Who's responsible? Reversing the burden of proof

Also known as “he who asserts, proves”, Article 64 is one of the fundamental principles of civil proceedings in China.

Based on this principle, a patentee who accuses another party of infringing his patent shall have to prove (i) what patent he owns and what is the status of that patent; (ii) what the alleged infringer did; and (iii) that the subject matter of the alleged infringing activity falls into the scope of protection for the patent.

When a patented process for obtaining a product is involved, however, it is often difficult for the patentee to prove that the alleged infringer is manufacturing the product using the patented process, as it is unlikely that the patentee can enter the alleged infringer’s premises to collect evidence.

To deal with the situation, the Chinese Patent Law of 1984 introduced the reversal of the burden of proof in Article 60 paragraph 2, which states: “In the event of an infringement dispute, if the invention patent is a process for obtaining a product, the entity or individual that manufactures an identical product shall furnish evidence of the process by which its, or his, product is manufactured.”

"It was understood that any product that is unknown in the domestic market before the fling date of a patent application could be deemed a 'new product'."

Under this provision, where a patentee of a process sues for patent infringement, the alleged infringer must show how it makes the product. If the alleged infringer fails to produce this evidence, the court may infer that his product is obtained by the patented process.

In respect of a patent for a manufacturing process, however, it is not reasonable to make an alleged infringer bear the burden of proof under all circumstances. A patented process might be developed to manufacture either a new product or a known product. For a known product, there are naturally corresponding manufacturing processes.

It is close to irrationality to compel a manufacturer of an existing product to prove its ‘innocence’ in patent litigation merely because someone else has invented a new process for the manufacture of such a product.

The Patent Law as amended in 1992—by referring to Article 31 (1) of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which had already taken shape at that time—revised the above-mentioned provision as follows:

“In the event of an infringement dispute, if the invention patent is a process for obtaining a new product, the entity or individual that manufactures an identical product shall furnish evidence of the process by which its, or his, product is manufactured.”

By merely inserting the word ‘new’, the revised provision significantly limits the scope of the reversal of the burden of proof.

The Chinese Patent Law of 2000 made further adjustments to make it more consistent with Article 34 paragraph 1(a) of TRIPS. Article 57 paragraph 2 of the revised Patent Law provides:

“Where any infringement dispute relates to an invention patent for a process of manufacturing a new product, any entity or individual manufacturing an identical product shall furnish proof to show that the process used in the manufacture of its, or his, product is diff erent from the patented process.”

In the Chinese Patent Law of 2008, the same provision becomes Article 61 paragraph 1 with no modification made.

Conditions for reversing the burden of proof

It does not follow that in a patent infringement case, the patentee of a manufacturing process need only claim that his patent has been infringed, and then sit back waiting for the alleged infringer to prove that his process for obtaining his product is different from the patented one.

Reversal of the burden of proof is possible only if the patentee first provides evidence to prove: (i) the product obtained by the patented process is a new product; and (ii) that the alleged infringer’s product is identical to that obtained by the patented process.

In addition, it should be understood that the reversal of the burden of proof applies only to a patented process for obtaining a product. If the patent is a process other than a process for obtaining a product, eg, an operation process or a use method, the reversal of the burden of proof does not apply in patent litigation.

The meaning of a ‘new product’ and its determination

Neither TRIPS nor Chinese Patent Law further defines the concept of a ‘new product’. It was formerly held that the meaning of ‘new’ is not the same as the ‘novelty’ mentioned in the Patent Law, and it was understood that any product that is unknown in the domestic market before the filing date of a patent application could be deemed a ‘new product’.

There has been much controversy over this view. In 2009 the Supreme People’s Court (SPC) issued its Interpretation on Law Application in the Trial of Patent Infringement Cases, Article 17 of which states:

“A product or a technical solution for obtaining a product that is available to the public either in this country or abroad before the filing date of a patent application should be determined by the People’s Court not to be a new product as defined by Article 61 paragraph 1 of the Patent Law.”

"It was understood that any product that is unknown in the domestic market before the filing date of a patent application could be deemed a 'new product'."

It is clear from the SPC’s interpretation that, when determining whether a product is a ‘new product’, the standard of novelty should be adopted. Second, to prove that a product lacks novelty, it suffices to raise only one piece of evidence showing the product is publicly known; to prove that a product is novel, however, is a never-ending endeavour, and a patentee can barely discharge his burden of proof. In practice, one possible solution is to require the alleged infringer to raise evidence to the contrary. As long as the alleged infringer has evidence that the product is already known before the filing date of the patent application, Article 61 paragraph 1 of the Chinese Patent Law regarding the reversal of the burden of proof should not apply.

This means, however, that the reversal of the burden of proof also applies in determining whether a product is a ‘new product’, which appears to exceed the extent of Article 61 of the Chinese Patent Law.

The meaning of ‘manufacturing an identical product’ and its determination

Notions of the meaning of ‘identical’ necessarily require a comparison. But what must be compared? That is a difficult question. Where an infringement lawsuit arises in relation to a product patent, the allegedly infringing product will be compared with the patented product to see whether the allegedly infringing product incorporates all of the technical features recorded in the claims.

There is a whole set of rules for judgment. For a process for obtaining a product, however, it is the technical features of the process, not those of the product itself that are recorded in the claims. In this case, the set of rules for judgment becomes useless.

To see whether an alleged infringer has ‘manufactured an identical product’, it is more practical to compare the allegedly infringing product with that obtained by the patented process. It can be assumed that a real product may incorporate unspecified ‘technical features’.

Will any difference between a potentially infringing product and the product actually obtained by the patentee lead to the conclusion that the former does not constitute an ‘identical product’, regardless of the significance of the difference?

The answer to this question must be no, or Article 61 would become meaningless to a great extent. But if the answer is no, how could the comparison be conducted? Moreover, it is likely that a patentee has not implemented his patent, resulting in no physical product. In this case, what should we do?

SPC’s latest position

The provision about reversing the burden of proof in Chinese Patent Law is very simple at first sight. In reality, it is pregnant with many questions that require in-depth discussion.

A comparison of the conditions for reversing the burden of proof laid down by Article 34 paragraph 1(a) and paragraph 1(b) reveals that paragraph 1(b) seems more desirable, because under paragraph 1(b) a patentee can easily raise evidence and the court can adjudicate with less difficulty.

This may prevent arguments on the procedural issue of whether to reverse the burden of proof, which may impede the proceedings.The SPC has recently expressed the following view:

“Where the product allegedly obtained by a patented process is not a new product, if the patentee can prove that the alleged infringer has made an identical product but despite reasonable efforts cannot prove the alleged infringer has actually used the said patented process, then under relevant judicial interpretation concerning evidence in civil proceedings, the patentee is released from raising further evidence and the alleged infringer is required to prove that his process is different from the patented one, provided that based on known facts and daily life experience it is highly likely that the alleged infringer’s product is made by the patented process.”

The SPC’s opinion has in essence adopted Article 34 paragraph 1(b) of TRIPS for the purpose of abating the process patentee’s burden of proving that his product is a new product, competent to solve difficulties frequently encountered in patent infringement litigation.

According to the SPC’s opinion, however, even if a product obtained by a patented process is not a new product, in a certain circumstances the alleged infringer may still be required to prove that his process is different from the patented one. This seems to go against the Chinese Patent Law in force. It should be noted that the SPC’s opinion represents only one of its views and has not acquired the effectiveness of a judicial interpretation.