Exploring expert evidence in patent matters

‘Expert opinion’ has been defined under section 45 of the Indian Evidence Act 1872 as “when the court has to form an opinion upon a point of foreign law or of science or art, or as to identity of handwriting or finger impressions, the opinions upon that point of persons specially skilled in such foreign law, science or art or in questions as to identity of handwriting or finger impressions are relevant facts. Such persons are called experts.”

FILING AN EXPERT OPINION

Patent matters are highly technical in nature, relating to new inventions in various scientific and technical fields, so the opinions of experts in these fields, whose testimony is trustworthy, reliable and supported by documents, becomes crucial.

In two recent Indian patent cases where the final arguments were heard after a fully-fledged trial, the courts emphasized the importance of expert testimony in patent matters to adjudicate upon the issue of patentability of the invention and to prove infringement.

Expert evidence is required in matters that are outside the knowledge and experience of the layperson, and the scientific question involved is assumed to be not within the court’s knowledge.

As has also been pointed out by the Apex Court in India, “where the science involved is highly specialized and perhaps even esoteric, the central role of an expert cannot be disputed”.

Pravin Anand is the managing partner of Anand and Anand, and Prachi Agarwal is a managing associate at the firm