Article 368 of the Taiwan Code of Civil Procedure reads: "a party may move the court for an order for persevering any evidence that may be destroyed or its use in court may become infeasible, or with the consent of the opposing party; where necessary, a party who has legal interests in ascertaining the status quo of a matter or object may move for expert testimony, inspection or preserving of documentary evidence". This stipulation, aimed at providing the right holder with an effective tool to secure and preserve evidence so as to more readily fulfil the burden of proof, was recently invoked by the IP Court in the hearing of a motion for preservation of evidence filed prior to a possible utility model patent infringement lawsuit.
In the motion concerned, the plaintiff claimed in the first instance by support of an infringement analysis report that the opposing party infringed upon its utility model patent and moved the court for an order for preserving the alleged infringing products and evidence, including purchase orders, shipping notes, invoices, sales data, and account books under the possession of the opposing party.
The district court dismissed the motion. However, the ruling was later revoked after the case was appealed to the IP Court.
The IP Court held that it is necessary to preserve the alleged infringing products and documentary evidence, since they form crucial evidence to prove infringement or non-infringement, as well as to evaluate damages caused by the alleged infringing activities and are all but under the physical control of the opposing party and are virtually inaccessible.
The IP Court further stated that entitling the right holder to collect evidence prior to trial proceedings may help it obtain a more informed picture of the facts of the case than it could by reliance on its own unaided initiative. As such, the chances of resolving IP disputes via arbitration or out-of-court settlement would improve significantly. The IP Court found additionally that even if the efforts to resolve disputes outside the courts prove to be futile, the evidence thus preserved could be helpful to the court in uncovering the true state of affairs.
Although it is premature to judge the long-term impact of the IP Court's ruling, if the ruling becomes a trend, while a right holder could more readily fulfil its burden of proof, the opposing party might be placed in a relatively disadvantageous situation in terms of market competitiveness.
Wind YW Huang
Saint Island International Patent & Law Offices
7th Floor, No.248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, R.O.C.
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377
siiplo@mail.saint-island.com.tw
www.saint-island.com.tw
