Getting technical with IP in China

Specialist patent courts are advocated by many litigators who see the advantage of bringing patent matters before judges who are well versed in patent law. In some cases, judges in these specialist courts have a scientific background that assists in their appreciation of the technical as well as the legal aspects of the case before them.  However, even judges with a strong scientific education may struggle to appreciate the nuances of areas of technical application that lie outside the disciplines with which they are most familiar -- and the help they get from expert witnesses, who may be coached by the party on whose behalf they testify, may be quite limited by virtue of its partiality.  A possible solution to this problem is the appointment of technically proficient court advisers.  The following post by Kevin Winters addresses this topic within the context of the world's largest and currently most patent-active jurisdiction, China. This is what he writes:

Getting technical with IP in China

In a recent article on the position of intellectual property protection and regulation in China, it was pointed out how very seriously the government is taking the objective of making China an effective forum for IP protection. In order to attempt to deliver on this objective, three specialised intellectual property courts were opened in Beijing, Guangzhou and Shanghai before the close of 2014.

The Deputy Presiding Judge of the Intellectual Property Tribunal of the Supreme People’s Court (SPC), Wang Chung commented that:

“Setting up a special court is a huge improvement in how the country handles IP cases and protects IP rights. It will also benefit [China’s] emerging high-tech industries”

These new courts are admittedly an experiment in judicial reform in China, where judges are not traditionally considered as being distinct from the other arms of government. However a new move has been taken to enhance further the credibility and expertise of these courts, with the establishment of Technical Departments and the introduction of ‘Technical Investigators’ to assist the judges in deciding on disputes.

This development is largely to offset the complexity of the disputes that the IP courts are often required to deal with. The Technical Investigators may be called on to assist the judge in any IP dispute – trade marks, patents or otherwise. The use of experts in litigation in China is not entirely new. Prior to the establishment of the specialised courts, personnel from the State Intellectual Property Office (SIPO) were regularly called upon to lend their expertise to complicated disputes. However, under the rules relevant to the role of Technical Investigators as stipulated by the SPC, Technology Investigators will have a varied role to perform in the courts. Among other things they are responsible for:

1. Reviewing documentation to identify and conflicting points;
2. Advising on the necessary investigations required;
3. Taking a role in gathering evidence, establishing its authenticity and preserving it;
4. Participating in hearings and trials;
5. Providing the court with technological opinions and contributing to court discussions on the cases;
6. Where necessary, organizing technical experts to provide the court with opinions.

There can be no doubt that Technical Investigators that are truly independent can be a significant asset, not only to the courts but also to the litigants themselves. Previously in certain instances the evidence of litigants could appear conflicting, and the court would have had few resources to attempt to resolve this. Moreover it was not uncommon that, historically, IP disputes were brought before an inexperienced judge who was forced to rely on highly technical information in making a decision.

The difficulty however for would-be litigants in these courts is that the independence of the Technical Investigator is as yet unknown. The immediate concern for both foreign and domestic litigants will be that the necessary impartiality and objectivity is observed by the Investigators. Further, there is little evidence as to how much weight the court is to give to the Investigators' views. It is important that the courts themselves take active steps to detail the position of their Investigators given that they may hold, or at the very least be thought as holding, significant sway over the opinion of the judges themselves.

This development of China’s IP regime is very welcome, and demonstrates her commitment to creating an environment where local and foreign businesses can expect to have their disputes handled with the requisite degree of care and skill. The concerns regarding the impartiality and influence of the Technical Investigators does merit attention from the courts, and would be in keeping with the moves being taken by actors in China’s government to stamp-out corruptive practices.

It seems to this Kat that the range of tasks allotted to Technical Investigators in China is substantially wider to the facility of seeking technical assistance that is available to patent judges in the United Kingdom, and he wonders why there should be a need for them in areas outside that of patent law. He is also unsure whether these Technical Investigators will act only when invited to do so by the court or whether they may determine for themselves the relevant level of involvement.  Finally, he wonders what the effect of the involvement and interventions Technical Investigators might be on the stability and predictability of the performance of Chinese IP courts if there are no guidelines and there is no consistency between them.

Further information and clarification is therefore welcomed.