


Article 3


Pursuant to Subparagraphs 2 and 4, Article 3 of the Intellectual Property Court Organization Act, Article 23 and Paragraph 2, Article 25 of the Act, intellectual property criminal actions include the following:
1. Offenses under Articles 253 to 255, 317 and 318 of the Criminal Code, violation of the Trademark Act, Copyright Act, Trade Secrets Act, Paragraph 1, Article 35 of the Fair Trade Act concerning offenses under Paragraph 1, Article 20, Article 36 of the Fair Trade Act concerning offenses under Subparagraph 5, Article 19, Paragraph 1, Article 35, and Paragraph 1, Article 36 of the Intellectual Property Case Adjudication Act, and the supplementary civil action cases thereof.
2. Other cases prescribed by law or determined by the Judicial Yuan to be within the jurisdiction of the Intellectual Property Court and the supplementary civil action cases thereof.


Article 4


Pursuant to Subparagraphs 3 and 4, Article 3 of the Intellectual Property Court Organization Act and Paragraph 1, Article 31 of the Act, intellectual property administrative actions cover subject matters concerning intellectual property rights 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 Fair Trade Act, including:
1. Administrative actions against the administrative decisions of the competent authority dismissing applications concerning patents, trademarks, integrated circuit configurations, species, and plate making.
2. Administrative actions against the administrative decisions of the competent authority cancelling or revoking patent rights, trademark rights, rights to integrate circuit configurations, and species rights.
3. Administrative actions against the administrative decisions of the competent authority in connection with intellectual property application rights or applications for register of other intellectual property right.
4. Administrative actions against the administrative decisions of the competent authority over the compulsory licensing of intellectual property rights.
5. Administrative actions against the administrative decisions of the customs seizing objects infringing upon intellectual property rights directly based on intellectual property laws and decrees.
6. Administrative actions against the administrative decisions of the competent authority granting rewards or imposing controls pursuant to intellectual property laws and decrees.
7. Administrative contracts executed in lieu of the administrative decisions listed in Subparagraphs 1 to 6.
8. Actions of revocation, performance or declaration as arising out of a legal relationship under public law, as prescribed in the Act.
9. Public law disputes arising out of unfair competition in violation of the Fair Trade Act involving counterfeit of intellectual property subjects.
10. Motions for suspension of enforcement, preservation of evidence and injunctive procedures in connection with any of the public law disputes listed in Subparagraphs 1 to 9 above.
11. Other cases prescribed by law or determined by the Judicial Yuan to be within the jurisdiction of the Intellectual Property Court.
A matter involving an act in violation of obligations under both an intellectual property law and another administrative law that warrant a fine is an intellectual property administrative action so long as the fine prescribed by the intellectual property law is higher. Such matter also constitutes an intellectual property administrative action even if involving confiscation or other administrative punishment, unless the types of punishment are the same and heavier punishment is imposed pursuant to the non-intellectual property law.


Article 5


The compulsory enforcement matter under Subparagraph 3, Article 3 of the Intellectual Property Court Organization Act as prescribed in Paragraph 1, Article 31 of the Act refers to a matter in which the creditor files a motion for enforcement upon a final judgment of the intellectual property administrative action in the preceding article ordering the debtor to perform a specific obligation, by reason of the debtor's failure to so perform after the judgment becomes final.


Article 6


The following matters do not constitute intellectual property administrative actions:
1. A matter where the competent intellectual property authority is a party to the administrative action, but the claim asserted in such action is not based on intellectual property laws.
2. An action filed against an administrative decision which, though associated with intellectual property rights, is not directly based on intellectual property laws or on decrees authorized by intellectual property laws.


Article 7


The Intellectual Property Court shall transfer a civil or administrative action not subject to its jurisdiction but wrongly initiated by a party with it to the court with jurisdiction pursuant to Paragraph 1, Article 28 of the Code of Civil Procedure and Article 18 of the Code of Administrative Procedure by ruling.


Article 8


If a party files an appeal or an interlocutory appeal against an adjudication of the court of first instance over a criminal case where the court finds that the legal provision to apply to the relevant facts of crime on which the prosecutor has brought the complaint should change to Subparagraph 2, Article 3 of the Intellectual Property Court Organization Act, the court of first instance shall refer such criminal case being appealed to the Intellectual Property Court.


Article 9


No superior court may, on grounds of wrong jurisdiction, reverse the substantive adjudication of a civil or administrative court on an intellectual property civil or administrative action which, though not subject to the exclusive jurisdiction of the intellectual property court, shall be deemed to be so subject substantively.


Article 10


A court trying a non-intellectual property case is deemed in contravention of the laws and regulations if it misapplies the special provisions governing intellectual property actions. A superior court may reverse or revoke the adjudication of the first-mentioned court on such grounds.


Article 11


The Intellectual Property Court may, wherever necessary, in trying an intellectual property case, designate a Technical Examination Officer by ruling to perform the duties set forth in Article 4 of the Act; such ruling shall be adjudicated by the judges sitting in council in the event of a case subject to judgment by council.
The name of the Technical Examination Officer designated to perform duties on the date for a court session shall be shown on the docket along with the names of the judge and the court clerk.


Article 12


If a court other than the Intellectual Property Court handling an intellectual property case deems it necessary to designate a Technical Examination Officer for assistance, such court shall first request the Intellectual Property Court to assign the above officer and then designate such officer by ruling.


Article 13


Upon designation to assist in a trial and other procedures, a Technical Examination Officer shall peruse the exhibits and information on file and perform his/her duties in the following manner:
1. with respect to the litigation pleadings and materials of parties, analyze and sort the arguments based on his/her expertise in order to clarify the issues, and furnish references pertaining to his specialty;
2. state his/her comments on the arrangement of the disputed issues and exhibits and on the scope, order and method of investigation of evidence to the judge for reference;
3. appear on the date for a court session and, with the permission of the court, may question a party, agent ad litem, witness or expert witness as necessary, and expound the technical terminology in the testimony of a party, agent ad litem, witness or expert witness that is not easily comprehensible;
4. before or after inspection, state the relevant guidelines to the court, and assist the judge in ascertaining the party's explanation and in the treatment and operation of the object under inspection;
5. assist with the compilation of schedules and illustration attaching to the judgment;
6. with the permission of the presiding judge, attend as an observer and state his/her technical views relevant to the case in the deliberation; the presiding judge may order the Technical Examination Officer to present the views he contemplates in writing in advance; and
7. present professional technical opinions to the court, and handle and operate objects of enforcement as necessary in a compulsory enforcement procedures.


Article 14


The name of the Technical Examination Officer participating in a trial on the date for a court session shall be specified in the transcript.
The particulars of the matter where a Technical Examination Officer expounds to or directly questions a party, witness or expert witness on the date for a court session with the permission of the court shall be entered in the transcript.


Article 15


A party may state its opinion to court on the exposition made by a Technical Examination Officer on a date for a court session.


Article 16


The court may order a Technical Examination Officer to prepare a written report on the results of his/her performance of duties and, where the case is of a complex nature, to separately prepare an interim report and a final report in writing if necessary.
Such reports compiled by a Technical Examination Officer will not be made public. However, before any special professional knowledge learnt by the court from a Technical Examination Officer is adopted as a ground for judgment, parties shall be accorded an opportunity to present their arguments regarding such knowledge.


Article 17


The court may cancel a ruling designating a Technical Examination Officer or designate another Technical Examination Officer to perform duties, if necessary.


Article 18


Statements made by a Technical Examination Officer may not be directly admitted as evidence for the purpose of finding on the facts to be established. The parties shall still discharge their burden of proof by presenting evidence with respect to the facts to be established in the action according to the evidence procedure set forth in the applicable litigation laws, without directly adducing the statements of a Technical Examination Officer as evidence.


Article 19


The court may, in response to a motion for an order of submission of evidence, order the holder of the relevant document or object for inspection to state his opinion. If the holder raises a defense on the basis of trade secret, the court may order such holder to provide a preliminary showing, then make a determination after the other party states its opinion on, the type, nature and scope of the secret, and the specific disadvantages to arise out of disclosure as well as the scope of such disadvantages.
Where necessary, the court may also order the holder to submit evidence in a private manner for its deliberation.
Where the court deems it necessary to hear the opinion of a related party to the action, disclosure will be made to the litigious agent in principle unless the objective can hardly be achieved without the disclosure made to a party to the action itself, and the court may instruct the holder to file a motion for a confidentiality preservation order to be issued to the party to whom disclosure is made.
The court shall determine whether the holder of evidence has a valid reason for refusing to furnish the relevant document or object for inspection or not, by deliberating on the connection between the trade secret and fact to be established, availability of an alternative evidentiary method or requirement on presumption of facts, possibility of moving for a confidentiality preservation order, and other circumstances.


Article 19-1


The infringed party must make a preliminary showing of the infringement or high likelihood of infringement of its trade secrets if it is to claim according to Paragraph 2, Article 10-1 of the Act that the court may, subject to the circumstances, find its preliminary showing true.
Where the other party denies the claim of which a preliminary showing has been made under the preceding paragraph, the court shall order it to raise a specific defense in regard to its denial within a prescribed time limit.
Where the other party fails without good cause to raise a defense within the prescribed time limit or to raise a specific defense, the court shall accord parties an opportunity to present their arguments on the dispute over the truthfulness of the allegation before it may find the allegation of which the infringed party has made a preliminary showing true.


Article 20


A party or a third party shall pay attention to the following when it files a motion for a confidentiality preservation order pursuant to Article 12 of the Act:
1. The person specified in the motion to be subject to the confidentiality preservation order shall be a natural person. The personal domicile or residence of the natural person shall also be specified in the motion.
2. The trade secret specified in the motion to be protected by the order may be disclosed by way of indirect adduction, without a disclosure of the contents of the trade secret, to enable the court to determine whether the requirements for the establishment of trade secret are satisfied or not.
The above-mentioned motion shall expressly state the following required facts:
1. the contents of the pleadings or evidence involves the trade secret of a party or a third party;
2. that it is necessary to impose restrictions on the disclosure or use of the trade secret since disclosure or use of the trade secret for a purpose other than the purpose of the legal proceeding in question is likely to hinder the business activity which the party or third party engages in based on such trade secret; and
3. that as of the motion for the confidentiality preservation order, the person to be subject to the order has not obtained the trade secret by ways other than the perusal of the pleadings or investigation of the evidence.
Prosecutors conducting a public complaint and civil servants intervening in an action are under an obligation of confidentiality in their public duties thus not persons to be subject to a confidentiality preservation order.


Article 21


Persons to be subject to a confidentiality preservation order are limited to those with access to the trade secret by virtue of the principal case. If the other party has retained a litigious agent, such litigious agent is advisable to be included as a person subject to a confidentiality preservation order.
The court may request both parties to make a determination through negotiation, before rendering the above ruling.


Article 22


It is not advisable that the document or object containing a trade secret be incorporated as an attachment to a motion. Such document or object shall be separately submitted to court, and will be returned upon the conclusion of trial or where retention is no longer necessary; it may not be enclosed to the dossier.


Article 23


The court may question the party concerned, person to be subject to the confidentiality preservation order, or any related party, or otherwise investigate the evidence as necessary, before ruling on a motion for a confidentiality preservation order.


Article 24


The court may stay the trial of the portion of a principal case concerning a trade secret prior to its ruling on the motion for a confidentiality preservation order becoming final.


Article 25


The court shall grant by ruling a motion for a confidentiality preservation order if it deems such motion justified, otherwise, it shall dismiss the motion.
The trade secret in question shall not be disclosed in the above ruling. It is advisable that the trade secret subject to protection be confirmed in the syllabus and reasons of the ruling by way of indirect adduction.


Article 26


The original copy of a court ruling on a motion for a confidentiality preservation order shall be retained together with the document containing the trade secret.
The authenticated copies of a court ruling on a motion for a confidentiality preservation order shall not attach any document containing a trade secret.


Article 27


A confidentiality preservation order shall become effective against the opposing party upon being served on such party. The court may not effectuate service by constructive notice of a confidentiality preservation order.
The court may direct the parties in its notice for negotiation under Paragraph 2, Article 21 to agree for the person subject to the confidentiality preservation order to collect the order from court.
A person subject to a confidentiality preservation order shall report to court any change of his domicile or residence.


Article 28


Where a party to an intellectual property civil or criminal action claims or defends that an intellectual property right shall be cancelled or revoked, thereby affecting the outcome of the civil or criminal adjudication, the court shall determine on such claim or argument in the reasons of its judgment, without directly concluding such claim or argument is inadmissible on the grounds that the intellectual property right has not been cancelled or revoked; nor shall the court rule to suspend the legal proceedings on the grounds that the administrative proceeding initiated in connection with the disputed issue has not concluded.
The same facts and evidence concerning whether an intellectual property right shall be cancelled or revoked may no longer be asserted in an intellectual property civil proceeding if it has been conclusively decided in an administrative proceeding that the cancellation or invalidation is not established, or if the application for invalidation has been time-barred, or if there are other factors by law prohibiting assertion in an administrative proceeding.


Article 29


The court shall overrule any independent action filed by a party to an intellectual property civil action, any concurrent claim by the party in the civil action for a judgment establishing the legal relationship against the adverse party, or any counter-claim by said party, with respect to the disputed issue over the validity of an intellectual property right or over whether an intellectual property right shall be cancelled or revoked, due to inconsistency with the purpose of Article 16 of the Act.


Article 30


Where a party or a third party has, while an intellectual property civil action is pending, initiated an administrative action with respect to the cancellation or revocation of the same intellectual property right, the court may designate the date for a court session taking into account the progress of the administrative action and opinions of the parties, for determining whether the intellectual property right shall be cancelled or revoked.
It is advisable that the opinion of the competent intellectual property authority which has been ordered to intervene in a civil action under the preceding paragraph pursuant to Paragraph 1, Article 17 of the Act be sought for the purpose of designation of the date for a court session; negotiation may be conducted with both parties and the intervening party for the arrangement of a trial plan, where necessary.
The court may request evidentiary information from the competent intellectual property authority and its superior appeal authority ex officio where necessary, if in the civil action mentioned in the first paragraph it is unable to determine by the evidence presented by the parties whether an intellectual property right shall be cancelled or revoked.


Article 31


The court shall make a determination based on the information obtained from evidence presented by the parties and on investigation which it conducts ex officio if a party claims or defends in an intellectual property civil action that an intellectual property right shall be cancelled or revoked thereby affecting the outcome of the adjudication. Notwithstanding, where necessary, the court may order the competent intellectual property authority to intervene in the action pursuant to Paragraph 1, Article 17 of the Act for such authority to express its opinion on the disputed issue involving expertise or legal principles.
The competent intellectual property authority intervening in an action pursuant to the preceding paragraph may independently file the means of attack and defense with respect only to whether the intellectual property right shall be cancelled or revoked.


Article 32


Where a party to a civil action over patent infringement claims or defends that the patent right shall be cancelled and where the patent right holder has applied to the competent intellectual property authority for amendment to the scope of patent claim, an appropriate date for a court session shall be designated taking into account the extent to which the amendment has proceeded and upon consultation with both parties, except where trial and adjudication of the principal case may directly proceed if the amendment application obviously shall not be granted or if the amended scope of claim, once approved, does not constitute an infringement of right.


Article 33


It is advisable that the court overrule pursuant to Paragraph 2, Article 196 of the Code of Civil Procedure an intellectual property civil action over whether an intellectual property right shall be cancelled or revoked, if conclusion of the action is impeded by a party's attempt to defer the proceeding or by a party's delay in filing its means of attack and defense out of gross negligence.
Unless otherwise provided by law, the means of attack and defense on whether an intellectual property right shall be cancelled or revoked may no longer be claimed or raised in defense in the appeal instance or in oral argument after the preparatory proceeding, if such means has not been asserted or defended in the first instance or in any preparatory proceeding conducted.


Article 34


Where in a final judgment of an intellectual property civil action that substantively found on the issue as to whether an intellectual property right shall be cancelled or revoked, if in other actions concerning whether the same intellectual property right shall be cancelled or revoked, the same party raises a claim or defense contrary to the gist of the final judgment on the basis of the same basic facts, the court shall make its determination by deliberating on the relevant circumstances such as whether the above final judgment is obviously contrary to the laws and regulations, whether new litigation information emerges that may affect the outcome of the judgment, and the principle of good faith.


Article 35


No trial concerning the amount of damage in a civil action over the infringement of an intellectual property right shall be conducted until after the argument on whether the alleged infringement is established or not, unless the court deems advance or contemporaneous debate necessary over the content of the damage.


Article 36


Where no action is initiated, a motion under Paragraph 1, Article 22 of the Act shall be filed with the court where the action shall be pending; after an action is initiated, such motion shall be filed with the court where the principal case is pending; provided, however, the motion shall be filed with the court of first instance where the action is pending if the principal case is pending before the Supreme Court.
The above motion, if in a civil action supplemental to a criminal action, shall be filed with the court entertaining such civil action supplemental to a criminal action.


Article 37


An applicant seeking an injunction maintaining the temporary status quo of a disputed legal relation involving intellectual property must provide a preliminary showing with regard to the existence of such legal relation and the need to maintain the temporary status quo. The court shall dismiss the application if the preliminary showing is insufficient, without allowing the provision of a bond, whether in lieu of preliminary showing or supplementing the above-mentioned insufficiency.
The court may still order the applicant having made the above preliminary showing to provide an adequate bond in its ruling on an injunction maintaining the temporary status quo.
The court reviewing an application for maintaining the temporary status quo shall, with respect to the necessity of preservation, deliberate on the likelihood of success of the applicant in the principal case in the future, whether the granting or rejection of the application will cause irreparable harm to the applicant or opposing party, balance on the degree of damage to both parties, and impact on public interest.
With respect to the likelihood of success in the principal case in the future mentioned above, the court shall rule against the intellectual property right holder if there is high probability of cancellation or revocation when a party claims or defends, with convincing evidence, that the intellectual property right shall be cancelled or revoked.


Article 38


Before an injunction maintaining the temporary status quo is granted, the court shall accord the opposing party an opportunity to state its opinion, unless the applicant asserts and is able to provide evidence to substantiate its assertion that there is special circumstance that shall restrict the opposing party from being notified before the injunction is issued, and the court deems such assertion appropriate.
The court will determine the method by which to proceed with the injunction maintaining the temporary status quo according to the circumstances concerned, without being bound by the motion of the applicant, provided the method shall be limited to a feasible one neither contrary to the purpose of the injunction nor beyond the necessary extent.


Article 39


The court revoking an injunction to maintain the temporary status quo upon motion or ex officio pursuant to Paragraph 5, Article 22 of the Act shall ascertain from the applicant and other courts whether an action has been initiated or not.


Article 40


In an administrative action concerning cancellation or revocation of a registered trademark or patent, the court shall still take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of oral argument, provided the court may, pursuant to Article 132 of the Code of Administrative Procedure applying Paragraph 2, Article 196 of the Code of Civil Procedure mutatis mutandis, dismiss new evidence produced, if the conclusion of the action is impeded by the party's attempt to defer the proceeding or its failure, out of gross negligence, to follow the progress of the legal proceeding by presenting new evidence within an appropriate period prior to the end of oral argument.
The competent intellectual property authority may request the court to allow the authority an adequate time for preparing any defense pleadings which the authority may be required by Paragraph 2, Article 33 of the Act to submit in response to the above-mentioned new evidence.


Article 41


An intellectual property civil or criminal appeal and an intellectual property administrative action being based on the same basic facts and pending concurrently or successively at the Intellectual Property Court may be handled by the same independent or commissioned judge; the same shall apply where the former action is concluded.


Article 42


These adjudication rules shall come into force as of the date the Act comes into force.