TAIWAN'S PROPOSED IPR COURT CONSIDERS EXCLUDING

UNCLAS SECTION 01 OF 02 TAIPEI 000458

SIPDIS

STATE FOR EAP/RSP/TC AND EB/TPP/MTA/IPC, STATE PASS AIT/W
AND USTR, USTR FOR KI AND FREEMAN

E.O. 12958: N/A
TAGS: ECON KIPR ETRD TW IPR
SUBJECT: TAIWAN'S PROPOSED IPR COURT CONSIDERS EXCLUDING
CRIMINAL CASES


1. Summary: The Judicial Yuan committee charged with
establishing an intellectual property court met January 20 to
discuss whether to include all types of cases:
administrative, civil and criminal, or to exclude criminal
cases. Taiwan Intellectual Property Office (TIPO)
representatives made a strong case, supported by the Ministry
of Justice (MOJ),that criminal cases should be included in
the Court,s mandate and that civil and criminal cases
stemming from the same violations should be brought
separately but before the same panel of judges. Some judges
object to trying all cases in the same court because
evidenciary rules are different for civil and criminal cases.
Since the overwhelming majority of all IPR related cases are
criminal, an IPR Court that does not include criminal cases
would be of limited utility. End summary.


2. In the fifth meeting of the Judicial Yuan committee
convened to consider the establishment of an intellectual
property court, participants discussed how and whether to
include all types of IP related cases: administrative, civil
and criminal, or to exclude criminal cases. Under Taiwan
law, different IP related cases have recourse to different
legal protections. Trademark cases can be decided in
administrative, civil, or criminal proceedings. Patent cases
can avail of administrative or civil litigation, but cannot
be brought before the criminal courts. Copyright cases can
only be considered in the civil or criminal systems.


3. Representatives from TIPO and the MOJ made a strong
argument in the meeting that including criminal cases in the
IPR Court,s mandate made sense. Pursuing a civil action
against an IPR violator is a time consuming and expensive
process that requires the complainant post a sizeable bond.
Taiwan,s record of enforcement of civil judgments is weak.
As a result, most intellectual property holders turn to
Taiwan,s criminal justice system in search of deterrent
sentences that will discourage future piracy, even in less
egregious cases of a few illegal copies.


4. TIPO argued that to provide the strongest possible
protection for intellectual property rights, the IPR Court
must consider all types of cases and that the judicial panels
should be reorganized along subject rather than case lines.
For example, one judicial panel might hear patent and
copyright related cases, no matter if they are civil,
administrative or criminal. Another might focus just on
trademark violation cases of all kinds. In this fashion,
judges could gain expertise in subject fields that could be
applied across the range of cases. Civil, administrative and
criminal cases could be brought in parallel before the same
panel of judges, saving time and creating consistent case law.


5. Since the proposed IPR Court is to be a court of second
instance (similar to a Court of Appeals),TIPO is also
proposing assigning some of the bigger district courts to
handle IPR cases. Currently, Taiwan has 23 district courts.
TIPO would propose assigning five of the biggest: Taipei,
Hsinchu, Taichung, Kaohsiung, and Hualien, to handle the
majority of IPR related cases. That would allow TIPO to
assign experts in patents, trademarks, and copyrights to each
of these courts on a full-time basis to advise the judiciary
on the technical aspects of IP cases.


6. Some in the Judicial Yuan oppose the inclusion of
criminal cases in the mandate of the IPR Court. These judges
note that since the separation of criminal and civil cases in
1999, judges have specialized in one type of case or the
other. Evidenciary rules for administrative and civil cases
are virtually identical, therefore it would be relatively
easy to consider both types of case in one court. However,
criminal evidence rules are much more strict than those for
other types of cases. Some believe that combining all three
types of cases in one court will lead to conflict.


7. The Executive branch, represented by TIPO, is scheduled
to submit a position paper to the JY on this debate on
February 18. Once that paper has been submitted, the panel
will again convene to discuss this issue, with a decision
expected soon thereafter.


8. Comment: The establishment of the IPR Court is not
expected until late 2006 at the earliest. But it is
important that the JY committee considering the duties and
authority of the court make the right decisions now, to avoid
having to reverse course in the future. With the vast
majority of all IPR related cases in Taiwan currently being
decided in the criminal system, it is essential that criminal
cases be included in the mandate of the IPR Court. Doing so
will not only ensure that IPR related criminal cases will
benefit from the expertise of IPR Court judges, but could
also lead to reforms that could build credibility for
underutilized civil proceedings and reduce the burden on
judges and prosecutors. AIT will work through the AmCham IPR
Committee to contribute industry views to the Judicial Yuan
committee encouraging the inclusion of criminal cases in the
IPR Court,s mandate. End Comment.
PAAL