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Influence of technical investigation officers system on patent litigation
date: 2018-08-14Tracy Wu

According to sources from the Supreme People's Court of China, the three IP courts of China, i.e. the Beijing Intellectual Property Court, the Shanghai Intellectual Property Court, and the Guangzhou Intellectual Property Court, which started operation respectively at the end of 2014, and established the technical investigation officers system in IP trials in 2015 and 2016 following their inception, now employ more than 60 technical investigation officers as their expert advisers, who have since engaged in more than 1,000 cases to help judges identify technical facts and clarify technical issues in IP disputes.  The technical investigation officers system, after almost three years’ operation (the first court to adopt being the Beijing IP Court) , has proved to be very effective in improving the efficiency and accuracy of trials on the cases involving complicated technologies in the IP courts.  For example, in 2016, 35 investigation officers in the Beijing IP court participated in 352 cases involving complex technology, and submitted 262 technical review opinions.  As a result, for cases involving technology, the conclusion rate in 2016 increased by 85% compared with the previous year.  Therefore, in the near future, the technical investigation officers system may be applied to the other newly established IP tribunals such as in Suzhou, Wuhan and Ningbo.


The technical investigation officers, who came from enterprises, universities, institutes, national patent authorities, and patent agent associations are supporting members of the judiciary, responsible for providing technical consultation to judges to survey relevant technical facts, and provide technical opinions on examination and other necessary technical assistance, and whilst they do not possess powers to pass judgments in cases, they are playing an important role in patent litigation in China since not all judges in the IP courts have technical backgrounds.  According to a statistic from Beijing High Court, more than 70% of patent cases which were rescinded by the Beijing High Court in 2015 were due to the failure of technical facts identification.  With the technical investigation officer system, it was reported that most of the technical opinions of examination made by the technical investigation officers were accepted by the judges, especially in complex technical cases.  Specifically, in terms of the Shanghai Intellectual Property Court, it was reported that no patent litigation cases have been rejected by a higher court on the grounds that the technical facts were incorrectly judged so far. 


Considering the important role of the technical investigation officers in the patent litigation system, it is important that litigants and patent attorneys understand their functions and take the following factors into consideration to adjust their litigation strategy:                    

1.    It is important to understand the background of the technical investigation officer. Firstly, investigating the background will help litigants and attorneys to be more specifically prepared for questions that the technical investigation officer may ask. Secondly, as technical investigation officers usually serve on a part-time basis, a full investigation on the background would also help to decide whether the litigants need to apply for the technical investigation officer 's avoidance with the court in order to avoid the possible non-neutral influence from the technical investigation officer involved.


2.    Preparing to explain the critical details of the technical facts to the technical investigation officer.  Instead of focusing on making the complicated technical points simple for the judge’s better understanding, it is advised that litigants and patent attorneys pay more attention to explaining technical details directly to the technical investigation officer. Litigants and patent attorneys are advised to fully explain the relevant technical issues, such as by submitting or presenting products samples or using presentations to explain the technical details. In addition, in explaining the technical issues in the Court, the role of the judge, who decides whether the technical investigation officer should investigate the specific technical facts and makes the final decision, should never be neglected.


3.    Hiring expert witnesses to help explaining relevant technical facts to the Court in patent cases.  In patent litigation involving complicated technical problems, the litigant and attorneys are advised to ask expert witnesses to help explain the concerned technical points.  In addition to the plaintiff, the defendant and the judge, the technical investigation officer can also question expert witnesses.  Given the technical investigation officer usually have strong technical background, and the expert witnesses would be helpful in convincing the panel when the case involves more complicated technical problems.  It should be noted that the testimony of the expert witness from a third party would be more acceptable than that from the litigant.


In summary, although currently there are some criticisms from the litigants on the technical investigation officer system, for example, patent litigation cases rely directly on technical investigation officers’ opinions which can neither be accessed by the litigants or attorneys, nor go through the cross-examination proceedings, it has proved to be very helpful in improving the efficiency and accuracy for the court’s trials on patent litigation cases involving complicated technologies.  Therefore, the technical investigation officers system may be applied widely in the IP courts and IP tribunals in the future.