US embassy cable - 05TAIPEI458

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