Taiwan
Answer ... During the civil litigation proceedings, either party may move for a court order that requests the opposing party or a third party to disclose documentation for the purpose of proving infringement, calculating damages or proving other relevant facts. Under Article 344(1) of the Code of Civil Procedure, a party-in-suit must produce the following documents:
- documents to which it has made reference in the course of the litigation;
- documents of which the opposing party may require delivery or inspection pursuant to applicable laws;
- documents that were created in the interests of the opposing party;
- commercial accounting books; and
- documents that were created regarding matters relating to the action.
Under Article 345 of the Code of Civil Procedure, where a party disobeys an order to produce documents without justifiable reason, the court may, at its discretion, take as the truth the opposing party’s allegation with regard to such documents or the fact to be proved by such documents.
A major amendment to the Intellectual Property Case Adjudication Act passed through three readings at the Legislative Yuan on 12 January 2023 and was promulgated by a presidential decree of 15 February 2023. The newly amended Intellectual Property Case Adjudication Act, which consists of 77 articles in total, will take effect on 30 August 2023.
According to Articles 19 to 26 of the amended Intellectual Property Case Adjudication Act, an ‘investigator system’ has been newly introduced for patent infringement cases. This system is modelled on the Japanese Patent Law and establishes a legally mandated procedure for gathering evidence. The purpose of this amendment is to address the challenges posed by advancements in technology, where relevant documents or information-bearing devices are often held or possessed by the defendant or third parties, making it difficult for the patent holder to prove patent infringement.
Under this system, patent holders may apply to the court for the appointment of an investigator by demonstrating:
- that their rights or legal interests have been or are likely to be infringed; and
- the reasons why they are unable to obtain evidence on their own or through other means.
If granted, the appointed investigator, with the court’s permission, can access the matter to be examined and inspect the relevant documents or devices held or managed by the party under investigation or a third party. The investigator also has the authority to question the party under investigation and request the production of necessary documents. If the party under investigation unjustifiably refuses or obstructs the investigation, the court may, as sanction, presume the disputed fact asserted by the patent holder to be true.
Taiwan
Answer ... Under Article 348 of the Code of Civil Procedure, Article 344(1)(2) ~ Article 344(1)(5) shall apply mutatis mutandis to third-party disclosure of documents, which include the following:
- documents of which the opposing party may require delivery or inspection pursuant to applicable laws;
- documents that are created in the interests of the opposing party;
- commercial accounting books; and
- documents that are created regarding matters relating to the action.
Under Article 349(1) of the Code of Civil Procedure, if a third party disobeys an order to produce documents without justifiable reason, the court may issue a ruling imposing a fine of up to NTD 30,000.
Taiwan
Answer ... Taiwan has no specific statute on attorney-client privilege. Article 36 of the Attorney Regulation Act provides that “an attorney shall have the rights and obligation to keep confidential any secret coming to his/her knowledge as a result of performing his/her duties, unless otherwise provided by law”. Thus, an attorney is obliged to keep information from the client confidential. However, it remains unclear whether a lawyer may refuse to produce evidence solely based on the Attorney Regulation Act.
Article 307 of the Code of Civil Procedure further prescribes that a witness may refuse to testify in a case where he or she is to be examined with regard to a matter which he or she is obliged to keep confidential in the course of performing his or her official duties or conducting business. Accordingly, when an attorney is asked to testify on information in connection with his or her legal representation, the attorney may refuse to testify. However, based on Article 307 of the Code of Civil Procedure, it seems that it is only the lawyer who can assert such privilege, not the client. Thus, when it is the client who is taking the witness stand, it is not clear whether a lawyer could invoke such privilege and stop the opposing counsel from questioning on the communication between the lawyer and the client-witness.