Civil Procedure of Patent Litigation with the Dual Aims of Fairness and Efficiency (II)

Zhu Li: Civil Procedure of Patent Litigation with the Dual Aims of Fairness and Efficiency (II)

Mandatory evidence disclosure

Litigation in all countries, whether practicing common law or civil law, emphasizes bona fide litigation and takes truth discovery as the primary goal. It is the basic standard of modern litigation to stress the truth obligation and coordination duty. In mandatory discovery, the production of evidence and the burden of proof are completely separate. That is to say, as long as there are relevant laws, the parties have an obligation of evidence discovery, whether or not there is a burden of proof on them. Only then can we trace objective facts more accurately. If the task of ascertaining the truth is left to the parties completely, especially the plaintiff, the truth cannot be discovered in many cases.

In the field of patent law, countries practicing the civil law system have not established the evidence discovery system, but are trying a limited one. Japan, France, and Germany have the system of the order of writ, in which the respondent cannot refuse to offer the written document when the document is used in the lawsuit, the applicant requires to submit or read this document, and this document is written for the benefit of the evidence provider or for the legal relationship between the evidence provider and the holder of the document.

1. Infringing product seizure and evidence collection system (France)

In France, in order to prove infringement, any person entitled to file a lawsuit can file an application for seizure to a court with jurisdiction. After the court makes a ruling, the judge will send a bailiff, with the assistance of the expert appointed by the plaintiff, to record in detail the infringement, extract samples, and seize suspected infringing products and relevant documents or the raw materials and tools for the infringement. The bailiff must record in detail what he sees and what the expert tells him. Evidence collected by the bailiff will be given to the applicant, who will decide how to use it.

2. Information disclosure obligation (Germany)

In Germany, the IP owner can, through prosecution, force the other party to provide evidence. The latest example is Japan’s revision of its patent law last month, which put in place a system of evidence collection order. It requires the other party to respond, submit bills, present documents, etc., and request the court to order the other party to provide information and tolerate the search and inspection of products or places when the other party seriously violates laws. This is similar to the French system of infringing product seizure and evidence collection mentioned above.

3. System of evidence collection order (Japan)

The newly revised Japanese Patent Law stipulates that the plaintiff of the patent infringement lawsuit can request the court to collect evidence. If the requirements of order are met, the court that handles the infringement dispute will issue an evidence collection order; the designated neutral and impartial expert will review documents managed by the defendant or carry out on-site evidence collection of the defendant's equipment and facilities, and submit a report to the court.

Evidence collection order must meet three requirements, namely necessity, complementarity and rationality. Necessity means that the object of evidence collection should be necessary for discovering infringement evidence; complementarity means that plaintiffs applying for evidence collection should explain the reasons why relevant evidence cannot be collected by themselves or through other methods; and rationality is to avoid the excessive burden posed on the accused infringer. When receiving an application, the court should take into consideration the time needed for evidence collection, the burden posed the accused infringer, other factors and the expert recusal system.

4. Specific answer obligation and inspection tolerance obligation (South Korea and Chinese Taiwan)

The patent laws of South Korea and Chinese Taiwan have provided specific pleading obligation and inspection tolerance obligation. When the plaintiff sues and satisfies evidence requirements, the defendant needs to actively file an answer and provide his own implementation methods if the defendant denies the implementation of patent infringement alleged by the plaintiff. If the court accepts that the defendant has reasonable grounds for not providing specific implementation methods, it may conduct an on-site inspection and limit relevant personnel involved in the inspection.

In conclusion, countries practicing the civil law system have, to some extent, introduced a limited evidence discovery system.

Instant judgment of litigation issues

Stage control and fact investigation have made certain litigation issues meet judgment requirements. Then, the court can, in accordance with the request of the parties, make a timely decision on certain issues and allow the parties to file appeals on some issues.

China is going to witness a widespread application of intermediate and partial judgment. Germany has a system of partial judgment of infringement and timely verbal disclosure of the judge’s judgment. China is also trying to introduce partial judgment on infringement. In my opinion, this will become normalized in China with the increasing role played by provisions of the intellectual property law on submission of infringement account and information provision obligation. If infringement judgment is relatively easy and calculation is relatively difficult, courts may focus more on partial  judgment on infringement in the future. In addition, it is also important to coordinate partial judgment of infringement and temporary injunction.

Problems in practice require reforms of the civil procedure system. However, in many cases, laws are not clearly defined therefore courts can dominate the design and operation of many procedure rules. Patent litigation will become more efficient in China, if stage control of litigation, mandatory evidence discovery and instant judgment of litigation issues can be implemented.