BURDEN OF PROOF
a use method, the reversal of the burden of proof does not apply in patent litigation.
The meaning of a ‘new product’ and its determination
Neither TRIPS nor Chinese Patent Law further defines the concept of a ‘new product’. It was formerly held that the meaning of ‘new’ is not the same as the ‘novelty’ mentioned in the Patent Law, and it was understood that any product that is unknown in the domestic market before the filing date of a patent application could be deemed a ‘new product’. Tere has been much controversy over this view.
In 2009 the Supreme People’s Court (SPC) issued its Interpretation on Law Application in the Trial of Patent Infringement Cases, Article 17 of which states: “A product or a technical solution for obtaining a product that is available to the public either in this country or abroad before the filing date of a patent application should be determined by the People’s Court not to be a new product as defined by Article 61 paragraph 1 of the Patent Law.” It is clear from the SPC’s interpretation that, when determining whether a product is a ‘new product’, the standard of novelty should be adopted.
Second, to prove that a product lacks novelty, it suffices to raise only one piece of evidence showing the product is publicly known; to prove that a product is novel, however, is a never-ending endeavour,
“IT WAS UNDERSTOOD THAT ANY PRODUCT THAT IS UNKNOWN IN THE DOMESTIC MARKET BEFORE THE FILING DATE OF A PATENT APPLICATION COULD BE DEEMED A ‘NEW PRODUCT’.”
product to see whether the allegedly infringing product incorporates all of the technical features recorded in the claims. Tere is a whole set of rules for judgment. For a process for obtaining a product, however, it is the technical features of the process, not those of the product itself that are recorded in the claims. In this case, the set of rules for judgment becomes useless.
To see whether an alleged infringer has and a patentee
can barely discharge his burden of proof. In practice, one possible solution is to require the alleged infringer to raise evidence to the contrary. As long as the alleged infringer has evidence that the product is already known before the filing date of the patent application, Article 61 paragraph 1 of the Chinese Patent Law regarding the reversal of proof should not apply.
the burden of
Tis means, however, that the reversal of the burden of proof also applies in determining whether a product is a ‘new product’, which appears to exceed the extent of Article 61 of the Chinese Patent Law.
The meaning of ‘manufacturing an identical product’ and its determination
Notions of the meaning of ‘identical’ necessarily require a comparison. But what must be compared? Tat is a difficult question.
Where an infringement lawsuit arises in relation to a product patent, the allegedly infringing product will be compared with the patented
‘manufactured an identical product’, it is more practical to compare the allegedly infringing product with that obtained by the patented process. It can be assumed that a real product may incorporate unspecified ‘technical features’. Will any difference between a potentially infringing product and the product actually obtained by the patentee lead to the conclusion that the former does not constitute an ‘identical product’, regardless of
the significance of the
difference? Te answer to this question must be no, or Article 61 would become meaningless to a great extent. But if the answer is no, how could the comparison be conducted? Moreover, it is likely that a patentee has not implemented his patent, resulting in no physical product. In this case, what should we do?
SPC’s latest position
Te provision about reversing the burden of proof in Chinese Patent Law is very simple at first sight. In reality, it is pregnant with many questions that require in-depth discussion.
A comparison of the conditions for reversing the burden of proof laid down by Article 34 paragraph 1(a) and paragraph 1(b) reveals that paragraph 1(b) seems more desirable, because under paragraph 1(b) a patentee can easily raise evidence and the court can adjudicate with less difficulty. Tis may prevent arguments on the procedural issue of whether to reverse the burden of proof, which may impede the proceedings.
46 World Intellectual Property Review September/October 2012
Yin Xintian has served as spokesman and director-general of the legal affairs department of the State Intellectual Property Office. In recognition of his achievements, Yin was granted the special subsidy for a high level expert by the State Council of China in 2005.
Yin Xintian is a senior partner at Wan Hui Da Intellectual Property Agency. He can be contacted at:
yinxintain@wanhuida.com
Te SPC has recently expressed the following view: “Where the product allegedly obtained by a patented process is not a new product, if the patentee can prove that the alleged infringer has made an identical product but despite reasonable efforts cannot prove the alleged infringer has actually used the said patented process, then under relevant judicial interpretation concerning evidence in civil proceedings, the patentee is released from raising further evidence and the alleged infringer is required to prove that his process is different from the patented one, provided that based on known facts and daily life experience it is highly likely that the alleged infringer’s product is made by the patented process.”
Te SPC’s opinion has in essence adopted Article 34 paragraph 1(b) of TRIPS for the purpose of abating the process patentee’s burden of proving that his product is a new product, competent to solve difficulties frequently encountered in patent infringement litigation. According to the SPC’s opinion, however, even if a product obtained by a patented process is not a new product, in a certain circumstances the alleged infringer may still be required to prove that his process is different from the patented one. Tis seems to go against the Chinese Patent Law in force.
It should be noted that the SPC’s opinion represents only one of its views and has not acquired the effectiveness of a judicial interpretation.
www.worldipreview.com
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