How to gather evidence for patent infringement litigation in China?

Written by Dr. Jian Xu, IP Expert and collaborator of the China IP SME Helpdesk

In China, the plaintiff has a higher burden of evidence gathering. This is especially so for intellectual property cases, such as patent infringement litigation, as the subject matter can be technical, and the infringing behavior can be difficult to find. There are three factors that contributed to the difficulty of evidence gathering in China.

(1) There is no discovery or disclosure procedure in China, so the patentee cannot rely on the other party to provide evidence through discovery.

(2) Documentary evidence is essential and preferred in China. It's rare for a patent infringement case to be decided based on witness statements or oral testimony.

(3) Self-gathering evidence by the interested party has low evidentiary value. Hence, the credibility of the evidence usually has to be enhanced by notarization, or through official channels such as a court order.

For patent infringement litigation cases, the court has higher standards for the evidence. In practice, the key evidence in over 80% of patent infringement cases is obtained either through notarization or through the court's evidence preservation order.

Notarized purchase

For the key evidence of infringement, especially if the infringement evidence is located in publicly accessible places, such as shopping malls, the internet or shops, it is most common to obtain the evidence through notarization. The plaintiff can purchase the suspected infringing product in the witness of a public notary. The infringing product will then be packaged and sealed by the notary officer. In addition, the notary officer will issue a notary report that will describe the process of the purchase. Such evidence is very common and highly credible with the Chinese court, and it leaves little room for the defendant to question its authenticity.

Evidence preservation order

In Chinese patent infringement litigation, it is also common that the evidence cannot be obtained publicly or easily through notarization. For example, the infringing evidence only resides in the defendant's premises. In such a scenario, it is possible for the plaintiff to apply to the court for a so-called "evidence preservation order" before the lawsuit starts.

To apply for an evidence preservation order, the plaintiff should present the following supporting documents.

• produce prima facie evidence to substantiate its claim of infringement;
• adduce evidence showing the whereabouts of the accused product or product line; and
• submit a written statement, elaborating on (1) the urgency of gathering evidence; and (2) the obstacles preventing the plaintiff from obtaining evidence of their own accord.

Raid by the local IP office

Another way to get key evidence is through a raid by the local IP office. Because China operates the dual-track protection of intellectual property by both the administrative and court route, the local IP office has the authority to conduct a raid action against the suspected infringer. Through the raid, the evidence uncovered will be sealed by the local IP office, such as the infringing product/process or even the accounting books of the target. The plaintiff can subsequently sue the defendant in court using the evidence obtained from the raid by the local IP office.

This article is an excerpt from my E-book, '365 Intellectual Property Tips for China: A Comprehensive, Strategic, and Practical Guide for Legal Professionals' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).