In Chinese judicial practice, the difficulty in burden of proof has always been one of the most problems IPR holders face when defending their IP rights through civil lawsuit. The reason for this dilemma, on one hand, lies in the absence of "evidence discovery" system similar to that in the United States, and on the other hand, attributes to strong concealment of infringement and control of infringement evidence by infringer.
With judicial tendency of strengthening IP protection, the Supreme People's Court specially issued the judicial interpretation, "Several Provisions of the Supreme People's Court on Evidence for Civil Lawsuits Involving Intellectual Property" (hereinafter "the Provisions") to try to break the dilemma. The Provisions came into effect on Nov. 18, 2020 and made many significant breakthroughs to effectively reduce IPR holder's burden of proof in civil lawsuit, which are summarized as follows:
- Effectively reducing burden of proof IPR holder whose patented process produces not new product
Article 3 of the Provisions stipulates that where an IPR holder whose patented process manufactures not new product as plaintiff has fulfilled the burden of proof for the following facts: (1) the product manufactured by the defendant is identical with that manufactured by the patented process; (2) the product manufactured by the defendant is more likely to be produced by the patented process; (3) IPR holder as plaintiff had made reasonable efforts in proving defendant's use of the patented process, the court may transfer the burden of proof to the defendant, requiring it to produce evidence to prove that its manufacturing process is different from the patented process.
- Setting up remedy of evidence preservation obstruction and punishment
With respect to evidence preservation conducted by court, Articles 13 and 14 of the Provisions further emphasize that where the defendant, without reasonable ground, refuses to cooperate or interferes with the court's action of evidence preservation so that the evidence could not be preserved, or where the defendant, without authorization, conducts the acts of disassembling, tampering with or any other acts of destroying the evidence successfully preserved so that the evidence could not be used, the defendant shall bear all the adverse consequences arising therefrom. Furthermore, where such acts constitute judicial nuisance, the defendant will be punished with fines, detainment and even criminal sanction.
- Citing mandatory submission orders of evidence and evidence presumption
In consideration that some critical evidence is controlled by the defendant and IPR holder is unable to acquire it by itself, under the basic principle of "who claims, who adduces evidence", Article 24 of the Provisions further allows the court, according to characteristics of evidence in different civil lawsuits, to directly issue mandatory submission order to the defendant who possesses the evidence, ordering it to submit relevant evidence. Article 25 further stipulates that where the defendant, without proper grounds, refuses to submit, submits false evidence or destroys evidence or conducts any other acts that make the evidence unusable, IPR holder's corresponding claims relating to the evidence will be presumed tenable.
- Expanding scope of evidence regarding damages
In order for further improving current issue of "high amount of claim but low amount of award of damages", Article 31 of the Provisions expands the scope of evidence regarding damages, IPR holder is allowed to adduce the evidences including but not limited the financial accounts, sales contract, annual reports, prospectuses, records on the websites or brochures, transaction data stored in equipment systems, commodity circulation data from third-party platforms, evaluation reports, licensing contracts, and records from relevant authorities of market supervision, taxation and financial departments, etc., to support its claims of damages.
This article was first published in AIPPI Newsletter January 2021. https://aippi.org/news/newsletter-january-2021/#Section1
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
