Commissioned authentication before patent litigation

By Chen Jian, Wan Rui Law Firm
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Patent litigation often involves complicated technical and specialised issues. Authentication is an important way to resolve disputes in the judicial system. In recent years, more and more parties in litigation have chosen to use commissioned authentication services provided by judicial authentication institutions specialising in intellectual property.

However, many parties are confused about whether they can unilaterally engage an authentication agency, the validity of the authentication, and how to conduct authentication. This article discusses the commissioned authentication prior to patent litigation, based on judicial practices.

COMMISSIONED AUTHENTICATION

The existing laws and judicial interpretations do not explicitly provide whether a party can appoint an authentication agency at its discretion to give an expert opinion. Article 41 of the Provisions of the Supreme People’s Court on Evidence in Civil Proceedings (2019) provides that “where a party has evidence or reasons sufficient to refute the opinion issued by a relevant agency or person commissioned by the other party on a specialised matter, and applies for an authentication, the people’s court shall permit such an application”.

According to this provision, the opinion on specialised matters given by the professional agency appointed by a party is qualified as evidence by the law, although it is not an expert opinion defined in the Civil Procedure Law. If a party is entitled to present evidence, the written opinion from the unilateral commissioned authentication used by the party should be accepted as a form of evidence.

Commissioned authentication before patent litigation
Chen Jian
Managing Partner
Wan Rui Law Firm

The Supreme People’s Court also held, in Jiangsu Xinxing Construction Engineering v Li Yujin (2016): “Not all expert opinions given by an authentication agency appointed by a party unilaterally cannot be used as the basis of the ruling, and the court may decide on its admissibility according to the specific circumstances of the case.”

The Intellectual Property Court of the Supreme People’s Court also held the same view in Integrity Seed Industry v Denghai Pioneer Seed Industry (2021), stating: “The opinion on specialised matters given by the agency or person appointed by a party at its discretion is eligible as evidence, although it is not an expert opinion under the law.”

If the agency or person commissioned for authentication is qualified, the testing procedures are legitimate, the subject materials are from reliable sources, and the testing methods are scientific, and the other party does not provide sufficient evidence to the contrary after cross-examination, the court is very likely to admit the expert opinion from the authentication.

SIGNIFICANCE AND FUNCTION

One of the important functions of commissioned authentication before litigation is assessing relevant technical issues in advance to evaluate the possibility of winning the lawsuit. On the other hand, the parties may use expert opinions as important evidence to support their assertions. More and more courts have admitted expert opinions from unilaterally commissioned authentication after a strict examination. If the court admits such expert opinions, re-authentication will be avoided and technical disputes in the case will be quickly solved to accelerate the proceedings.

In addition, a party’s commissioned authentication may also be used in pre-litigation or non-litigation negotiations, and other dispute resolution procedures with the other party such as the support for an IPR infringement warning letter, the evidence of an e-commerce platform complaint, and a bargaining chip with the other party.

HOW TO USE AUTHENTICATION

Since the court and the other party often challenge the expert opinions from a party’s unilaterally commissioned authentication, the court applies stricter examination. Therefore, a specialist lawyer must be engaged to avoid procedural and substantive defects in unilaterally commissioned authentication.

The parties should pay due attention to the following items in unilaterally commissioned authentication:

    1. The legitimacy and authenticity of the subject materials should be ensured. In practice, the allegedly infringing products are usually purchased online or offline and put under seal by means of notarisation. It must be assured that the subject materials sent to the authentication agency are the same as those under the notarised seal. The acquisition, sampling and testing of the subject materials must be in the notary’s presence to ensure that the source of the subject materials is not challenged.
    2. Selection of authentication expert and agency. The authenticator with appropriate qualifications should be selected for commissioned authentication. The parties should, where possible, select an authentication agency from the court’s list of judicial authenticators. Also, the parties should examine whether the engaged expert has the necessary knowledge, experience and skills to address the relevant specialised issue.
    3. The subject matters of commissioned authentication must be factual issues only and conform to the provisions of article 19 of the Provisions of the Supreme People’s Court on Evidence in Intellectual Property Civil Litigation. The commissioned authentication should focus on factual issues such as the similarities and differences between the allegedly infringing technological solution and the corresponding patent, or between both technical characteristics in terms of means, functions and effects. No expert opinion should be given on such legal issues as patent creativity or infringement.
    4. After entry into the authentication process, the party’s lawyer and technician should give full and clear technical instructions to the authentication agency to facilitate smooth authentication. During the authentication process, the party should communicate with the authentication agency to ensure that the authentication method used is scientific, and that the testing and technical means are reliable.

Commissioned authentication is considerably flexible and forward-looking, which is meaningful for pre-litigation preparation and acceleration of the trial process. The parties should fully realise the significance and function of pre-litigation authentication, and fully and reasonably use this method to exercise their rights to protect their legitimate interests effectively.

Chen Jian is a managing partner at Wan Rui Law Firm. Wan Rui Law Firm is a member of Sanyou IP Group

Mi Tai Wan Rui Law Firm intellectual propertySanyou Intellectual Property Agency
16/F, Block A, Corporate Square
No.35 Jinrong Street, Beijing 100033, China
Tel: +86 10 8809 1921 / 8809 1922
Fax: +86 10 8809 1920
Email: sanyou@sanyouip.com

www.sanyouip.com

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