110年5月號 道 法 法 訊 (349) |
DEEP & FAR |
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The System of the Investigation Confidentiality
Protective Order is Incorporated into the Trade Secrets Act |
周鐸蓁 專利一組主任 •台灣大學農業工程學系 •成功大學醫學工程研究所 |
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The amendments
including incorporation of the investigation confidentiality protective order
system were approved after the third reading by the Legislative Yuan, so that
the protection of any trade secrets under investigation can be improved. Any one violating the investigation
confidentiality protective order shall be punished by imprisonment for up to
three years for preventing the second leak of trade secrets, so that the
involved enterprise may feel free to file a lawsuit and it will help the
prosecutor to speed up investigating and finishing a case. The amendments also strengthen the
protection of trade secrets of an alien to include the stipulations where
an unrecognized foreign juridical person may file a complaint, initiate a
private prosecution or institute a civil suit, and where the principle of
reciprocity is presented, so as to attract international investments for facilitating
industries development.
The system
incorporation of the investigation confidentiality protective order originates
from the “conference for reviewing the effectiveness of introduced the
supplemented stipulations imposing the criminal liability in the Trade Secrets
Act” as held by the Intellectual Property Office in February, 2017. In the conference, the industry
representatives consider that it still needs improvements in the trade secret
infringement cases. For speeding up
investigating and finishing a trade secrets case, introducing the investigation
confidentiality protective order system into the investigation phase similar to
that applied by the court, may encourage the concerned enterprise to submit
relevant information without worrying a second leak of the trade secrets. In addition, the elements of the
investigation confidentiality protective order system can be traced back to the
policy “strengthening protection of the trade secrets” that is one of the 8
counter-policies as proposed by the Executive Yuan in March, 2018 in response
to the Chinese mainland’s offer of 31 incentives to Taiwan. The main points of the investigation
confidentiality protective order system are as follows:
1. A prosecutor
investigating a trade secret case may, when necessary, issue an investigation
confidentiality protective order.
2. The person
subject to the investigation confidentiality protective order shall not utilize
the investigation contents for any purpose other than the investigation
procedures, or reveal the same to any person not subject to the investigation
confidentiality protective order.
3. The
investigation confidentiality protective order shall be issued in writing or
verbally, and the owner of the trade secrets shall be afforded an opportunity
to express opinions thereon; there are also the stipulations regarding revoking
or amending the investigation confidentiality protective order, and
transitioning to the confidentiality preservation order issued by the court.
4. A person
violating an investigation confidentiality protective order shall be punished
by an imprisonment for up to three years, a short-term imprisonment, and/or a
fine of up to NT$1 million.
In fact, in 2013,
relevant stipulations imposing the criminal liability were introduced into the
Trade Secrets Act. However, during
the investigation under these stipulations, an enterprise, if intending to
prove that its trade secrets are stolen by a party, normally, has to submit
more evidences associated with the trade secrets, so that the enterprise will
worry about a second leak of the trade secrets which will possibly drive the
enterprise to further risk leaking more trade secrets to the competitor. This is why an enterprise’s will to file
the lawsuit was often hampered in the past. After the mentioned amendments, it is
anticipated that: 1. the worry over the second leak will be effectively
alleviated to encourage the enterprise to positively submit as more evidences
as possible, so as to assist the prosecutor in investigating the trade secret
infringement cases; 2. the crime of stealing trade secrets can be timely
combated to achieve the object of speeding up investigating and finishing a
case, so as to improve the protection of trade secrets.
Sotera Wireless,
Inc. v. Masimo Corp.案摘要(二)：
委員會分析六個Fintiv要素中的每一個，接著解釋要素中的四個“既非利、亦非不利於否決成案。”接著，在論及關於“法院與當事人在平行程序中之心血”的要素時，委員會注意到法院與當事人已投入“至今在平行程序中相對有限的心血”。並且，“聲請的時機是合理的”。因此，該要素偏重利於不行使否決成案的裁量權。
最後，在論及“聲請與平行程序中所提出爭點的重疊”時，委員會裁定此要素依35 U.S.C. § 314(a)偏重“極利於不行使否決成案的裁量權”。Sotera已經向地區法院提出“寬鬆約章”，該寬鬆約章同意：如果委員會使IPR成案，則Sotera將不會在地區法院訴求IPR中提出的“特定理由”或“IPR中所提出過或原本已有理由提出…的任何其它理由(即，依§102或103基於先前技術專利或印刷刊物可提出的任何理由)”。
委員會認定Sotera的約章“減輕地區法院以及委員會之間重複努力之任何疑慮，以及潛在衝突性裁決的疑慮”。該約章也確保IPR是“地區法院程序的「真正替代方案」”。
Raytheon
Technologies Corp. v. General Electric Co.案摘要：
No. 2020-1755 (Fed.
Cir. (PTAB) Apr. 16, 2021)；
Chen作成，由Lourie及Hughes協同
GE發動IPR程序而挑戰Raytheon專利中某些請求項之可專利性。該等請求項涵蓋燃氣渦輪引擎，該燃氣渦輪引擎具有該專利描述成“比先前技術中遠高”的“功率密度”範圍。GE宣稱該等請求項因為鑑於“Knip”的參考資料是顯而易見的，而不具可專利性。