CHINA Law and Practice Contributed by: Binxin Li, Guangzhen Shang, Yue He and Lesley Wang, LeanWill Law Firm
In addition to evidence preservation, court investiga ‑ tion and evidence submission orders provide addi ‑ tional remedies for the plaintiff to collect evidence during the lawsuit. 1.9 Declaratory Relief A declaratory judgment (DJ) action is available in Chi ‑ na. When the following steps are met, the party direct ‑ ly or indirectly receiving a warning from a right-holder is entitled to file a DJ action against the right-holder: • the right-holder sends a warning to the recipient in relation to IP infringement; • the recipient, upon receiving the warning, sends a written demand asking the right-holder to either file a lawsuit or withdraw its warning; and • the right-holder neither withdraws the warning nor files a lawsuit within one month of receiving the written demand or within two months from the date of issuance of the warning. 1.10 Doctrine of Equivalents China recognises the doctrine of equivalents (DoE). The legal test of DoE is that the accused technical feature, compared with the patented one, shall: • employ substantially the same means; • achieve substantially the same function; • obtain substantially the same technical effects; and • enable a person skilled in the art to conceive the substitution without any inventive efforts at the time of infringement occurrence. To prevent over-expansion of DoE, the doctrine is restricted by the principles of estoppel and donation. 1.11 Clearing the Way There is no obligation for companies to “clear the way” ahead of a new product launch. However, the court may take the defendant’s negligence or wilful ‑ ness into account when ruling on damages. 1.12 Experts Experts often appear in Chinese patent infringement proceedings and serve mainly as: • expert witnesses; • judicial appraisers; or
• technical investigation officers (TIOs). Expert Witnesses
Each side may engage experts and submit their wit ‑ ness statement as evidence. Experts can give their opinions on various issues, such as technical issues, damages or even the application of law. Judicial Appraisers Judicial appraisal is often utilised in IP infringement disputes, commissioned either by the party or by the court. Experts would be engaged as appraisers by the appraisal centre to address the issues for appraisal. Technical Investigation Officers In technically complex IP cases, the court may engage a TIO to provide technical support to the court itself. TIOs may participate in evidence preservation and court investigation, attend trial and make inquiries of Experiments could be introduced in enforcement and invalidation proceedings. Parties may conduct experi ‑ ments by themselves or engage external institutes to conduct experiments, and submit the results as evi ‑ dence. The experiment results need to meet the requirements to be presented as evidence. In particular, details of the experiment shall be sufficient to repeat the experi ‑ ment, and the results shall be relevant to the asserted facts. the parties on technical issues. 1.13 Use of Experiments Regarding invalidation proceedings, the CNIPA’s Examination Guide provides rules on the admission of post-filing experiment data. The data shall be exam ‑ ined to determine whether it is to address the inven‑ tiveness, clarity and sufficiency of the patent, and the technical effects demonstrated by the post-filing experiment data shall be derived from the description of the patent. In University of California v CNIPA , the Supreme People’s Court affirmed that the patentee is allowed to submit experiment data developed by the same test method described in the patent to support the technical effects asserted in the patent, unless the experiment data is instead used to fix the inherent defects of the patent.
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