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19 November 2018
The Beijing IP Court – which has jurisdiction over administrative cases concerning patent re-examinations and invalidations – handles a substantial number of patent administrative cases each year. In 2016 the court accepted 2,184 cases and concluded 1,341 technology-related cases. Despite a 90% increase in the number of concluded cases since 2015, the court is still under enormous pressure to reduce its case backlog, of which patent administrative cases account for a considerable proportion. Given the limited number of judges, most of whom have only legal knowledge, the determination of technical facts has a significant impact on trial efficiency and fairness.
In order to reduce its case backlog, the Beijing IP Court recently began enlisting technical investigators and jurors with technical expertise in court proceedings.
Compared with technical investigators, jurors with technical expertise advise the courts on both technical and legal matters in patent administrative cases and may be appointed on a more flexible basis.
Since 2014 technical investigators have been extensively involved in patent administrative cases. However, this has not been without problems. As they are tasked solely with examining technical facts, technical investigators can face challenges in patent administrative proceedings in which technical fact-finding and legal matters are often intertwined. Moreover, technical investigators are a limited human resource. For example, the Beijing IP Court is assisted in the vast majority of cases by five technical investigators who do not form part of its permanent staff.
Jurors with technical expertise are people's jurors with significant knowledge of their field and a particular skill set. This enables them to conduct technical analyses and bestows them with a certain level of competence and understanding. Jurors with technical expertise may raise questions and voice their opinions on both fact-finding and the application of the law. In accordance with the Law on People's Jurors, the courts may create a panel of people's jurors comprising no less than three times the number of judges. This gives the courts more liberty to choose jurors with technical expertise from the entire pool of candidate jurors.
In judicial practice, jurors with technical expertise have proven to be helpful in improving efficiency and ensuring fairness. The below case illustrates how jurors with technical expertise can assist judges to rapidly ascertain technical facts and make judgement calls in administrative patent invalidation cases.
The case involved a cooking device which had undergone eight rounds of invalidation applications. In the ninth round, the Patent Re-examination Board overturned its prior finding, opining that the patent at issue was neither novel nor had a sufficient inventive step. The patentee filed an administrative litigation before the Beijing IP Court. The collegiate panel comprised a judge and two people's jurors, whose understanding of the case's technical issues implies that they were jurors with technical expertise in the mechanical field.
During the court hearing, the parties concerned had a heated debate on the differences between the patent at issue and the prior art. After listening to their opinions, the jurors summarised the focus of the controversy as "whether it is necessary to add grease in the cooking device of the prior art during the cooking process", in response to which the parties were instructed to present their defence. Moreover, when deciding whether the patent at issue involved an inventive step, the jurors held that "the cooking device of the patent at issue can be assembled with components of the prior art", but that "since any new product can be obtained through assembling in the mechanical field, it would be untenable if the creativeness of the patent at issue simply hinges on the fact of whether the patented device can be assembled".
Based on the jurors' analysis, the Beijing IP Court made a first-instance judgment to revoke the Patent Re-examination Board's invalidation decision.
The following tips should help patent owners to understand the Beijing IP Court's new practice:
For further information on this topic please contact Hewen Zhao at Wanhuida Peksung by telephone (+86 10 6892 1000) or email (firstname.lastname@example.org). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.
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