IP owners should use investigation orders to defend their rights

Investigation orders – empowering a party’s attorneys to gather relevant evidence – are increasingly important in IP litigation, even though neither the Civil Procedure Law nor the Lawyers Law expressly provides for such a system, which is only used in certain higher people’s courts. Such orders increase the efficiency of litigation proceedings, reduce the workload of the courts and aid in adducing evidence and, as such, enterprises should actively seek to use them in litigation to safeguard their IP rights.

When a party is unable to collect evidence it needs, its attorneys can apply to the court for an investigation order entitling them to investigate and collect evidence from relevant entities, organisations and individuals. The court will issue the order after a review to determine its necessity.

This column discusses the utilisation of the investigation order system in IP litigation, the art of securing an investigation order, and things to bear in mind when applying for one.

Investigation target, content

The targets covered by an investigation order can be very broad, including entities, organisations and individuals who hold or keep the relevant evidence. Specifically, they usually include e-commerce platforms (such as Taobao, Tmall and JD.com), tax authorities, administrative law enforcement authorities, testing institutions, appraisal institutions, users who purchase or use infringing products, etc. For example, in patent infringement lawsuits, the concerned party is often reluctant to sue the users, so they apply for an investigation order to investigate and collect such evidence as sales contracts and invoices from users of the infringing product.

The evidence content targeted by investigation and collection mainly includes documentary evidence, electronic data and audio-visual materials. It generally does not include witness testimony or physical evidence. In IP litigation, the most common evidence gathered under an investigation order is that used for measuring damages, such as sales volumes and amounts of the infringing product obtained from the e-commerce platform. Furthermore, one can apply to obtain documents such as sales invoices, tax payment receipts and import-export forms from administrative authorities like tax authorities or customs.

Certain parties and lawyers erroneously believe that they can only investigate evidence of damages. But they can also apply to obtain evidence directly related to the specific technical content of the alleged infringing product. For example, in a patent infringement case involving a large piece of equipment or a large project, an application can be made to the court to investigate and collect technical documents, such as construction drawings, design drawings of the construction entity and design entity, which can then be used in a technical comparison to determine patent infringement.

Persuading the court

When selecting the court of competent jurisdiction, priority should be given to a court of the place where the higher courts of the province or special municipality have formulated their investigation order systems. Otherwise, there will be no basis but substantial resistance when applying for the investigation order when it is needed.

Even where courts have their own investigation order systems, parties may encounter inconsistencies in the criteria used by courts and case judges in different places to determine whether to issue an investigation order, especially when there is a lack of uniform provisions on investigation orders in laws or judicial interpretations. A party could use a big analysis of cases to select a court that has recently issued a relatively large number of investigation orders.

Applicants should provide as much prima facie evidence as possible. Some parties mistakenly believe that they need to make an application to the court for an investigation order only if they don’t have evidence, and therefore fail to provide prima facie evidence when applying, resulting in a denial of the application.

Applying an investigation order does not mean that the party and its lawyers need not conduct preliminary evidence collection and investigation. The party is required to explain in detail why the entity being investigated holds or keeps the evidence and provide prima facie evidence in support. For example, if a party wishes to apply for an investigation of a contract and the amount of a winning bid, it should provide the announcement of the winning bid as evidence.

It is necessary to accurately describe in the application document the specific name of the target, the specific titles and content of the evidence targeted in the investigation, and the reasons why the party cannot investigate and obtain the evidence. If the content is only generally described as “relevant documentation”, “status of property”, etc., without providing details, the court will refuse to issue the order.

When applying for an attorney investigation order, the party must clearly provide all the above-mentioned information to the court for evidence collection. The attorney needs to closely liaise with the party, the entity that keeps the evidence, and professionals familiar with the industry to understand industrial and commercial practices. They must also fully understand the general situation of collecting and filing the target evidence, in conjunction with the specific circumstances of the case, and provide an accurate and precise description of the evidence to be sought. This can also help the entity being investigated to co-operate with the investigation and provide the evidence required.

Of course, even if the party secures an investigation order, it may still encounter obstacles in the subsequent investigation. However, the investigation order system greatly enhances parties’ ability to adduce evidence, and many examples of its application show that the system plays an increasingly important role in safeguarding IP rights. Making skilful and active use of investigation orders in IP litigation better protects the lawful rights and interests of enterprises.

Chen Jian is a patent agent at Sanyou Intellectual Property Agency and director of Wan Rui Law Firm. He can be contacted at 86 10 8809 1921 or by e-mail at chenjian@bjwrlaw.com