The Effectiveness and Precautions of Unilateral Commissioning Authentication in IP Litigation

Article 63 of the “Civil Procedure Law” has listed 8 categories of evidence, which include the authentication opinion. Article 76 only prescribes 2 methods to initiate the judicial authentication, which are, ①the parties may apply to the court for authentication, or ②the court may entrust an agency to conduct the authentication at its own discretion, if no party apply for authentication. Since there are only 2 methods to initiate the judicial authentication, in practice, some people think the unilateral commissioning authentication is lack of legal basis, which shall not be deemed as the evidence listed in Article 63.
In fact, this opinion is wrong. Article 28 of the “Some Provisions of the Supreme People’s Court on Evidence in Civil Procedures” (hereinafter referred to as the “Provisions”), states the pre-conditions for a redo of a unilateral commissioning authentication, which means a unilateral commissioning authentication is acceptable.
In addition, Article 27 and Article 28 of the “Provisions” have stated different requirements on dealing with the redo application proposed by a party concerning the authentication entrusted by the court and the counterparty. For the authentication entrusted by the court, the party shall prove that ①the authentication institution or authenticator does not have relevant qualifications; ②the process of authentication is seriously illegal; ③there are obviously inadequate evidences for the authentication conclusions; ④other circumstance that, after cross-examinations, cannot be used as evidences. For the authentication entrusted by the counterparty, the party shall provide adequate evidences to rebut.
In the IP infringement cases, many plaintiffs would entrust the IP judicial authentication agency to issue an authentication report. Because it is very important to keep the evidence in the right timing for IP rights, and the plaintiffs could evaluate the lawsuit in advance. In addition, IP is a technical and professional property, which requires a professional analysis by the specific agency.
However, since IP is intangible, in order to prevent the court to reject the unilateral commissioning authentication opinion, or the counterparty to provide evidence to apply on the redo of the authentication, the party who entrusted the authentication unilaterally shall pay special attention to the relevant issues.
From the perspective of the judicial practice, the courts might review some key points related to the unilateral commissioning authentication opinion, which include the following points.
Firstly, to ensure the authenticity, legitimacy and relevance of the authentication materials. For example, if the object is a technical secret, then the party shall provide sufficient evidence to prove the ownership, such as the original acquisition(R&D) or subsequent acquisition (transfer or license); and the party shall analyze whether the technical program belongs to the existing technology. Or, for the comparison authentication, the party shall guarantee the source of the alleged infringement object must be legitimate. Normally, it is recommended to entrust a notary office to obtain the alleged infringement object. In practice, sometimes, due to some reasons, such as the alleged infringement object is too expensive, or the buyer is limited to a specified group, the party could not obtain the object. Then if the party could take the video or photo of the object, which could reflect the technical characteristics clearly, and provide other evidence to verify, such as the relevant website page, product brochure and etc., then the unilateral commissioning authentication opinion is still possible to be accepted by the court. (For example, (2015) Hu Min Zhi Chu Zi No.748).
Secondly, to handover the relevant documents and contact the authentication agency properly. In order to avoid repetitions work, the party shall pay attention to the requirements of the authentication agency, such as the method and format of the relevant materials, and provide the materials accordingly. In addition, according to the “General Provisions on the Procedures for Judicial Authentication”, the judicial authenticator shall conduct authentication independently, objectively and impartially, and shall only meet the litigants and their entrusted agencys in accordance with the relevant regulations.
Thirdly, to ensure the effect of the judicial authenticators in the hearing. According to Article 78 of the “Civil Procedure Law”, where a party raises any objection to an identification opinion or a court deems it necessary to require the judicial authenticator to testify in court, the judicial authenticator shall testify in court. If, upon notice by the court, the judicial authenticator refuses to testify in court, the authentication opinion shall not be used as a basis for deciding facts. In view of this, the professional competency and presentation skills of the judicial authenticator might affect whether the court would accept the authentication opinion. The party shall have a comprehensive knowledge of the judicial authenticator before entrusting the authentication agency. After entrusted the authentication agency, the party shall provide a detailed and easy to understand materials to the judicial authenticator, by which the judicial authenticator could understand the technologies in the relevant objects comprehensively.