Legislation & Policy

Translation: Supreme People’s Court Several Provisions on Evidence in Civil Litigation of Intellectual Property

SIPS Knowledge, Legislation and Policy

(November 9, 2020, the Judicial Committee of the Supreme People’s Court. Adopted at the 1815th meeting, effective from November 18, 2020)

In order to protect and facilitate the parties’ right of litigation in accordance with the law, and to ensure that the People’s Courts hear civil cases of intellectual property in a fair and timely manner, these regulations are formulated in accordance with the “Civil Procedure Law of the People’s Republic of China” and other relevant laws and regulations in conjunction with the reality of intellectual property civil trials.

Article 1 – The parties to an intellectual property civil lawsuit shall follow the principle of good faith and provide evidence in an active, comprehensive, correct and honest manner in accordance with the provisions of the law and judicial interpretation.

Article 2 – The parties shall provide evidence to prove their claims. According to the trial situation of the case, the People’s Courts may apply the provisions of paragraph 2 of Article 65 of the Civil Procedure Law to require the parties to provide relevant evidence based on the parties’ claims and facts to be proved, the evidence in their possession, and their ability to produce evidence.

Article 3 – Where a product manufactured through a patented method is not a new product, the plaintiff in a dispute over patent infringement shall provide evidence to prove the following facts:

  1. The product manufactured by the defendant is the same product as the product manufactured using the patented method;
  2. The products manufactured by the defendant are more likely to be manufactured through patented methods;
  3. The plaintiff made reasonable efforts to prove that the defendant used the patented method.

After the plaintiff has completed the evidence presented in the preceding paragraph, the People’s Court may require the defendant to provide evidence to prove that the manufacturing method of the product is different from the patented method.

Article 4 – Where a defendant raises “lawful source” as its defense according to law, it shall provide evidence to prove the fact that it legally obtained the allegedly infringing product or copy, including evidence of lawful purchase channels, evidence of reasonable prices, evidence of direct suppliers, etc.

Where the evidence provided by the defendant regarding the source of the infringing products or copies is appropriate for its reasonable duty of care, it considered to have satisfied the proof requirements of the previous paragraph, and it can be presumed that it was not aware that the allegedly infringing product or copy was infringing of intellectual property rights.  The evidence for the defendant’s reasonable duty of care can be determined based on its business scale, level of expertise, market trading habits, etc.

Article 5 – Plaintiffs that file lawsuits seeking declarations of non-infringement of intellectual property rights shall provide evidence proving the following facts:

  1. That the defendant had issued an infringement warning to the plaintiff or filed an infringement complaint against the plaintiff;
  2. That the plaintiff issued a Notice of the Right to Sue to the defendant, when the Notice was issued and when it was delivered;
  3. That the defendant did not file a lawsuit within a reasonable period of time.

Article 6 – Regarding the basic facts ascertained by administrative actions that have not been filed for an administrative litigation within the statutory time limit, or the basic facts ascertained by administrative actions are already part of an effective judgment, the parties do not need to prove again in the intellectual property civil litigation, unless there is contrary evidence that is sufficient to overturn.

Article 7 – Where a rightsholder, in order to uncover or prove intellectual property rights infringements, poses as ordinary buyer and itself purchases or entrusts others to purchase infringing goods from an alleged infringer, the samples, invoices, etc., it obtains can be used as evidence to prosecute [best term for this?] the alleged infringer for infringement.

Where evidence of an alleged infringer’s infringement of intellectual property rights is based on the actions of others, that evidence can be used by the rightsholder to sue the alleged infringer for infringement, except where the only infringement of intellectual property rights by the alleged infringer is the result of the evidence collection exercise by the rightsholder.

Article 8 – Where the evidence is formed outside the territory of the People’s Republic of China and a party objects to the evidence solely on the basis that the evidence has not undergone procedures such as notarization, legalization etc., this shall not be supported by the People’s Court where:

  1. The evidence has been verified in an effective legal judgment of a People’s Court;
  2. The evidence has been verified in an effective award of an arbitration body;
  3. The evidence is a publication, patent document, etc., that can be obtained through official or public channels;
  4. The evidence can be proved as authentic by other evidence.

Article 9 – Where evidence is formed outside the territory of the People’s Republic of China and a party objects to the evidence solely on the basis that the evidence has not gone through legalization procedures, this shall not be supported by the People’s Court where one of the following circumstances applies:

  1. The party raising the objection has clearly acknowledged the authenticity of the evidence;
  2. The opposing party has provided witness testimony to verify the authenticity of the evidence, and the witness has expressly declared that it is willing to accept punishment if it commits perjury;

If a witness as referred to in paragraph 2. above commits perjury and this falls within the circumstances set out under Article 111 of the Civil Procedure Law, the People’s Court shall handle the matter according to law.

Article 10 – Where the notarization, certification or other authentication procedures for the Power of Attorney have been completed in the first instance procedure in accordance with Article 59 and Article 264 of the Civil Procedure Law, the People’s Courts in the subsequent proceedings may choose not to require the parties to go through the above-mentioned certification procedures for the Power of Attorney.

Article 11 – The People’s Court shall review applications for evidence preservation of the parties or interested parties in combination with the following factors:

  1. Whether the applicant has provided preliminary evidence for its claim;
  2. Whether the evidence can be collected by the applicant herself;
  3. The possibility of the loss of evidence or the later difficulty of obtaining it and its impact on the facts to be proved;
  4. The impact of possible preservation measures on evidence holders.

Article 12 – The People’s Court shall limit evidence preservation to valid and fixed evidence, and minimize the damage to the value of the preservation object and the influence on the normal production and operation of the evidence holder.

Where the preservation of evidence involves technical solutions, preservation measures such as making on-site inspection records, drawing, photographing, recording, recording, copying designs and production drawings may be adopted.

Article 13 – If a party refuses to cooperate or obstructs the preservation of evidence without justifiable reasons, such that the evidence cannot be preserved, the People’s Court may determine that it shall bear the adverse consequences. If it constitutes a situation as provided for in Article 111 of the Civil Procedure Law, the People’s Court shall handle it in accordance with the law.

Article 14 – For evidence against which that the People’s Court has taken preservation measures, if the party without authorization disassembles and assembles the evidence, tampered with the evidence, or commits other acts of destroying the evidence, which causes the evidence to be unusable, the People’s Court may determine that it shall bear the adverse consequences. If it constitutes a situation as provided for in Article 111 of the Civil Procedure Law, the People’s Court shall handle it in accordance with the law.

Article 15 – The People’s Court may require the parties or agents ad litem to be present at the scene for evidence preservation. If necessary, the people’s court may upon application by a party notify persons with expertise to be present, or may appoint a technical investigator to participate in the evidence preservation.

If the evidence is held by a person who is not a party to the lawsuit, the People’s Court may take preservative measures for such evidence.

Article 16 – When conducting evidence preservation, the People’s Court shall prepare a transcript and a list of preserved evidence, record the preservation time, place, implementer, persons present, preservation process, and the status of the object of preservation, which shall be signed or sealed by the implementer and persons present. The refusal of the relevant personnel to sign or seal does not affect the effectiveness of the preservation, and the People’s Court may record it in the transcript and take photos and videos.

Article 17 – Where the respondent raises an objection to the scope, measures, necessity, etc., of the evidence preservation and provides relevant evidence, if the People’s Court after review finds that the reason for the objection is established, the evidence preservation may be changed, terminated or cancelled.

Article 18 – Where the applicant waives the use of preserved evidence, but the preserved evidence relates to the investigation of the basic facts of the case or other parties claim that it should be used, the People’s Court may review and decide on the evidence.

Article 19 – The People’s Court may entrust to have an appraisal conducted on the following specific issues of the facts to be verified:

  1. The similarities and differences between the alleged infringing technical solution, the patented technical solution, and the corresponding technical features of the existing technology in terms of means, functions, and effects;
  2. The similarities and differences between the alleged infringing work and the work claiming rights;
  3. The similarities and differences between the trade secrets claimed by the parties and the information already known to the public in the field, and the similarities and differences between the alleged infringing information and the trade secrets;
  4. The similarities and differences between the accused infringing article and the licensed variety in terms of characteristics and natures, and whether the difference is caused by non-genetic variation;
  5. The similarities and differences between the alleged infringing integrated circuit layout design and the integrated circuit layout design claimed;
  6. Whether the technology involved in the contract has defects;
  7. The authenticity and completeness of electronic data;
  8. Other specialized issues that require entrusted [external] appraisal.

Article 20 – With the permission of the People’s Court or the consent of both parties, the appraiser may entrust other testing institutions to conduct appraisals for some of the issues involved, and the appraiser shall bear the legal responsibility for the appraisal opinions issued based on the test results.

Article 21 – Where a unified registration management system for appraisers and appraisal institutions is not implemented in the field of the issues to be appraised, the People’s Courts may,  in accordance with the procedures for the selection and appointment of appraisers provided by Article 32 of the Several Provisions of the Supreme People’s Court on Evidence in Civil Litigations, select professional institutions and professionals with corresponding technical capability to conduct the appraisal.

Article 22 – The People’s Court shall listen to the opinions of all parties and determine the scope of appraisal in combination of the evidence presented by the parties. During the appraisal process, if one of the parties applies to change the scope of appraisal, and the other party has no objections, the People’s Court may approve it.

Article 23 – The People’s Court shall review the appraisal opinion based on the following factors:

  1. Whether the appraiser has the corresponding qualifications;
  2. Whether the appraiser has the knowledge, experience and skills necessary to solve related specialized problems;
  3. Whether the appraisal methods and procedures are standardized and whether the technical means are reliable;
  4. Whether the materials submitted for inspection have been cross-examined by the parties and meet the appraisal conditions;
  5. Whether the basis of the appraisal opinion is sufficient;
  6. Whether there is a legal reason that the appraiser should be avoided;
  7. Whether the appraiser has engaged in favoritism, fraud or other circumstances affecting the fair appraisal during the appraisal process.

Article 24 – The party who bears the burden of proof shall apply in writing to the People’s Court to order the opposing party who controls the evidence to submit evidence. If the application is justified, the People’s Court shall make a ruling and order it to submit the same.

Article 25 – Where the People’s Court requires the parties to submit relevant evidence in accordance with the law, and they refuse to submit it without justified reasons, or submit false evidence, or destroy the evidence, or perform other acts that render the evidence unusable, the People’s Court may infer that the other party has proved that the evidence involved in the matter is established.

If a party commits an act listed in the preceding paragraph, which constitutes the circumstances specified in Article 111 of the Civil Procedure Law, the People’s Court shall handle it according to law.

Article 26 – Where the evidence involves business secrets or other business information that needs to be kept secret, the People’s Court shall require the relevant litigation participants to sign a confidentiality agreement and make a confidentiality commitment, or by means of issuing legal documents such as rulings, ordering them to refrain from disclosing, using, or allowing others to use the secret information that they came into contact with during the proceedings for any purpose other than the litigation in this case.

The parties may apply for restrictions on the scope of persons who have access to the evidence mentioned in the preceding paragraph, and the People’s Court shall approve it if it is deemed necessary after review.

Article 27 – Witnesses shall testify in court and be questioned by judges and parties.

If both parties agree and the People’s Court approves, and the witnesses fails to present, the People’s Court shall organize the parties to cross-examine the witness’s testimony.

Article 28 – The parties may apply for a person with specialized knowledge to appear in court and provide opinions on professional issues. With the permission of the court, the parties can question such experts.

Article 29 – Where the People’s Court appoints a technical investigator to participate in the pre-trial meeting and trial, the technical investigator may question the parties, litigation agents, persons with expertise, witnesses, appraisers, inspectors, etc. on the technical issues involved in the case.

Article 30 – If the parties raise objections to a notarized document and provides contrary evidence that is sufficient to overturn, the People’s Court shall not accept the notarized document.

If the reasons for the parties’ objections to the notarization document are established, the People’s Court may require the notary office to issue explanations or supplements, and review and confirm the notarization document in combination with other relevant evidence.

Article 31 – The financial account books, accounting vouchers, sales contracts, purchase and delivery documents, annual reports of listed companies, prospectuses, websites or brochures provided by the parties, transaction data stored in the equipment system, and commodities counted by third-party platforms, circulation data, appraisal reports, intellectual property licensing contracts and records of market supervision, taxation, and financial departments can be used as evidence to prove the amount of compensation claimed by the parties for infringement of intellectual property rights.

Article 32 – If a party request that the amount of compensation be determined with reference to a reasonable multiple of the intellectual property license fee, the People’s Court may consider the following factors to review and determine the evidence relating to license fee:

  1. Whether the license fee is actually paid and the payment method, whether the license contract is actually performed or filed;
  2. The content, method, scope, and time limit of the right to be used;
  3. Whether the licensee and the licensor have an interest relationship;
  4. The usual industry standards for licensing.

Article 33 – These regulations shall come into force on November 18, 2020. If the relevant judicial interpretations previously issued by this court are inconsistent with these regulations, these regulations shall prevail.

Original Chinese version available at: http://www.court.gov.cn/zixun-xiangqing-272241.html