CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
3.8 Procedure for Third-Party Opinions When the People’s Court tries intellectual prop- erty cases with strong technical expertise, it can appoint technical investigators to participate in the legal proceedings. Technical investigators are trial supporting personnel independent of the parties. The technical investigator shall offer proposals on the focus of disputes of techni- cal issues, participate in investigations, hear- ings and other trial proceedings, offer technical investigation opinions, and assist judges in other technical matters. The technical investigator shall independently issue and sign the techni- cal investigation opinions, and offer the opinions before the case is deliberated. The opinions are not open to the public, and may be taken as a reference for the determination of technical facts by the People’s Court. China adopts a bifurcated system to review the validity and infringement issues of a patent. That is, the validity of a patent is decided by the CNIPA. The judicial system may only review an invalidity decision issued by the CNIPA and a court cannot decide the validity in an infringe- ment case. Any entity or individual may request the CNIPA to invalidate a patent in whole or in part after the patent is granted, if the entity or individual considers that the granting of the pat- ent does not conform to certain provisions in the Patent Law. 4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation The CNIPA shall timely examine the request for invalidation and make a decision. In practice, it usually takes four to ten months to obtain a decision from the CNIPA. Where any party is dis- satisfied with the CNIPA’s decision on declaring
sale, or import of that product is deemed as infringement. For equitable estoppel, in patent infringement disputes, if a patent applicant or rights-holder surrenders a technical solution through modifi- cations to the claims or specification during the patent authorisation or invalidation process and subsequently attempts to incorporate it within the scope of patent protection, courts do not support this action. However, if the rights-holder proves that the limitations made to the claims, specification, or drawings during the patent authorisation process were explicitly denied, courts should recognise that such modifications did not lead to the abandonment of the technical solution. 3.6 Role of Experts A party may apply to the People’s Court for a person with expertise to appear in court to offer an opinion regarding an identification conclusion or regarding a specialised technical issue. A person with expertise is not a witness. Opin- ions offered by a person with expertise in court on the specialised issues shall be deemed as statements of the corresponding party. 3.7 Procedure for Construing the Terms of the Patent’s Claim There is no separate procedure for construing the claim terms of the patent involved. That is, there is no separate “claim construction” ses- sion to determine the meaning of the claim lan- guage. However, during the trial, when parties have disputes concerning the protection scope of certain terms used in the asserted claims, the People’s Court will adjudicate it as a disputed issue during the trial.
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