• Intellectual Property Cases in Practice
  • October 18, 2012
  • Law Firm: Lee Tsai Partners Attorneys-at-Law - Taipei Office
  • More than four years have elapsed since the launch of the Intellectual Property Court on July 1, 2008.  This essay seeks to discuss the statistics of relevant cases heard by the Intellectual Property Court so far since its establishment to observe the current trial practices. 

     

    1.      Jurisdiction of the Intellectual Property Court

    Article 3 of the Organic Law for the Intellectual Property Court provides that the jurisdiction of the Intellectual Property Court shall cover the following cases of the first and second instance civil lawsuits, the second instance criminal lawsuits and the first instance administrative lawsuits: 

    (1)   Civil lawsuits

    The first and second instance civil lawsuits arising from intellectual property rights and interests protected under the Patent Law, the Trademark Law, the Copyright Law, the Statute for the Administration of Optical Discs, the Trade Secret Law, the Integrated Circuit Layout Protection Law, the Plant Variety and Plant Seed Law or the Fair Trade Law. 

    (2)   Criminal lawsuits

    Criminal cases involving appeal or counterappeal filed due to dissatisfaction with the first instance judgment of a district court rendered pursuant to the ordinary or summary trial or negotiation procedure on offenses under Articles 253 through 255, 317 and 318 of the Criminal Code or violations of the Trademark Law or the Copyright Law, or of Article 35, Paragraph 1 of the Fair Trade Law with respect to cases under Article 20, Paragraph 1 and of Article 36 with respect to cases under Article 19, Subparagraph 5, provided that juvenile criminal cases are not included.  

    (3)   Administrative lawsuits

    First instance administrative matters and compulsory enforcement matters in connection with the Patent Law, the Trademark Law, the Statute for the Administration of Optical Discs, the Integrated Circuit Layout Protection Law, the Plant Variety and Plant Seed Law, or the Fair Trade Law involving intellectual property rights. 

    (4)   Other cases assigned to the Intellectual Property Court pursuant to law or by the Judicial Yuan.

     

    2.      Number of cases heard by the Intellectual Property Court

    (1)   Case statistics

    The closure of civil cases during July 2008 through July 2012 according to the statistics compiled by the Intellectual Property Court is summarized in the following table:

    Number of Concluded Civil Lawsuits Heard by the Intellectual Property Court - by Types of Litigation

                         July 2008 through July 2012

    Unit: Case

    Duration

    Total

    First Instance

    Second Instance

     

     

    Subtotal        

    Copyright

    Patent

    Trademark

    Other

    Subtotal

    Copyright

    Patent

    Trademark

    Other

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

     

    July 2008 through July 2012

    1593

    1021

    228

     

    593

    156

    44

    572

    107

    357

    92

    16

    July through December of 2008

    54

    28

    13

    11

    4

    0

    26

    6

    14

    5

    1

    2009

    339

    212

    41

    132

    34

    5

    127

    35

    61

    28

    3

    2010

    499

    355

    78

    211

    41

    25

    144

    28

    92

    18

    6

    2011

    474

    289

    62

    168

    50

    9

    185

    20

    133

    26

    6

    January through July of 2012

    227

    137

    34

    71

    27

    5

    90

    18

    57

    15

    0

    January 2012

    27

    12

    2

    7

    2

    1

    15

    4

    9

    2

    0

    February 2012

    28

    19

    7

    8

    4

    0

    9

    2

    6

    1

    0

    March 2012

    44

    27

    11

    10

    5

    1

    17

    4

    10

    3

    0

    April 2012

    38

    21

    2

    11

    6

    2

    17

    2

    13

    2

    0

    May 2012

    36

    20

    4

    13

    2

    1

    16

    4

    8

    4

    0

    June 2012

    28

    18

    5

    10

    3

    0

    10

    1

    8

    1

    0

    July 2012

    26

    20

    3

    12

    5

    0

    6

    1

    3

    2

    0

     

    (2)   Analysis

    During July 2008 through July 2012, according to the above table, copyright cases account for 22%, patent cases 58%, trademark cases 15% and other cases 4% of all first instance civil cases, while copyright cases account for 19%, patent cases 62%, trademark cases 16% and other cases 3% of all second instance cases.  Therefore, the cases heard by the Intellectual Property Court were primarily patent lawsuits and patent-related cases accounted for over 50% of all cases. 

     

    (3)   Provisional relief proceedings and secrecy maintenance order

     

    (1)   Case statistics

    According to the statistics compiled by the Intellectual Property Court, the circumstances of new acceptance and closure of cases involving provisional relief proceedings (including Injunction for temporary sequestration, evidence preservation, provisional attachment and general injunction) and secrecy maintenance orders are detailed in the following table.

     

    Conclusions of Provisional Relief Proceedings and Secrecy Maintenance Orders for First Instance Trials

          July 2008 through July 2012                

    Unit: Case

    Item

    New Acceptance

    Conclusions

    Pending

     

     

    Total

    Granted

    Withdrawn

    Rejected

    Other

     

    Injunction for Temporary Sequestration

    41

    41

     

    7

    12

    19

    3

    (Note 3)

    0

    Evidence Preservation

    205

    204

    21.5

    21

    161.5

    0

    1

    Provisional Attachment

    108

    108

    19

    1

    88

    0

    0

    General Injunction

    16

    16

    5

    1

    9

    1

    0

    Motion for Secrecy Maintenance Order

    22

    22

    8

    7

    7

    0

    0

    Note: 1. Number of granted cases = granted cases + (partially granted and partial rejected cases)/2

         2. Number of rejected cases = rejected cases + (partially granted and partially rejected cases)/2

         3. Transferred jurisdiction and settled cases

    (2)   Analysis

    i.    The largest motion cases were motions for evidence preservation, totaling 205 cases.  Evidence preservation motions mean that a motion for evidence preservation filed with the competent court before the complaint is filed to preserve the evidence whose preservation is sought in the lawsuit.  According to the statistics of the Intellectual Property Court, there were a total of 205 cases of evidence preservation motions during July 2008 through July 2012.  Among these cases, 11% was granted, 10% withdrawn, and 79% rejected.  The percentage by which a motion was rejected was high.

     

     

    ii.    The second largest motion cases were motions for provisional attachment, totaling 108 cases.  A provisional attachment means a claim for money or a claim which can be converted into a claim for money.  If compulsory enforcement for preservation of evidence is sought, a motion may be filed prior to the filing of the complaint.  Of all the cases included in the statistics of the Intellectual Property Court during July 2008 through July 2012, there were 108 provisional attachment cases, of which 18% were granted, 1% withdrawn and 81% rejected.  The percentage by which motions were rejected was high. 

    iii.   The general injunction is a provisional compulsory enforcement for non-monetary claim and may be filed prior to the filing of the complaint.  Of all the cases included in the statistics of the Intellectual Property Court during July 2008 through July 2012, there were a total of 16 general injunction cases, of which 31% were granted, 6% withdrawn and 56% rejected.  The percentage by which motions for general injunction were granted is higher than that of evidence preservation (11%) and provisional attachment (18%), even though the number of such motion cases was far lower than that of evidence preservation (205) and provisional attachment (108). 

    iv.   The injunction for temporary sequestration is an important means of preservation before a complaint about intellectual property case is filed.  The “injunction for temporary sequestration” is a motion may be filed prior to a complaint “to an extent necessary to prevent major damage or avoid imminent danger or other similar circumstances with respect to disputed legal relations.”  According to the statistics of the Intellectual Property Court during July 2008 through July 2012, there were a total of 41 such cases, of which 17% were granted, 29% withdrawn and 46% rejected.

    v.   The secrecy maintenance orders for intellectual property cases are unique to the trial procedure of the Intellectual Property Court and mean that in the course of litigation where litigation materials such as evidence include the trade secrets possessed by a party, the court may, upon motion of the party who possess the trade secret, issue an order to prohibit the use or revelation of such trade secret.  According to the statistics of the Intellectual Property Court during July 2008 through July 2012, there were a total of 22 cases involving motions for secrecy maintenance orders, of which 36% were granted, 32% withdrawn and 32% rejected.  The percentage by which motions for secrecy maintenance orders is granted is far higher than that of evidence preservation (11%), provisional seizure (18%), provisional disposition (31%) and provisional sequestration (17%).

    4.     Conclusions

    The above-mentioned statistics reflect the current trial practices of intellectual property cases.  It is obvious that the number of cases accumulated by the Intellectual Property Court is still limited.  Attention can be paid continuously to future trial practices.