(Jing Gao Fa Fa No. 456 [1998])

Beijing No. 1 Intermediate People's Court, Beijing No. 2 Intermediate People's Court, Beijing Haidian District People's Court and Beijing Chaoyang District People's Court: 　

Several Opinions of the Beijing High Court on the Reform of Trial Proceedings in Intellectual Property Cases (Tentative) (Notice) was passed upon the discussion of the Trial Committee of our court during its 36th meeting on 23 November 1998, and is now issued. Please implement the Notice and report to us if any queries arise. Where there is demonstrated inconsistency between the Notice and laws, regulations as well as new rules and judicial interpretations promulgated by the highest court, the latter shall prevail. 　　

Beijing High People's Court
24 December 1998

Several Opinions of the Beijing High Court on the Reform of Trial Proceedings in Intellectual Property Cases (Tentative)

According to the Civil Procedures Law of the PRC, highlights of Several Rules of the Supreme Court on the Reform of Trial Proceedings in Civil and Economic cases and in connection with the facts of intellectual property cases of our municipality, the Beijing High Court hereby provides the following opinions regarding several specific issues involving the reform of trial proceedings in intellectual property cases:

The System of Evidence Discovery before Trial

The system of evidence discovery before trial is described as the system aimed to prepare the relevant parties to a lawsuit for cross-examination, in which the parties shall disclose their respective evidence before trial, so that the other party/parties can examine, identify and state their opinions regarding such evidence.

Application Scope

The aforementioned system may apply to all intellectual property cases. The evidence to be disclosed is generally confined to that which is reproducible, such as documentary evidence.

Notice of Evidence Discovery

After the court accepts the lawsuit of first or second instance, it shall deliver the Instructions for the Parties to the relevant parties, and shall notify the parties to disclose and exchange evidence within a certain period of time (such period will be determined by the court according to the nature of the evidence delivered).

Evidence Delivery and Registration

A party submitting evidence shall present the evidentiary materials and copies thereof according to the number of opponents involved in the suit and in accordance with the court's requirements. Upon receipt of evidence, the court shall issue the evidence registration form, which primarily includes information regarding the name of the evidence, the facts intended to be demonstrated by the evidence concerned, the time of delivery, the number of pages and copies thereof. The registration form shall be authenticated by seal and signature by the relevant parties and the court clerk in 1 set of 2 copies, 1 copy for the party and the other for the court file.

Evidence Discovery

The court shall serve the copies of the evidentiary materials delivered by one party to the other party/parties to the suit. It shall also issue the evidence discovery form, which will be authenticated by seal and signature by the relevant parties and the court clerk in 1 set of 2 copies, 1 copy for the party and the other for the court file.

The Time Limit for Evidence Discovery

Evidence discovery shall be completed no later than 7 days before the opening of the court session.
Where a party delivers new evidence at the opening of the court session, the court shall inquire with the party's opponent as to whether they intend to cross-examine such evidence in court during that session. Where the opponent refuses cross-examination, such evidence shall not be cross-examined in court, and shall be left for the next court session for court investigation. (Court investigation is one stage of court trial in which both the judge and relevant parties participate in major activities such as presenting the case situation, providing relevant supporting evidence and examining such evidence. Following the court investigation is the court debate (between relevant parties) and then the sentencing.)

Where a party delivers evidence after the opening of the court session, evidence discovery shall still be held, and that party shall cause its opponent to state any opinions on such evidence. Where the evidence is substantial, another court session will be held (as necessary).

The System of the Evidentiary Hearing before Trial

The system of the evidentiary hearing before trial refers to the system intended to improve the efficiency of cross-examination and admission of evidence, in which evidence shall be selected, screened, interpreted and explained before the trial in the event of complicated, doubtful and difficult cases with a large quantity of evidence and requiring professional knowledge. Evidentiary hearing before trial is organized by the court with participation by the relevant parties.

Application Scope

Pre-trial evidentiary hearing may apply to cases where the evidence is numerous, or where the evidence involves professional knowledge and technical issues.

The Time for Evidentiary Hearing

Evidentiary hearing shall be held after the completion of evidence discovery, but within one or one and a half months prior to the opening of the court session.

The Content of Evidentiary Hearing

Evidence Filtration

After a party makes brief presentation in court on the evidence submitted, the judge will conduct preliminary review of the same to determine the relevancy of the evidence to the facts of the case, and omit any irrelevant evidence or request supplementary evidence. Where the party disagrees with the preliminary review by the court, the court shall respect and uphold the party's opinion.

Evidence Arrangement

Arrangement of evidence refers to organizing and classifying the evidence. Where evidence is numerous, the court may ask the relevant party to arrange the evidence chronologically or according to the facts which it supports; where the evidence is scattered, the court may ask the relevant party to classify the evidence according to the relationship among them and the facts which they support; where a specific fact is supported by multiple pieces of evidence, the court may ask the relevant party to classify the evidence according to the facts which it supports.

Evidence Interpretation

Evidence interpretation refers to the party's explanation and illustration of the evidence and the subject matter of proof. In the case of evidence involving professional knowledge and technical issues, the party is required to introduce the relevant background information, and even make a brief presentation/demonstration if the circumstances require such.

Preliminary Cross-Examination of the Evidence

The court will classify the evidence into that with and without objection, based on the opinions of the parties. As for the evidence without objection, the court may accept and admit the same by written record without submitting the evidence for cross-examination in the court session.

Authentications
Intellectual Property (IP) cases cover every area of science and technology and every aspect of literature and the arts, which, in most cases, concerns the foremost fields of science and the arts. The content in question is therefore difficult to govern by a single opinion issued by a specific organization or department. In order to ensure the scientific accuracy, justness and authority of authentications, authentication should be conducted pursuant to complete and proper procedures.

Selection of the Authentication Organizations

The authentication organization may be ascertained by any of the following methods:

the departments or organizations listed in the contract as agreed upon by the parties;

the relevant legal authentication organizations responsible for the pending technology results in dispute between the parties;

the organizations agreed upon by the parties;

the authentication team consisting of the authoritative experts proposed by the parties;

the authoritative professional departments or institutions recommended or appointed by the science and technology administration at all levels; or

relevant departments or organizations appointed by the people's court.

Scope of Authentications

The scope of the authentication is listed below for each of the following cases:

For technology contract cases: whether the failure of technology development contracts should be categorized as inherent risks; maturity and practicality of the object of technology contracts; whether the performance results of technology contracts complies with agreed or legally prescribed technology standards.

For patent infringement cases: the comparison of the technical features between the patented technology and the alleged infringing products or methods.

For patent administration cases: the novelty, creativity and utility of the inventions.

For copyright infringement cases: the comparison between the legally-protected works and the alleged infringing item.

For commercial secret infringement cases: the secrecy and novelty of the technology secrets and its comparison with the alleged infringing technologies.

Authentication Basis

Authentication of the object in technology contracts shall be conducted based upon the examination and acceptance criteria agreed upon by the parties in such contracts. Where the parties do not clearly or do not at all specify the examination and acceptance criteria in the contracts, the authentication shall be conducted based upon the criteria of the state or professional technology organizations. Where no such criteria is available, the authentication shall be conducted in accordance with the general and practical criteria of such field.

The authentication of patent infringement cases shall be conducted based upon the patent claims, description and attached drawings as well as the alleged infringing objects

The authentication of copyright infringement cases shall be conducted based upon the works claimed by the lawful owners and the alleged infringing works.

The authentication of commercial secret infringement cases shall be conducted based upon the scope and content of the technology secrets being claimed and the alleged infringing technologies.

Manner of Authentication

In cases where the Municipal High People's Court has appointed an authentication department, the parties shall seek authentication from such appointed department.

In cases where the parties agree in their contract on the manner of examination and acceptance, the authentication shall comply with such examination and acceptance procedures.

For cases with examination and acceptance criteria or technology criteria expressly agreed upon in the contracts by the parties, and where the technology is not complicated, authentication may be conducted by the parties themselves, i.e., the parties will operate, demonstrate and apply the technology under the court's supervision, and record the entire process.

Experts' Discussion and Evaluation. Experts in related fields shall conduct a paper examination of the relevant technology documents concerning the object of the technology contract. The people's court may directly initiate experts' discussion and evaluation, enquire with the parties whenever necessary, provide comments and organize authentication experts to make conclusions after their synthesis of the court's comments.

Other authentication manners agreed upon by the parties.

Where cases are authenticated by the relevant organizations, the parties in the cases shall request such organizations to issue authentication opinions in writing with detailed supporting materials.

Procedures for Authentication

Whether a case requires authentication shall be determined in accordance with the circumstances of the case and the application of the relevant parties. Where the party applies for authentication, the court should decide whether to conduct the authentication or not; where the court determines that authentication must be conducted, the court shall advise the parties as to the reasons for such determination.

The parties concerned shall be informed in advance of the decision on the authentication institution or personnel, as well as the detailed time, procedures and manner of the authentication.

Where the authentication is conducted by relevant organizations, the court shall provide the organizations with an authorization letter and the relevant materials. The authorization letter shall clearly state the matters to be authenticated and authentication requirements, and also inform the authentication organizations or personnel regarding their confidentiality obligations for the content authenticated.

Upon the conclusion of authentication, all relevant materials concerning the authentication, such as reports, picture material, samples, and sample machines shall be returned to the relevant parties.

Re-Authentication

The court may decide to conduct re-authentication in the following situations:

New evidence is produced which is sufficient to deny the conclusions of the original authentication.

Authentication personnel commit illegal acts during the authentication or perform fake authentication, or collude with the relevant parties to make untrue or illegal authentication conclusions.

The Impeachment of Authentication Conclusion

Authentications shall be concluded prior to formal opening session in court.

The authentication conclusions shall be disclosed to the relevant parties, and allow for their differing opinions, explanation and challenge to the conclusions of the authentication. The relevant parties may question the authentication conclusions and shall be given clear explanation of the results.

The conclusions of the authentication are important evidence for finding out the truth of the case, and therefore, must undergo cross-examination in court.

Evidence Preservation

Objects of intellectual property are intangible, which, unlike cases involving tangible objects, present certain unique features with regard to evidence issues. Such unique features are demonstrated by the difficulties parties face in obtaining evidence, and furthermore, by the difficulties of representing the authenticity of evidence and the validity for obtaining evidence. Therefore, people's courts shall collect evidence in accordance with the practice of evidence preservation.

Application for Evidence Preservation

Evidence preservation is conducted upon application for such by the parties. The relevant parties may submit applications for the preservation of evidence in writing along with the filing of the suit or during the trial. Application letters shall indicate the reasons for evidence preservation and its scope, and shall provide information on obtaining such evidence.

Review of the Application

Adequate reasons for evidence preservation: An application for evidence preservation shall meet the following conditions: the evidence is likely to get lost or destroyed or is difficult to procure.

Clear scope for evidence preservation: An application for evidence preservation shall indicate a clear scope of the evidence to be preserved and shall avoid ambiguous descriptions. Further, the applicant shall not be permitted to attend on-site identification of the evidence.

Solid clue of evidence: Evidence preservation shall be conducted promptly, during which confidentiality of the evidence shall be maintained, to avoid loss or destruction of evidence or irrecoverable loss to the applicants. On the other hand, applications for evidence preservation shall be strictly reviewed to avoid applicants' abuse of the litigation process to harm the legal rights and interests of the person in possession of such evidence.

Manners for Evidence Preservation

Evidence preservation could be preformed by sealing or seizing the evidence or by other manners. For evidence capable of duplication, copies shall be made on site and taken away; additionally, on-site investigation and examination may be adopted and the evidence may be captured through paper, tape recording or film.

Guarantee for Evidence Preservation