The Judicial Yuan Organized a Symposium on Issues With Respect to Deciding International Jurisdiction and Governing Laws for IP Matters. Scholars from Japan and Taiwan Exchange in-depth Discussions.

On 19 November 2009, the Judicial Yuan and National Chung Cheng University jointly organized a symposium with respect to Deciding International Jurisdiction and Governing Law – Using Civil Litigations on Intellectual Property Rights as Discussion Topics at the auditorium on the 3rd Floor of the Judicial Yuan.  President Lai, the president of the Judicial Yuan, delivered a speech at the symposium.

President Lai indicated that Taiwan’s intellectual property rights have developed vigorously during the past years and it has always been an important national policy to enforce protection of the intellectual property (IP) rights.  Taking patent rights for example, Taiwan ranked third in the average number of patent rights own by individual national, which only came next to Japan and the US.  Among the 42,000 some cases of granted patent applications last year (2008), 9,900 patent right holders are foreign nationals.  In addition, since the establishment of the Taiwan IP Court in July 2008, a high percentage of 20% of the cases pending for trial at the IP Court are involved with foreign-related matters.  Therefore, internationalization can be attributed as one of the characteristics for IPR cases.  IP Court when adjudicating cases is often facing with two major difficulties of deciding the appropriate international jurisdiction and choosing the governing laws.

The symposium has invited scholars from Taiwan and Japan to participate and give presentations on topics such as how do Japanese courts choose governing laws when adjudicating IP related cases, Japan’s practice on international adjudicatory jurisdiction and Taiwan’s international adjudicatory jurisdiction regarding foreign related IP disputes and choosing the appropriate governing laws when adjudicating cases.

For speeches related to the topic of international adjudicatory jurisdiction, Professor Shunichiro NAKANO (Professor Nakano) of KOBE University pointed out that patent validity issues should be under the jurisdiction of the country in which the patent is registered.  However, for cases involving patent infringement litigations, Professor Nakano indicated that the principal of exclusive jurisdiction should not be applicable.  For filing of patent invalidity during patent infringement litigation proceedings, the ruling court can decide the validity of the patent in question but its decision will only take effect between the parties.  Japanese academia and the common practice in Japan hold the same opinions as those of Professor Nakano.

For speeches related to the topic of choosing governing laws, Professor Shoichi KIDANA (Professor Kidana) of Waseda University presented the principals used to choose applicable laws by using judgments in Japan as references for discussion from the following aspects: the establishment of intellectual property right and its validity, infringement on IP rights, transfer of IP rights, execution of license agreement and consideration payable for employee’s invention, etc.

When adjudicating cases related to foreign matters, Taiwan courts nowadays are often able to elaborate on issues with respect to the determination of international adjudicatory jurisdiction and the decision for choosing applicable/governing laws.  This can be viewed as a great improvement in the Taiwan judicial system.  However, the determination of international adjudicatory jurisdiction is a procedural element which must be fulfilled before the case can be brought to trial by the relevant court.  Issues that are related to making decisions with respect to the applicable laws should be under the scope of substantive examination of a case.  In other words, when the court adjudicates a case, the said issues will arise in a sequential order.

During the process of the symposium, participating judges and guests actively voice their opinions and exchange their experiences.  This symposium has contributed to the future development of legal regimes related to adjudicating foreign matters, the refinement of adjudicating IP rights cases and rulings thereof. (2009.11)
/DC