BURDEN OF PROOF
Article 64 of China’s Civil Procedure Law provides that “A party shall have the responsibility to provide evidence in support of its own propositions.” But it is not always clear how far that is applicable in IP cases, as Yin Xintian explains.
Also known as “he who asserts, proves”, Article 64 is one of the fundamental principles of civil proceedings in China.
Based on this principle, a patentee who accuses another party of infringing his patent shall have to prove (i) what patent he owns and what is the status of that patent; (ii) what the alleged infringer did; and (iii) that the subject matter of the alleged infringing activity falls into the scope of protection for the patent.
When a patented process for obtaining a product is involved, however, it is oſt en diffi cult for the patentee to prove that the alleged infringer is manufacturing the product using the patented process, as it is unlikely that the patentee can enter the alleged infringer’s premises to collect evidence. To deal with the situation, the Chinese Patent Law of 1984 introduced the reversal of the burden of proof in Article 60 paragraph 2, which states: “In the event of an infringement dispute, if the invention patent is a process for obtaining a product, the entity or individual that manufactures an identical product shall furnish evidence of the process by which its, or his, product is manufactured.”
Under this provision, where a patentee of a process sues for patent infringement, the alleged infringer must show how it makes the product. If
the alleged infringer fails to produce this
evidence, the court may infer that his product is obtained by the patented process.
In respect of a patent for a manufacturing
process, however, it is not reasonable to make an alleged infringer bear the burden of proof under all circumstances. A patented process might be developed to manufacture either a new product or a known product. For a known product, there are naturally corresponding manufacturing processes. It is close to irrationality to compel a manufacturer of an existing product to prove its ‘innocence’ in patent litigation merely because someone else has invented a new process for the manufacture of such a product.
T e Patent Law as amended in 1992—by referring to Article 31 (1) of the Trade-Related
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Aspects of Intellectual Property Rights (TRIPS) Agreement, which had already taken shape at that time—revised the above-mentioned provision as follows: “In the event of an infringement dispute, if the invention patent is a process for obtaining a new product, the entity or individual that manufactures an identical product shall furnish evidence of the process by which its, or his, product is manufactured.”
By merely inserting the word ‘new’, the revised provision signifi cantly limits the scope of reversal of the burden of proof.
the
T e Chinese Patent Law of 2000 made further adjustments to make it more consistent with Article 34 paragraph 1(a) of TRIPS. Article 57 paragraph 2 of the revised Patent Law provides: “Where any infringement dispute relates to an invention patent for a process of manufacturing a new product, any entity or
individual
manufacturing an identical product shall furnish proof to show that the process used in the manufacture of its, or his, product is diff erent from the patented process.”
In the Chinese Patent Law of 2008, the same provision becomes Article 61 paragraph 1 with no modifi cation made.
Conditions for reversing the burden of proof
It does not follow that in a patent infringement case, the patentee of a manufacturing process need only
claim that his patent has been
infringed, and then sit back waiting for the alleged infringer to prove that his process for obtaining his product is diff erent from the patented one. Reversal of the burden of proof is possible only if the patentee fi rst provides evidence to prove: (i) the product obtained by the patented process is a new product; and (ii) that the alleged infringer’s product is identical to that obtained by the patented process.
In addition, it should be understood that the reversal of the burden of proof applies only to a patented process for obtaining a product. If the patent is a process other than a process for obtaining a product, eg, an operation process or
World Intellectual Property Review September/October 2012 45
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