Mastering the art of investigation and evidence gathering for patent actions

The gathering of evidence has always been a major legal obstacle that injured parties have faced in patent infringement actions. In a patent infringement case there usually is no direct physical connection or contact between the infringer and patent holder, meaning that evidence can only be obtained through investigation and collection by the patent holder.

As compared to ordinary types of cases, evidentiary standards in patent cases tend to be higher, increasing the weight of the burden of proof on the patent holder. The marked intensification of patent protection efforts in China in recent years has also, objectively, enabled infringers to accumulate experience in countering investigations and evidence gathering. In this column, the author intends to give an overview of the basic skills for investigating and gathering evidence for patent infringement actions.

Reliance on one’s own devices

One important direction in patent infringement cases is solidifying the existence of the facts of the infringement and relying on this to lock up such core information as the infringing entity, facts of the damage, extent of the damage, etc. Relevant information is often obtained by making an onsite purchase in the name of a third party, or by engaging a third party to make such purchase.

Based on considerations of time, cost and manpower, many patent holders hope to obtain all the information they need in a single buying action. However, we reckon this is a case of haste makes waste, with the desire seldom achieving the ideal result of gathering sufficient evidence.

Accordingly, we recommend two buying acts to complete the collection of such evidence:

First onsite gathering of evidence. The main objective is to establish initial contact with the infringer by using a normal trading method to open communications with the infringer. The principal idea is to discuss the intent to buy.

During this process, it is important to concentrate on the basic particulars of the infringer, its scale production, monthly sales volume, sales channels, inventory and other such information. Furthermore, samples should be purchased as preparation for the second formal placement of an order, while also obtaining an invoice or receipt bearing the official seal of the infringer.

Obtaining official seal information is a key step in the first onsite investigation. With this, the patent holder can accurately determine the infringing entity and obtain a fuller understanding the infringer’s background information so as to determine whether to gather further evidence on the infringer.

After becoming aware of infringement, some patent holders will commonly make immediate contact with the infringer, thereby raising the infringer’s wariness with regards to its sale of the infringing merchandise.

If, in the course of gathering evidence, the patent holder shows excessive enthusiasm for buying the infringing product, it could raise the suspicion of the infringer, making it impossible to achieve the anticipated result. Accordingly, we would recommend the purchase of samples of several different products in an effort to obscure the focus and lull the infringer into letting down its guard.

Second onsite gathering of evidence. Having completed the first initial gathering of evidence, the patent holder can launch the second onsite gathering of evidence, namely formal purchase. We recommend that the patent holder invite notaries along so as to strengthen the solidification of the sales acts. Based on the author’s experience, notaries will usually agree to conceal their true identities and come along as accompanying personnel.

In the hope of avoiding the effects of local protectionism, some patent holders will seek to have the place of occurrence of the infringement changed to a place other than where the infringer is located. Accordingly, they will have the infringer transfer the infringing product, by shipping the same, to the place where they are located or elsewhere. However, there are certain operational obstacles to this shipment method.

For example, when receiving the infringing product, the infringer has not left behind any consignor information, thereby making it impossible to determine the infringing entity; or, as a further example, as many patent holders will not disclose their true identities or use false identity information when investigating and gathering evidence onsite, this will result in a defect in the entity when notarizing the reception of the goods at a later date.

Reliance on authorities

At times, relying on one’s own devices to gather evidence is insufficient. For example, the products of some infringers are only for export or wholesale, obviating contacts with domestic buyers and thus hindering the gathering of evidence by patent holders.

In this case, the patent holder may consider drawing on the resources of the administrative authorities to co-operate in gathering evidence by submitting a report to the industry, commerce, customs or other such authority, and solidifying the facts of the infringement in the course of the investigation.

Seeking the help of customs as an example, the patent holder needs to complete customs recordal of the patent in advance. The patent holder should also do its best through its own investigation to find out when, from where, and by which means the infringer will export the product, and promptly provide the relevant leads to customs to help its investigation.

Once customs has carried out its investigation, samples of the infringing product and the relevant customs documents should be promptly obtained to serve as key evidence in the future rights protection action.

Seek professional help

Some patent holders wish to quickly obtain evidence of an infringement, but vexed by a lack of effective means, they themselves buying the infringing product by placing an order online, and once the infringer delivers the infringing product to the port of export, they file a report with customs to have it seized.

Although evidence of infringement can be secured relatively quickly in this way, because the IP address in China or even abroad and the consignee could be fake, the validity of the evidence may be challenged. Accordingly, we recommend that when a patent holder places an order, it should seek the professional opinion of a lawyer so that the usability of the evidence can be enhanced.

Vincent Mu is a senior associate and Ada Zhang is an associate at Martin Hu & Partners