China's New Provisions on Court Appointed Experts in IP Cases

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Intellectual property is a unique area of law, and tends to involve complicated and highly complex cases due to the immense technicality and expertise needed in handling such cases. This article looks at the recently issued Supreme People’s Court's "Provisional Regulations of the Supreme People’s Court on Several Issues Concerning the Participation of Technical Investigators in Intellectual Property Court Proceedings" and how it will be applied in China.

Comprehensive and effective intellectual property rights protection is regarded as an important objective for every government, especially because the protection of such rights in relation to the advancement of technology and innovation is a key element to furthering competition in an active marketplace. In this respect, China has come far in developing wide-ranging legislations and regulations
in relation to the protection of intellectual property rights, including laws such as the Trademark Law of the People’s Republic of China, Patent Law of the People’s Republic of China, and the Copyright Law of the People’s Republic of China. Its recent creation and development of courts specifically dedicated towards the adjudication of intellectual property matters further advances China’s movement in providing world-class avenues for relevant parties to settle their intellectual property rights issues. Supplementary elements to these courts, such as the recent addition of technical investigators to add expertise and technicality to the process, will only help the progression of intellectual property law in China, therefore adding to the expansion and growth of its economy as second largest in the world.

China’s intellectual property courts
The creation of specialised intellectual property courts is highly popular throughout the world, with the establishment of such courts in countries such as Japan, Portugal, Switzerland and the United Kingdom. Previously in China, intellectual property cases were held in the general civil court system and given judges with intellectual property law background in order to deal with any issues requiring specialisation and expertise in intellectual property law.

In August 2014, the Chinese government made a decision to establish specialised intellectual property courts in Beijing, Shanghai, and Guangzhou in an attempt to further enhance China’s intellectual property rights protection regime. Especially, the Chinese government recognised the need for such courts due to the already large and increasing number of intellectual property cases, with over 100,000 intellectual property cases heard in 2013 in the general civil court system. Therefore, the government sought to set in motion a three-in-one pilot campaign, still currently in progress, to establish a unified intellectual property tribunal hearing civil, administrative and criminal intellectual property matters under one roof.

On August 31, 2014, the NPC Standing Committee issued the Provisions on the Establishment of Intellectual Property Courts in Beijing, Shanghai and Guangzhou. On October 31, 2014, the People’s Republic of China Supreme People’s Court issued the Provisions on Jurisdiction over Cases of Intellectual Property Courts in Beijing, Shanghai and Guangzhou. While the Beijing and Shanghai Intellectual Property Courts shall have jurisdiction over cases in their respective cities, Guangzhou Intellectual Property Court shall have cross-regional jurisdiction over the entire Guangdong province.

The Provisions stipulated the jurisdiction for the intellectual property courts to hear the following cases:
1. first instance civil and administration cases related to patents, layout design of integrated circuit, new plant varieties, technological secrets, and computer software;
2. first instance judicial appeals against administrative decisions, such as those from the Trademark Review and Adjudication Board and Patent Review Board;
3. first instance civil cases regarding the recognition of well-known trademarks; and
4. second instance civil and administrative cases regarding copyright, trademark and unfair competition heard at first instance by district and primary courts.

Furthermore, the Beijing Intellectual Property Court shall have exclusive jurisdiction in the first instance on cases against:
1. decisions regarding allowance or validity of intellectual property rights including patents, trademarks, new varieties of plants, and layout design of integrated circuit;
2. decisions regarding issuance of a compulsory license, compulsory license fees or rewards involving patents, new varieties of plants, and layout design of integrated circuit; and
3. other administrative acts made regarding allowance or validity of intellectual property rights.

The establishment of the intellectual property courts seeks to improve the quality and efficiency of intellectual property litigation, especially with the added advantage of having civil and administrative cases tried by the same intellectual property court. Therefore, the aim to further improve the quality and consistency of judgments as well as efficiency in handling cases keeps China a leader in relation to the resolution of intellectual property disputes.

Technical investigators
In order to facilitate the improvement and advancement of the resolution of intellectual property disputes and in general ensure all intellectual property cases are handled with the highest expertise to reach a fair resolution, technical investigators are employed to provide technical expertise and opinion to the judges residing in intellectual property courts. To recognise and give effect to the operation of technical investigators, on 21 January, 2016, the Supreme People’s Courts released the Provisional Regulations of the Supreme People’s Court on Several Issues Concerning the Participation of Technical Investigators in Intellectual Property Court Proceedings (the ‘Provisional Regulations’). The Provisional Regulations is a first of a kind in China, and directly relates to the regulation of technical investigators in their activities in intellectual property courts.

Unlike expert witnesses, technical investigators play a supplementary role to assist judges to resolve technical issues, especially as most judges are highly versed in legal knowledge only, and most intellectual property cases are difficult to understand. Therefore, under Article 1 of the Provisional Regulations, technical investigators shall be deployed at the Intellectual Property Court as judiciary auxiliary staff, and a division of technical investigation shall be set up under the Intellectual Property Court to be held responsible for the routine management of technical investigators.

Technical investigators play an important role in the intellectual property courts with regards to case-related technical issues, by adopting the following duties and responsibilities under Article 6 of the Provisional Regulations:
1. pinpoint the focus of dispute as to technical facts by consulting litigation documents and evidential materials;
2. make recommendations as to the scope, sequence and method of investigation of technical facts;
3. participate in investigation, evidence collection, inspection, and preservation, and make recommendations as to the methods and procedures thereof;
4. participate in inquiries, hearings, and trials;
5. advance technical examination opinions, and attend collegiate panel deliberations;
6. assist the judge, when necessary, in calling together appraisers and professionals in related specific technical fields to gather appraisal opinions and advisory opinions thereof; and
7. complete other tasks assigned by the judge.

Furthermore, technical investigators are given powers under Article 7 of the Provisional Regulations, where it states that during a technical investigator’s participation in hearings, inquiries, and trials, the technical investigator, with the judge’s permission, may question the litigants, agents ad litem, witnesses, appraisers, inspectors and persons with specialised knowledge with regard to case-related technical issues. Therefore, this gives technical investigators an opportunity to get further involved in a proceeding to ensure all the necessary and relevant details are taking into account and the right decision is reached considering the merits of the case.

Technical investigators may provide an opinion, but they do not hold any sort of authoritative position within a proceeding. Under Article 8 of the Provisional Regulations, it states that in attending case deliberations, the technical investigator shall give an opinion with regard to case-related technical issues, and respond to inquiries of the judge about technical issues. The technical investigator shall have no right to vote on case adjudication. The technical investigator’s opinions shall be kept in the notes of deliberations, and the notes be signed by the technical investigator. Therefore, technical investigators are employed solely as a supplementary service for the court to ensure all details of a complex case have been understood properly and taken into account, resulting in a fair resolution of intellectual property disputes.

Previously, there were three avenues available for judges to seek assistance in understanding complicated and technical points of a case. Firstly, parties employed experts to give testimonies and clarify such issues and provide opinions in relation to technical points, however the impartiality of these experts were questioned due to the fact they were hired by the parties. Secondly, it was possible to hire an appraisal centre to testify on technology issues, however the high costs associated with hiring an appraisal centre rendered it unfeasible for every case, as well as the fact that the time it took for an appraisal centre to undertake the relevant tests and reach a conclusion had a detrimental effect on the efficiency of a trial. Finally, judges were able to establish a technology expert pool, in which they were able to consult privately with researches and technicians. However, in this case, these experts were not always able to provide accurate and opinion due to the lack of background knowledge of the case as well as timely and geographical restrictions. Therefore, technical investigators were a better fit in order to ensure professionalism and neutrality in technical fact-finding and the giving of advice.

Although the introduction of technical investigators have been a massive step forward in the intellectual property judicial system of China, the question remains on whether there is still any room for expert witnesses provided by the parties. Practically, the use for expert witnesses has been made redundant, as the primary role of expert witnesses were to provide the court with technical opinions and expertise to assist the court in understanding the case. Also, the use of both expert witnesses and technical investigators result in essentially an identical effect, as both provide information to the court, which means double the cost, double the resources, and double the time. However, parties should still be encouraged to bring their own expert witnesses because it might be a highly specialised area where the appropriate technical investigators have not been found, or there is a chance the technical investigators have failed to collect and report all necessary information. In order to be thorough, all information should be brought to the court to facilitate the interest of justice.

In the Beijing Intellectual Property Court, the use of a technical investigator for the first time occurred in October 2015, where the investigator, who worked at the Beijing Patent Examination Cooperation Centre of the State Intellectual Property Office, participated in a hearing. On the same day, 37 technical investigators were nominated to assist judges in tackling technically questionable points and clearing away any technical obstacles, such as circuit diagrams and mechanical structures. Specifically, the 37 nominated technical investigators were professionals from organisations including government agencies and universities, and are specialists in various fields, including photo-electricity, communications, medicine, biochemistry, materials, machinery and computers. Therefore, technical investigators of the court come from a wide background of fields, and are more than competent in assisting judges through the technical obstacles in intellectual property cases.

In the Shanghai Intellectual Property Court, 11 patent and technology specialists were recruited recently as technical investigators. Therefore, the litigation process in the intellectual property courts are increasingly becoming more dependent on the use of technical investigators and abandoning previous methods in relation to obtaining technical advice. It is recognised that an in-house technical expert is more likely to be impartial and professional in a proceeding, and due to the wide backgrounds such technical investigators are employed from, it is likely the expertise needed for the majority of intellectual property disputes will be met.

The position in the United States of America
Through the accession into the World Trade Organisation’s Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), signatories publically recognised the importance of developing an efficient and effective intellectual property rights protection regime. Therefore, although TRIPS does not specifically call for the establishment of a specialised intellectual property court, many countries do so on their own accord.

In the United States, the relevant institutions established include a specialised intellectual property rights trial court, a specialised intellectual property rights appeals court, and a specialised intellectual property rights appeals division. In stark comparison to China however, the United States legal system continues to rely on their judges and juries to decide technical issues. For example, the Federal Circuit comprises of many active judges and five senior judges, and it is regarded as a specialised intellectual property court, with the judges coming from many backgrounds, such as possessing doctoral degrees in Chemistry, previous careers in the bio-pharmaceutical industry, and academics who wrote extensively on patent law issues.

However, although judges may possess an impressive collection of knowledge and expertise in intellectual property matters, it is uncertain that they collectively possess enough to outweigh the benefits of having technical investigators and advisors on hand. In the U.S. Supreme Court’s landmark decision Markman v. Westview Instruments, Inc., 517 U.S. 370, it was held that judges are to evaluate and decide the meaning of the words used in patent claims. Therefore, the judgment assumes the judges are already well versed with expertise in intellectual property matters, and indeed, although many judges command the expertise needed to decide on a case, many still depend on lawyers for their understanding of the intellectual property matter at issue and its underlying technology, as well as the trade customs and industry norms. Therefore, in this regard, it is unfortunate there is currently no system in the United States similar to China’s where technical investigators or advisors are available on hand to provide expert opinion and assist in overcoming technical obstacles.

On the other hand, the expert witnesses introduced into the court by the parties is an adequate source of technical information.

For example, under Rule 702 of the Federal Rules of Evidence, it states that a witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
1. the expert’s scientific, technical, or other specialised knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
2. the testimony is based on sufficient facts or data;
3. the testimony is the product of reliable principles and methods; and
4. the expert has reliably applied the principles and methods to the facts of the case.

The judge and/or jury must intelligently evaluate the facts, which can only be done so with the application of some scientific, technical or other specialised knowledge provided by the expert witness. The rule accordingly recognises an expert’s role in providing an opinion for the ultimate goal of achieving understanding. In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), the Court charged trial judges with the responsibility of acting as gatekeepers to exclude unreliable expert testimony, such as testimony that is unfairly biased. Therefore, the United States employ the use of expert witnesses provided by the relevant parties to ensure the case is decided properly on its merits.

The position in Australia
In Australia, there are no specialised courts established in relation to the adjudication of intellectual property matters. However, Australian courts of general jurisdiction are staffed with specialist judges with intellectual property law backgrounds, and intellectual property cases are heard by special panels of judges in particular federal courts. For example, patent panels exist in the Federal Courts of Victoria, New South Wales, and Queensland; a copyright, trademark and design panel exists in Queensland, and in Victoria there is a general intellectual property panel. The High Court of Australia hears all appeals from the Federal Courts of Australia. Finally, Australia has a specialised tribunal for copyright cases only, named the Copyright Tribunal, which is an independent body administered by the Federal Court of Australia and has jurisdiction to hear statutory licensing and voluntary licensing matters.

Although Australia does not possess a system like China’s whereby technical investigators are available on standby to provide technical advice and expert opinions, under section 217 of the Patents Act 1990 (Cth), it states that a prescribed court may, if it thinks fit, call in the aid of an assessor to assist it in the hearing and trial or determination of any proceedings under this Act. Therefore, whether in a specialised tribunal/court or not, Australian judges have access to expert assistance in patent proceedings in appropriate cases. The term assessor is not defined under the Patents Act, however it was considered by the Australia Law Reform Commission in its report Managing Justice: A Review of the Federal Civil Justice System to mean an expert available for a judge to consult if the judge requires assistance in understanding the effect or meaning of expert evidence. In Genetic Institute Inc. v Kirin-Amgen Inc. (No. 2) (1997) 149 ALR 247, Heerey Justice noted the benefits of an assessor in a case involving complex and contested issues of molecular biology, and noted a non-expert judge would be aided by expert evidence, such as that provided by an assessor, to perform his judicial tasks better. Therefore, despite a lack of system providing technical advice and assistance, Australia has provided technical expertise to be given in appropriate cases under the relevant legislation.

Finally, Australia employs full use of expert witnesses in intellectual property cases in order to determine all details necessary to reach a proper decision. Expert evidence is exchanged as part of the witness process, and at trial, the experts may be cross-examined and re-examined. Expert evidence is only admissible if, amongst other things, the expert agrees to be bound the court’s rules and code of conduct, which states essentially that the role of the expert and its overriding duty is to assist the court, as opposed to the retaining party, therefore requiring the expert to remain impartial in relation to its expertise. Therefore, in Australia, expert witnesses cannot act as an advocate for its retaining party. In this regard, expert witnesses are very much like the technical investigators employed in China, as their duty and responsibility is to the court to ensure the relevant judge and/or jury understands the details of the case adequately. Therefore, Australia’s intellectual property courts are well equipped to deal with intellectual property matters.

Across the world, there is a need for a strong and efficient intellectual property rights protection regime in order to provide incentives for intellectual property creations and thus further the economy and welfare of a country. In China, the explosive growth of creations and intellectual property registrations have caused an ever increasing number of intellectual property disputes, which have been met with specialised intellectual property courts, and now, technical investigators to help smooth operations. Therefore, China has recognised the need and demand for an improvement in the efficiency, expertise, and quality of the judicial system, and has developed its intellectual property rights protection regime in order to realise the national innovation-driven development strategy and economic development of the country.

ABOUT THE AUTHOR: Matthew Murphy and Joyce Chng
Matthew Murphy and Joyce Chng are with the MMLC Group.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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