Under the Trade Secret Act in Taiwan (the “Act”),[1] trade secret theft or misappropriation is a serious offense carrying severe criminal penalties.[2]  When a prosecutor is investigating a case where an alleged trade secret (including undisclosed information which has yet to be ascertained as a trade secret) is involved or in dispute (a “trade secret case”), sometimes it would be helpful to facilitate further investigation if the investigating prosecutor was allowed to disclose some investigation information to some related persons during the prosecutorial investigation.[3]  However, prior to the recent amendment to the Act discussed below, an investigating prosecutor was not allowed to do so because the Code of Criminal Procedures in Taiwan (the “Code of Criminal Procedure”)[4] demands the maintenance of the confidentiality of investigation information to ensure the integrity of the investigation.[5]  Even if a prosecutor had been allowed to disclose some investigation information of a trade secret case to some related persons during the prosecutorial investigation of a trade secret case, the disclosing prosecutor had no authority under the laws in Taiwan then to order the information recipients (who have access to investigation information disclosed by the disclosing prosecutor) to keep the investigation information confidential.[6]  Neither did these information recipients have any obligation to keep the investigation information confidential.[7]  In that event, an owner of a trade secret (a “trade secret owner”) might be concerned that his trade secret would be further leaked during the prosecutorial investigation of a trade secret case.[8]  The concern of the further leakage of trade secrets might dissuade a trade secret owner from cooperating with an investigating prosecutor during the prosecutorial investigation of a trade secret case (e.g., a trade secret owner might refuse to disclose his trade secret or produce any case-related evidence).  The prosecutorial investigation and prosecution of a trade secret case might be weakened or impeded as well.[9]
 
On December 31, 2019, the Legislative Yuan in Taiwan passed an amendment to the Act (the “Amendment”) addressing the aforementioned further leakage concern during the prosecutorial investigation of a trade secret case.[10]  The Amendment was promulgated on January 15, 2020,[11] and came into force on January 17, 2020.[12]  Prior to the promulgation of this Amendment, the laws in Taiwan lacked an adequate and sufficient mechanism in prosecutorial investigation demanding persons accessing investigation information during the prosecutorial investigation of a trade secret case to keep the accessed information confidential.  The Amendment introduces a new mechanism of an investigation confidentiality protective order issued by a prosecutor during the prosecutorial investigation of a trade secret case (an “ICPO”) with the hope to prevent trade secret leakage in the prosecutorial investigation phase.[13]  This article provides a brief overview of the new ICPO mechanism by covering the following highlights of this mechanism: (1) the issuing authority and recipient(s) of an ICPO; (2) an ICPO is not a civil remedy; (3) the form of an ICPO; (4) the requirement of giving related persons an opportunity to express their opinion; (5) when does an ICPO take effect; (6) the content of an ICPO; (7) the revocation and amendment of an ICPO; (8) the consequences of violating an ICPO; and (9) the extraterritorial application of an ICPO.
 
I.  Issuing Authority and Recipient(s)
 
Under the Amendment, a prosecutor who is investigating a trade secret case may, when the prosecutor considers it necessary for the prosecutorial investigation of the case, issue an ICPO to any following persons who accessed the investigation information (an “ICPO Recipient”): (1) a suspect; (2) an accused (a defendant); (3) a victim; (4) a complainant; (5) an agent ad litem of a complainant; (6) a defense counsel; (7) an expert witness; (8) a witness; or (9) any other related persons.[14]  An ICPO imposes a confidentiality obligation on an ICPO Recipient.[15]  An ICPO Recipient is prohibited from (1) using any investigation information for any purposes other than for the prosecutorial investigation purpose; or (2) disclosing any investigation information to anyone who is not subject to an ICPO.[16]  However, this confidentiality obligation does not apply to any information obtained or possessed by an ICPO Recipient prior to the issuance of that ICPO.[17]  The legislature carves out the aforesaid information from the foregoing confidentiality obligation because the legislature would like to protect the business operation or work of an ICPO Recipient (whose alleged trade secret infringement is yet to be decided) from being significantly affected by an ICPO.[18]
 
II.  Not a Civil Remedy
 
An ICPO is not a civil remedy available to a complainant desiring to prevent or to cease and desist an alleged infringement of his trade secret.[19]  A complainant who thinks that his trade secret has been infringed and desires to prevent or to cease and desist the said trade secret infringement may consider, through civil actions,[20] applying to a court requesting for the prevent or the cease and desist of such infringement as set forth under the Act.[21]  According to the legislature, a trade secret case under prosecutorial investigation means that the question of whether or not there has been a trade secret infringement is yet to be decided.[22]  The legislature thus considers it inappropriate to allow a prosecutor to issue an ICPO to prevent or to cease and desist an alleged trade secret infringement.[23]
 
III.  Form
 
A prosecutor should order an ICPO in either writing (i.e., a written ICPO) or oral (i.e., an oral ICPO).[24]  When a prosecutor orders an oral ICPO, the prosecutor (1) should notify the ICPO Recipient(s) of that oral CPO in the presence of the ICPO Recipient(s); (2) should record that oral ICPO in transcripts; (3) may give a trade secret owner an opportunity to express his opinion; and (4) should produce a written form of that oral ICPO within seven days thereafter.[25]  The foregoing tells that a written ICPO refers to an ICPO issued in writing when a prosecutor orders that ICPO.[26]  On the other hand, an oral ICPO means an ICPO initially issued orally and followed with the production of the written form of that oral ICPO within a seven-day period afterward.[27]
 
The legislature noted that a prosecutor should keep an eye out for the content and accessibility of transcripts recording an oral ICPO before turning the transcripts along with other evidence to a competent court as evidence supporting the prosecutor’s case.[28]  Confidential information should be hidden from view when necessary.[29]  Moreover, the aforesaid seven-day period is a period for which a prosecutor issuing an oral ICPO has an obligation to produce that oral ICPO in written form.[30]  It does not mean that other related persons should be served with or be informed of that oral ICPO within the aforesaid seven-day period.[31]
 
IV.  Opportunity to Express Opinion
 
An ICPO in writing (e.g., a written ICPO or the written form of an oral ICPO) should be served to the ICPO Recipient(s).[32]  A trade secret owner (whose trade secret is involved in a trade secret case under prosecutorial investigation) should also be notified of that ICPO in writing.[33]  Prior to the aforesaid service and notification of an ICPO in writing, a trade secret owner should be given an opportunity to express his opinion.[34]  If an issuing prosecutor once gave a trade secret owner an opportunity to express his opinion when ordering an oral ICPO, it would be unnecessary for the issuing prosecutor to give the same trade secret owner another opportunity to express his opinion before the service and notification of the written form of the same oral ICPO.[35]  
 
In the legislature’s view, giving a trade secret owner an opportunity to express his opinion during the course of the issuance of an ICPO would be helpful to safeguard the rights and interests of a trade secret owner.[36]  However, sometimes it is possible that a trade secret owner is unknown or unable to express his opinion when an oral ICPO is issued in an emergency.[37]  In that case, an issuing prosecutor may decide the proper measures to take under the circumstances.[38]  On the other hand, there is generally no emergency situation when a prosecutor (1) issues a written ICPO, or (2) produces the written form of an oral ICPO within the seven-day period following the prosecutor’s order of that oral ICPO.[39]  Thus, a trade secret owner should be given an opportunity to express his opinion before the service and notification of an ICPO in writing.[40]  Furthermore, it will not be considered a violation of the Amendment’s requirement (of giving a trade secret owner an “opportunity” to express his opinion before the aforesaid service and notification of an ICPO in writing), as noted by the legislature, if a trade secret owner is not given an opportunity to express his opinion due to any of the following reasons: (1) the trade secret owner is unknown, (2) there is no way to notify the trade secret owner; or (3) there is any other factual obstacles preventing a trade secret owner from expressing his opinion.[41]
 
V.  When Does an ICPO Take Effect?
 
A written ICPO becomes effective on the date that written ICPO is served to the ICPO Recipient(s).[42]  On the other hand, an oral ICPO takes effect when the prosecutor notifies the ICPO Recipient(s) of that oral CPO.[43]
 
VI.  Content
 
The Amendment requires that an ICPO should record the following items: (1) the ICPO Recipient(s); (2) the investigation information that should be kept confidential; (3) the prohibited or restricted conduct prescribed in Article 14-1, Paragraph 2, of the Act (i.e., a prohibition or restriction on (i) the use of any investigation information for any purposes other than for the prosecutorial investigation purpose; and/or (ii) the disclosure of any investigation information to anyone who is not subject to an ICPO); and (4) the consequences of violating the said ICPO.[44]  According to the legislature, an ICPO must record the foregoing items because an ICPO should (1) identify the person(s) subject to the ICPO; (2) specify the scope of the investigation information that should be kept confidential; (3) describe what conduct is prohibited or restricted; and (4) let the ICPO Recipient(s) know the criminal liabilities imposed under Article 14-4 of the Act for the violation of an ICPO.[45]  The aforesaid content requirement, as noted by the legislature, should also apply to the transcripts recording an oral ICPO.[46]  This is for the sake of avoiding any discrepancy between the transcripts recording an oral ICPO and the written form of that oral ICPO produced afterward.[47]
 
VII.  Revocation and Amendment
 
A.  Events
 
During the prosecutorial investigation of a trade secret case, the cause for confidentiality might cease to exist or change following the progress of the investigation of the case.[48]  The Amendment thus sets forth that an issuing prosecutor may ex officio revoke or amend an ICPO in any of the following events: (1) when the cause for confidentiality in the prosecutorial investigation phase no longer exists; or (2) when it is necessary to change the content of an ICPO.[49]  This indicates that the followings lie in the discretion of the issuing prosecutor: (1) whether it is necessary to revoke or amend an ICPO; (2) the scope of the revocation of an ICPO; and (3) the scope of the amendment of an ICPO.[50]  Moreover, an issuing prosecutor may, ex officio or upon the request of an ICPO Recipient, revoke or amend an ICPO when (1) the issuing prosecutor’s decision not to prosecute becomes final; (2) the issuing prosecutor’s decision to defer the prosecution becomes final; or (3) any parts of an ICPO is not within the scope of criminal prosecution.[51]
 
B.  Opportunity to Express Opinion; Services; Challenge to a Revocation or Amendment Decision
 
Prior to rendering a decision to revoke or amend an ICPO, the issuing prosecutor may give the ICPO Recipient(s) and the trade secret owner(s) an opportunity to express their opinion.[52]  Upon the issuing prosecutor’s decision to revoke or amend an ICPO, a written form of the revocation decision or the amendment decision should be served to the ICPO Recipient(s) and the trade secret owner(s).[53]  An ICPO Recipient or a trade secret owner may file to a court challenging a decision by the issuing prosecutor to revoke or amend an ICPO.[54]  The provisions of Articles 403 to 419 of the Code of Criminal Procedures, setting forth the rules for an interlocutory appeal in the criminal court proceedings, should be applied mutatis mutandis when an ICPO Recipient or a trade secret owner challenges a decision by the issuing prosecutor to revoke or amend an ICPO.[55]
 
In the opinion of the legislature, a decision by the issuing prosecutor to revoke or amend an ICPO far-reaching impacts on the rights and interests of the ICPO Recipient(s) or the trade secret owner(s).[56]  An ICPO Recipient or a trade secret owner deserves to be given an opportunity to seek legal relief if an ICPO Recipient or a trade secret owner disagrees with a decision by the issuing prosecutor to revoke or amend an ICPO.[57]  In addition, it is necessary to set the beginning date of the period for an ICPO Recipient or a trade secret owner to challenge an issuing prosecutor’s decision to revoke or amend an ICPO, which is a right of an ICPO Recipient or a trade secret owner under the Amendment.[58]  Therefore, the Amendment stipulates that (1) the ICPO Recipient(s) and the trade secret owner(s) should be given an opportunity to express their opinion; (2) the written form of a revocation decision or an amendment decision should be served to the ICPO Recipient(s) and the trade secret owner(s);[59] and (3) the ICPO Recipient(s) and the trade secret owner(s) should be given an opportunity to seek legal relief through challenging a decision by the issuing prosecutor to revoke or amend an ICPO.[60]
 
C.  The Trial Stage
 
After initiating the criminal prosecution of a trade secret case, the prosecutor should notify the trade secret owner(s) and the ICPO Recipient(s) of the followings: (1) which part of an ICPO falls within the scope of criminal prosecution; and (2) the rights and interests of the trade secret owner(s) and the ICPO Recipient(s) under an ICPO or a confidentiality preservation order issued by a court (a “CPO”).[61]  The required notification by the prosecutor would urge the trade secret owner(s) and the ICPO Recipient(s) to promptly exercise their rights.[62]
 
When a case enters into the trial stage, the determination of whether the information kept confidential under an ICPO should remain confidential falls within the discretion of the court trying the case.[63]  In Taiwan, the Intellectual Property Case Adjudication Act[64] has set forth provisions governing the issuance of a CPO by a court to prevent trade secret leakage during the trial of intellectual property cases.[65]  Accordingly, following the prosecutor’s initiation of criminal prosecution of a trade secret case, a trade secret owner or the prosecutor may file a motion to the court seeking a CPO pursuant to the Intellectual Property Case Adjudication Act.[66]  From the date that the court ruling of granting or denying a CPO becomes final, any parts of an ICPO falling within the scope of a CPO motion should no longer be effective.[67]  Any challenges to a CPO (e.g., a motion to revoke a CPO or an appeal against a court ruling revoking a CPO) should be conducted according to the Intellectual Property Case Adjudication Act.[68]
 
In the case that a trade secret owner or a prosecutor fails to file a motion to the court seeking a CPO within “thirty days” following the court’s receipt of a case, the legislature thinks that the ICPO Recipient(s) should be given an opportunity to request the court to revoke an ICPO.[69]  Thus, in the foregoing situation, the court may, upon the request of an ICPO Recipient or the prosecutor, revoke an ICPO.[70]  If the court later renders a ruling revoking an ICPO as requested,[71] any parts of an ICPO falling within the scope of criminal prosecution should no longer be effective from the date that the court ruling revoking an ICPO becomes final.[72] 
 
It is worth noting that an ICPO Recipient or the prosecutor is not allowed to request a competent court to revoke an ICPO if a trade secret owner or a prosecutor has filed a motion to the court seeking a CPO within thirty days following the court’s receipt of a case.[73]  According to the legislature, prohibiting an ICPO Recipient or the prosecutor from doing so under such circumstances would be helpful to resolve disputes effectively and prevent any discrepancies between court rulings.[74]  Moreover, the thirty-day period following the court’s receipt of a case mentioned above does not imply that a trade secret owner or a prosecutor may file a motion to the court seeking a CPO only within this thirty-day period.[75]  Instead, as pointed out by the legislature, after the aforesaid thirty-day period a trade secret owner or a prosecutor may nonetheless file a motion to the court seeking a CPO (1) before the court renders any ruling on a request for revoking an ICPO; or (2) for any parts of an ICPO which has not been revoked by the court upon the request of any ICPO Recipient(s).[76]
 
A court should consult the trade secret owner(s) and the prosecutor before rendering a court ruling that (1) grants a CPO; (2) denies a CPO; or (3) revokes an ICPO.[77]  This consulting requirement, as noted by the legislature, helps (1) the trade secret owner(s) to protect trade secret(s); and (2) the prosecutor to properly react after obtaining a better picture regarding any changes to an ICPO before and after the prosecutor’s initiation of criminal prosecution.[78]  Furthermore, a court ruling that (1) grants a CPO, (2) denies a CPO, or (3) revokes an ICPO should be served to the trade secret owner(s), the ICPO Recipient(s), and the prosecutor.[79]  A prosecutor, an ICPO Recipient, or a trade secret owner may make an interlocutory appeal against a court ruling that (1) grants a CPO; (2) denies a CPO; or (3) revokes an ICPO.[80]  The service of the aforesaid court ruling would be helpful to the determination of the beginning date of the period for making an interlocutory appeal against an aforesaid court ruling.[81]  In addition, the provisions under the Code of Criminal Procedures providing the rules for an interlocutory appeal in the criminal court proceedings should be applied mutatis mutandis when a prosecutor, an ICPO Recipient, or a trade secret owner makes an interlocutory appeal against a court ruling that (1) grants a CPO; (2) denies a CPO; or (3) revokes an ICPO.[82]
 
VIII.  Consequences of Violation
 
Under the Amendment, a violation of an ICPO constitutes an offense subject to a sentence of imprisonment not more than three years, detention, or in lieu thereof, or in addition thereto, a fine of not more than one million New Taiwan dollars (NT$ 1,000,000).[83]  In addition to the criminal penalties imposed under the Amendment, a violation of an ICPO might result in other criminal or civil liabilities under the Act, when applicable.[84]
 
A violation of an ICPO does not seem to be limited to any unauthorized use or unauthorized disclosure of “trade secret.”[85]  The phrasing of the Amendment does not seem to imply that only trade secret is protected under an ICPO.[86]  When a prosecutor is investigating a trade secret case, sometimes the information in dispute has not been ascertained as a trade secret.  In addition, as noted by the legislature, an ICPO Recipient has a confidentiality obligation to keep confidential of any “investigation information and other people’s confidential materials” accessed by the ICPO Recipient.[87]  Accordingly, an ICPO protects any investigation information (including but not limited to trade secret[88]) recorded in an ICPO.[89]  The unauthorized use or unauthorized disclosure of any investigation information protected under an ICPO would constitute a violation of an ICPO.[90]  An ICPO Recipient failing to comply with any prohibitions or restrictions specified in an ICPO would commit an offense of violating an ICPO.[91]
 
The provision setting forth the consequences of violating an ICPO under the Act is somehow similar to the provision prescribing the consequences of violating a CPO under the Intellectual Property Case Adjudication Act.[92]  The Intellectual Property Case Adjudication Act stipulates that a violation of a CPO will result in consequences such as a sentence of imprisonment not more than three years, detention, or in lieu thereof, or in addition thereto, a fine of not more than one hundred thousand New Taiwan dollars (NT$ 100,000).[93]  Nonetheless, a prosecutor may initiate the criminal prosecution for an offense of violating a CPO only upon complaint.[94]
 
The consequences of violating an ICPO are apparently more severe than the consequences of violating a CPO.  According to the legislature, a violation of an ICPO is taken as contempt of law and constitutes an infringement of a legally protected interest (Rechtsgut) of the state.[95]  Unlike a violation of a CPO under the Intellectual Property Case Adjudication Act, in which the criminal prosecution for such an offense may be initiated only upon complaint,[96] a prosecutor may initiate the criminal prosecution for a violation of an ICPO under the Act without any complaint.[97]
 
IX.  Extraterritorial Application
 
The aforementioned criminal statute stipulating the consequences of violating an ICPO applies to a violation of an ICPO taking place in Taiwan and also any jurisdictions elsewhere in the world, regardless of whether such violation conduct is punishable by the law of the place where the conduct is committed.[98]  This extraterritorial application statute under the Amendment creates an exception to the general doctrine of the extraterritorial application of criminal statutes in Taiwan.[99]  The Criminal Code in Taiwan (the “Criminal Code”)[100] applies to a national of Taiwan or a person from any jurisdictions elsewhere in the world who commits an offense: (1) outside Taiwan; (2) not an offense specified in Article 5 and Article 6 of the Criminal Code; (3) punishable for not less than three years of imprisonment; and (4) punishable by the law of the place where the offense is committed.[101]  Under the aforesaid general doctrine of the extraterritorial application of criminal statutes in Taiwan, it will be impossible for a prosecutor to prosecute an ICPO violation offense under the Act when that offense is committed at a place where the law of that place does not punish the said offense.[102]  In view of the foregoing, the legislature thus excludes the condition of “an offense is punishable by the law of the place where the offense is committed” to avoid the aforesaid loophole and allow prosecutors to prosecute an ICPO violation offense under the Act even if an ICPO violation takes place outside Taiwan.[103]
 
X.  Conclusion
 
The Amendment marks a milestone development of trade secret laws in Taiwan because the Amendment provides a new ICPO mechanism available to prohibit an ICPO Recipient from unauthorized using or unauthorized disclosing any investigation information accessed by that ICPO Recipient during the prosecutorial investigation of a trade secret case.[104]  This new ICPO mechanism creates an exception to the demand under the Code of Criminal Procedure for maintaining the confidentiality of investigation information.[105]  Moreover, the new ICPO mechanism may serve to prevent trade secret leakage during the prosecutorial investigation of a trade secret case.[106]  The information protected under an ICPO could be any investigation information (including but not limited to trade secret[107]) recorded in an ICPO,[108] including without limitation (1) the information gathered or obtained by the investigating prosecutor during the prosecutorial investigation of a trade secret case; and (2) the information disclosed during the prosecutorial investigation of a trade secret case by any person, such as a victim (e.g., a trade secret owner), a suspect, an accused (a defendant), or a witness.
 
The new ICPO mechanism is expected to strengthen the protection of trade secrets under the laws in Taiwan.[109]  It remains to be observed in the future (1) whether and how this new ICPO mechanism will be effectively implemented and enforced; (2) whether any concern arises following the implementation of this new ICPO mechanism;[110] and (3) what impacts will be brought on by this new ICPO mechanism in reality.
 

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