How are technical matters considered in patent litigation proceedings?

Patent Litigation

Australia Small Flag Australia

Expert evidence on technical matters is key in Australian litigation. The evidence is usually given by affidavit, which serves as an expert’s evidence in chief. Experts will also be cross-examined at trial.

Expert witnesses are usually independent and retained (and typically paid for their time) by the parties. Such experts must be informed and acknowledge in their evidence that their duties are to the Court.

Joint expert evidence processes are commonly encouraged by the Court. This can include expert conclaves in the absence of lawyers, during which the experts produce a written joint expert report setting out matters of agreement and disagreement, and concurrent expert evidence (“hot tubs”) at trial, with the parties’ respective expert witnesses giving evidence together addressing an agreed set of topics.

The Federal Court of Australia also actively encourages use of joint summary documents, such as agreed technology primers.

Austria Small Flag Austria

Ultimately technical matters are examined by the technical lay judge (usually a patent attorney), who is part of the deciding senate in infringement proceedings.

Additionally, expert opinions are an important part of infringement proceedings.

Private experts are especially important in PI proceedings, since the court will generally not appoint an expert, because only readily available evidence is admissible in PI proceedings. Private experts are usually patent attorneys. In complex cases, however, more and more also experts from the relevant field are used to support the patent attorney.

In main proceedings, on the other hand, court-appointed experts (also usually patent attorneys) often play a deciding role. The court-appointed expert will render a written opinion on the validity and/or infringement of the patent. The parties then have the right to pose additional questions to the expert in writing and during a hearing.

Usually, the court will follow the opinion of the appointed expert. Even in second instance, his opinion will seldom be overturned. However, it should again be noted that if the court-appointed expert considers the patent likely to be invalid the infringement court must stay proceedings. The final decision on invalidity is always made by the APO, where the opinion of the court-appointed expert will have little effect.

If there are reasons to assume that a court-appointed expert is not objective and impartial the parties may file a motion the reject him.

Brazil Small Flag Brazil

In view of the lack of technical background, judges hearing infringement and validity matters rely heavily on the technical report issued by an unbiased court-appointed expert. The parties can appoint technical assistants to interface and to provide technical information to the court-appointed expert.

The parties can also file technical opinions prepared by experts from Brazilian and foreign universities in order to raise the chances of obtaining, for example, a preliminary injunction.

Canada Small Flag Canada

In Canadian patent litigation, it is typical for each party to submit evidence from an expert or experts of their choice, which typically takes the form of an affidavit or report, provided in advance of the expert giving evidence at trial. An expert has a duty to assist the court and provide an independent and unbiased opinion about matters within their expertise. The expert will likely be cross-examined for the first time at trial, as there is no right to pre-trial discovery of expert witnesses in the Federal Court.

China Small Flag China

In China, the law does not clearly define “expert witness”. On the other hand, Articles 122 and 123 of Interpretations of the Supreme People’s Court on Application of the Civil Procedural Law of the People’s Republic of China (hereinafter referred to as “Interpretations of Civil Procedural Law”) provides that a litigant may apply before expiry of the duration for presentation of evidence for one to two experts to represent the litigant in court to cross-examine the appraisal opinion, or to give opinions on specialised issues involved in the facts of the lawsuit. The opinions given by the experts in court on specialised issues shall be deemed as the litigant’s statements. Experts may be questioned in court. Upon approval by the court, a litigant may question an expert in court, and the experts applied by the respective litigants may confront the relevant issues in the lawsuit. Experts shall not participate in court hearing activities other than specialised issues.

Czech Republic Small Flag Czech Republic

Experts are relied on to resolve technical issues, as the judges are not technically trained.
The regional courts maintain a list of appointed experts for various fields, such as ‘chemistry’, ‘electronics’, ‘economics’ etc. Any person with qualifying education and experience in the field can apply to be appointed as an expert in the field by one of the regional courts. The court and the parties can then approach this expert.

One of the fields in which expert can be appointed is “patents and inventions”. Such experts regularly prepare reports on whether a product or process falls within the scope of a patent.
The court can appoint an expert to prepare an expert report to resolve a technical question. The technical findings of the expert are binding on the court, however, if the court is of the opinion that the findings are not incorrect it can appoint a further expert to answer the same question or to review the expert report.

An expert report prepared for one of the parties is binding on the court if it satisfies the necessary legal requirements and is accompanied by a declaration of the expert that he/she is aware of the sanctions for a knowingly incorrect report.

In every case the court should summon the expert to an oral hearing where the expert is cross examined by the court and the parties.

The expert, even if commissioned by one of the parties, must remain impartial and objective; its duties are to the court.

France Small Flag France

Only in exceptional cases, in where the court considers that a given technical subject requires a specific expertise, it will appoint a technical expert, and if the court is not capable of assessing any relevant technical issues itself, a technical expert is appointed.

Court-appointed experts draft a report providing an opinion on technical issues, which can be challenged by the parties. The expert does not testify at the oral hearing, and therefore is not cross-examined. The Court is not bound by the opinion of the expert.

In some technical matters, in order to prove infringement and to assist the court’s technical understanding, the parties can:

- hire a private expert to submit a privately commissioned opinion, such as a report;
- use a witness statement of facts.

It has to be pointed out that if the experts can be heard in some exceptional cases, there is no cross-examination in France.

Germany Small Flag Germany

As a general rule under German law, the courts themselves have to interpret the claims. Technical experts are rarely used and are not allowed to interpret any claims or scope of protection but can only provide assistance and guidance regarding facts of infringement (such as measurements, technical terms or understanding). For example the court has to find a correct interpretation of the patent claims (without solely relying on a technical expert) to decide whether an accused product fulfils claim features or a patent is rendered obvious.
Therefore, technical matters have to be explained to the court in a way that the court can readily understand them and make up its own mind regarding claim interpretation. Sometimes, private expert opinions on specific technical questions are presented in order to provide the court with an in-depth understanding. However, these opinions are not considered expert evidence but mere party pleadings.

Where a court-appointed expert is used, the expert will provide a written expert opinion and will be heard during the oral hearing as an expert witness. During this procedure, the parties can also question the expert. However, the proceedings are not comparable to cross-examination proceedings in other jurisdictions. The main questions to the expert are asked by the court. Any additional questions by the parties must be focussed and usually only a few questions are allowed. Courts are very cautious to ensure that the witness is treated fairly and that the questions are focussed and necessary to understand a specific finding of the expert.

Greece Small Flag Greece

As the judges serving in Greek specialized patent courts have excellent legal knowledge but no technical background, in patent cases involving complex technical issues expert opinions are indispensable. Expert witnesses may testify before the court either orally or by affidavit. Expert opinions may often prove to be pivotal to the outcome of proceedings, particularly in complex cases Therefore, experts play a key role in the outcome of proceedings. It must be noted that judges tend to give the opinion of a distinguished expert more weight than that of a non-technical person.

India Small Flag India

a) Expert witness - As per Section 45 of the Indian Evidence Act, 1872, expert witnesses may be summoned under the procedure code to establish any particular fact in a trial. When the Court has to form an opinion upon a point of foreign law or of science or art, or as to identity of handwriting or finger impressions, the opinions upon that point of persons especially skilled in such foreign law, science or art, or in questions as to identity of handwriting or finger impressions are relevant facts. In highly technical matters the Court has to go by the opinion of the experts in the field, whose testimony is found trustworthy and reliable and supported by documents.

b) Scientific Advisers - Under Section 115 of the Patents Act, 1970, the court, in any suit for infringement of a patent or in any other proceeding relating to a patent may at any time, regardless of whether an application is made in that regard or not, appoint an independent scientific adviser to assist the court or to inquire into any question of fact or of opinion as it may formulate for the purpose. The Controller of Patents is also required to maintain a roll of scientific advisers for the above purpose. Any person may be entered in the roll of scientific advisers provided he holds a degree in science, engineering, or technology or equivalent; has at least fifteen years of practical or research experience; and holds or has held a responsible post in state or central government. (Rule 103, Patents Rules of 2003)

c) Hot-Tubbing - Recently, the concept of Hot-Tubbing has been introduced in Chapter XI Rule 6 of the Delhi High Court Rules, 2018 and guidelines for the same have been provided in Annexure G of the Rules. ‘Hot-tubbing’ is a technique in which expert witnesses give evidence simultaneously in each other’s presence and in front of the Judge, who puts the same question to each expert witnesses. It is a co-operative endeavour to identify key issues of a dispute and where possible evolve a common resolution for all of them. However, where resolution of issues is not possible, a structured discussion, allows the experts to give their opinions without the constraints of the adversarial process and in a setting which enables them to respond directly to each other. The Judge is thereby not confined to the opinion of only one expert but has the benefit of multiple experts who are rigorously examined in public.

Ireland Small Flag Ireland

Expert evidence plays a central role within patent litigation in Ireland.
The construction of the patent claims is an issue solely for the Court however the Court’s task is to read the claims through the eyes of the skilled person in the art and the expert’s role is to enable the Court to undertake that task. The purpose of an expert in a patent case is to clothe the Court in the mantel of expertise worn by the witnesses, so the Court may make its own decision.

In Re Glaxo Group, Charleton J characterised the skilled team or addressee as being “an ordinary practitioner in the field of technology who is aware of what was common general knowledge in the art as of the relevant date.”

Accordingly, the expert witness may give evidence as to the state of the art at any particular time, to address technical terms, to address whether the specification allows the invention to be carried into effect, to address what the patent would have taught him or her on any given hypothesis and whether a variation from the precise terms of the patent would have a material effect upon the operation of the patented invention.

Certain economies of scale and cost savings obviously arise in addressing both validity and infringement in one set of proceedings before the Irish Court. For example, the expert report(s) would generally deal with both issues and the matters are usually heard and dealt with together in the context of the same hearing.

Israel Small Flag Israel

In court proceedings, once the exchange of pleadings is completed, the parties may send each other demands for discovery of documents and interrogatories. In principle, any documents containing information which may be pertinent to the subject matter of the proceedings must be discovered. However, in practice, and pursuant to the restrictive approach adopted by the case law, discovery under Israeli law is quite limited. Although documents containing trade secrets are in principle discoverable (possibly under appropriate protective orders), it is often quite difficult to obtain court orders requiring such disclosure. There is no cross-examination or deposition of witnesses in discovery proceedings which are essentially conducted by exchange of affidavits between the parties. However, if inappropriate discovery is made by one of the parties, it is possible to petition the court to order better discovery or additional response to interrogatories.

Discovery is not part of Patent Office proceedings. However, in recent decisions, the Patent Office recognized that it has authority to order limited discovery in appropriate circumstances.

In court infringement proceedings, a wide range of conservatory measures are in principle available if the plaintiff is able to establish a prima facie patent infringement claim. Among others, the court may grant a search and seize (Anton Piller/saisie-contrefaçon) order with respect to assets that constitute evidence or are otherwise required for adjudicating the action, if the plaintiff raises a strong prima facie case that the assets might be destroyed, concealed or removed from the possession and control of the defendant (in general, it will be difficult to meet the requisite prima facie standard in proceedings against substantial commercial entities which are not expected to violate a court order). If the assets concerned are paper documents or digital media, the order may provide that duplicates are to be made and the originals are to remain in the possession of the defendant or be returned to him.

A search and seize order, like any other preliminary remedy, may be granted also prior to filing a claim against the defendant, on condition that a claim is filed within seven days from the date of the order or within another period prescribed by the court.

Italy Small Flag Italy

Italian judges have no technical background and are always assisted by a Court-Appointed Expert. CAEs (normally senior patent attorneys registered with the court) are appointed in both merits and interim (PI) proceedings and asked to produce a written opinion untangling the technicalities of the case and providing their view on whether the patent is valid and infringed.

Delivery of the CAE opinion is a stepwise process. The parties feed their arguments (mostly in writing) and technical evidence to the CAE before the latter produces a preliminary opinion. The parties review said opinion and provide their own comments (once again, mostly in writing). Further to this, the CAE produces a final, non-binding opinion which serves as a “primer” or guidance for the judge to adjudicate the case.

Parties are allowed to appoint their own experts and avail of their support when submitting their arguments and evidence to the CAE. However, these experts do not act as “expert witnesses”. They are professionals (mostly patent attorneys skilled in the relevant technical field) who work alongside and cooperate with lawyers when preparing arguments for the CAE.

Japan Small Flag Japan

A party may, at its own discretion, choose to submit expert opinions as evidence items. A party is also allowed to seek examination of witnesses; however, patent lawsuits in Japan rarely involve witness examinations being conducted. The Japanese courts have Judicial Research Officials with technical backgrounds, and they help judges to understand any technical matters which may arise. The courts are also entitled to appoint third-party experts (such as professors and patent attorneys) as expert advisers when the relevant case is specialized or complicated from a technical viewpoint; however, the opinions stated by the Judicial Research Officials and expert advisers are not employed as evidence. The Judicial Research Officials, serving as court officials, are under confidentiality obligations, while the experts or expert advisors who are involved in, for example, submitting opinions, tend not to have a confidentiality obligation against the parties.

Norway Small Flag Norway

Evidence is subject to free assessment by the court. There is no restriction as to the kind of evidence, which may be documents, physical objects like models or infringing goods, witness statements and expert statements.

The court may appoint experts on application from a party or also on the courts own motion where the court finds that such appointment is necessary to establish a sound factual basis for the ruling in the case.

In patent cases, it is more common that the parties present their own experts as witnesses. A party may call witnesses to give expert testimony. An expert witness may attend the hearing throughout and may be allowed to ask questions to parties, witnesses and experts. Usually the expert witness present a written report to the Court. The expert witness will however have to present the main content of the report orally during the oral hearing and he or she will be subject to cross examination during the oral hearing. Although expert witnesses are instructed by a party, the expert witness is under a duty to present his/hers sincere assessment and viewpoints to the Court.

Poland Small Flag Poland

In the main action, claims are construed almost always with the assistance of a court-appointed expert. As a first step, the meaning of the words contained in the claim is determined on the basis of the patent description. Then, based on the court-appointed expert opinion, the court ascribes the usual meaning of such terms in the relevant area of technology.

Experts play a decisive role in recognition of patent infringement cases in Polish jurisdiction. Pursuant to the provisions of the code of civil proceedings, it is obligatory to admit the evidence of the court-appointed expert opinion if determination of certain matter requires special knowledge. A notion of "special knowledge" usually embraces technical matters, but a court-appointed expert opinion may be admitted also for determination of licence fees, damages, calculation of unlawfully obtained profits in accordance with accounting records, etc.

Experts are appointed by the court from the official list of court expert witnesses or ad hoc. In case of rare technical fields like bioinformatics, cytogenetics, etc, the parties usually present the lists of proposed expert to the court and the court chooses from such list.
In complex cases any party may request that an institution be appointed as expert (eg, technical university, medical university, etc).
A court-appointed expert prepares a written opinion. It is usually followed by an oral testimony of the expert, which is however much different to a cross-examination (e.g. it is not allowed examine court appointed by private experts and the judge decides whether to allow a question or not).

Evidence of a court-appointed expert opinion is not admitted in the PI proceedings. It is generally sufficient to present an opinion of a private expert. In isolated cases the courts decide that the complexity of the case requires an oral testimony of the court-appointed expert's opinion and dismiss PI requests.

Very rarely is a court(office)-appointed expert admitted in invalidity matters mainly as it is assumed that at least one of the examiners should have a relevant technical background in the field of the invention. The law allows for such an opinion only in exceptional instances.

Portugal Small Flag Portugal

Five types of experts should be considered:

  1. expert witnesses who will provide evidence before the court: they are appointed by the parties; as a rule, they are examined during the hearing (where they need to take an oath), although they may also may give written testimonies (affidavit); cross-examination is always permitted; they shall be independent and have no direct or indirect interest in the dispute; their oral declarations are recorded.
  2. technical advisors to assist each of the parties during the hearing: they assist the counsels and have the same powers granted to the counsel during the hearing.
  3. technical advisors to assist the court during the final hearing: they assist the court in technical matters; they are appointed by the court, usually following a discussion between the parties on the characteristics that he or she should have and on the Portuguese public institution that should be notified to indicate someone; they may ask questions to any witnesses during the hearing.
  4. technical experts who provide written opinions: these documents can be attached as evidence at any time prior to the delivery of the decision.
  5. expertise conducted by a single expert / team of experts: it may be ordered ex officio by the judge or upon request by any of the parties and it is usually conducted by a team of three experts (two competing experts and one court appointed); the expert(s) must give answers to direct questions and facts by means of a technical report and may be required to attend the oral hearing to provide any oral clarifications on the expert report.

Russia Small Flag Russia

The technical matter can be studied either by expert witness appointed by the court, or by expert (specialist) brought by a party (and the party provides specialists’s opinion as evidence to the court). The patent infringement proceedings in the court almost always (unless the defendant agrees with a fact of the use of invention) involve expert witnesses, which are being appointed by the judge upon considerations of candidates provided by the parties. The judge has an option to appoint his own candidate. The judge can appoint a panel of experts (e.g. one expert from each party). The parties can propose their own questions to an expert, while the judge can approve or withdraw such questions. The expert is to study the questions set by the judge and to provide written opinion on those questions. The expert opinion is a evidence studied by the parties and discussed during the court hearings. If any party can show any discrepancies in the expert opinion provided, it can request cross-examination of the expert witness. The expenses on the expert witness are put on the parties, but it is being done via court deposit - so judge approves such payments. The losing party is to compensate spendings on witnesses in full.

Singapore Small Flag Singapore

In the context of patent litigation, experts may be called to give opinion evidence on technical matters and scientific information relating to the patent. Expert evidence is admissible in relation to matters that ordinary persons are unlikely to have sufficient knowledge to give meaningful evidence. Specifically, an expert may give evidence on:

(a) the prior art at any given time;

(b) the meaning of any technical terms used in the prior art and an explanation as to facts of a scientific kind;

(c) whether, on a given hypothesis as to the meaning of what is described in the patent specification, whether the specification can be carried out by a skilled worker;

(d) at any given time, what a given piece of apparatus or any given sentence on any given hypothesis would have taught or suggested to him;

(e) whether a particular operation relating to the art would be carried out; and

(f) what is common general knowledge to a person skilled in the art.

While the Court may appoint a Court expert on its own motion or on the application of any party to the proceedings to assist the Court on technical matters, parties usually engage their own respective experts.

It is the duty of an expert to assist the Court on the matters within his expertise, and this duty overrides any obligation owed to the person instructing or paying him.

Unless the Court otherwise directs, expert evidence is given in a form of a written report. This report must contain relevant details including details of his expert’s qualifications, a statement setting out the issues he was asked to consider, and the literature or materials he has consulted in preparing his report. A party may with the Court’s leave put written questions to an expert about his report. ¬

This report will be sworn by the expert in his AEIC, and either party may cross-examine the other party’s expert on the contents of his report.

The Court may also order that some or all of the expert witnesses give their evidence concurrently by testifying as a panel if parties consent (i.e. hot-tubbing).

South Korea Small Flag South Korea

Technical issues are considered in a similar manner with other factual issues in patent litigation. Thus, the parties bear the burden to procure and submit evidence to support its position in technical issues, and a written opinion or testimony of an expert retained by either party can be submitted as evidence. In addition, parties may request inspection by a court-appointed expert, and if the request is granted, the court appoints a third-party expert (individual or institution), and the expert analyzes technical issues and submit his or her opinion.

For a thorough and effective review of technical issues, some courts including Seoul Central District Court and the Patent Court involve technical advisors (mostly provided by the court and sometimes dispatched from the KIPO or IPTAB) in patent litigations to assist the judge panel.

Sweden Small Flag Sweden

Expert witnesses invoked by parties are permitted to testify. In such cases, a written statement must also be submitted. While these experts to some extent will testify to the benefit of the party which they are invoked by, they testify under oath and can thus not be partial.
Court appointed experts exist, however these are in practice never used in patent cases.

Switzerland Small Flag Switzerland

The panel of the FPC always includes at least one judge with technical training, in general, in the technical field in dispute. Therefore, the FPC has a high level of technical expertise.

The parties may submit private expert opinions in support of their allegations. However, the evidential value of such opinions is relatively low, as they are considered to be mere party allegations rather than proper evidence.

Court-appointed experts played an important role before the establishment of the FPC. Today, the FPC relies on its own expertise, even though it could still appoint external experts.

Taiwan Small Flag Taiwan

In most cases, the IP Court judges will consider technical matters by themselves, with the help of technical examination officers. IP Court judges will not refer a technical issue to an independent institute unless said technical issue is extremely complicated and requires expertise of an independent institute. Both parties in some cases are allowed to present expert witness testimony to establish technical facts.

Thailand Small Flag Thailand

In most cases, the IP Court judges will consider technical matters by themselves, with the help of technical examination officers. IP Court judges will not refer a technical issue to an independent institute unless said technical issue is extremely complicated and requires expertise of an independent institute. Both parties in some cases are allowed to present expert witness testimony to establish technical facts.

Turkey Small Flag Turkey

While the judges in the specialised IP courts have a significant understanding of the IP Law, they do not have a technical background and commonly appoint experts ex-officio to better understand the technical merits of a case. This is also derived from the precedents of the Court of Appeal, which underlines that for technical issues the courts must confer to experts. In patent litigation, generally, the court appoints a panel consisting of three experts. The judges appoint experts ex-officio, yet parties are entitled to oppose to this choice by arguing that the appointed expert does not have the relevant expertise. Alternatively, it is also possible for the parties to agree on a panel of experts and such panel may be suggested to the court.

Experts are prohibited from declaring an opinion on the legal issues being decided on by the court. They are expected only to declare their technical opinion on the questions posed to them.

As a rule, experts submit their opinion in writing as a report. If the judge deems it necessary, further questions may be addressed to the experts in order to enlighten the technical merits of the case or remove the contradiction. Even though the experts have to attend the examination hearing, if the judges decide on, cross examination or giving oral statements at the hearings are not common in practice.

United Kingdom Small Flag United Kingdom

Technical matters in UK patent litigation proceedings are typically considered by way of judicial consideration of the evidence of competing yet independent experts engaged by the parties. Under CPR 35.5, experts typically file written expert reports in advance of trial (either sequentially or simultaneously). If at trial a party wishes to rely upon the written evidence filed by its experts, it must allow for its experts to be cross-examined by the other parties to the dispute. This is common where they have given evidence on technical matters which are in dispute. Under CPR 35.6, a party may put written questions about an expert’s report to an expert instructed by another party, or a single joint expert (as discussed below).
Under CPR 35.3, it is the duty of experts to help the court on matters within their expertise, and this duty overrides any obligation to the party providing instructions (and/or payment) to them.

Under CPR 35.12, the court may, at any stage, direct a discussion between experts for the purpose of identification and discussion of the expert issues in the proceedings, and where possible, reaching an agreed opinion on those issues. Further, the court may direct that following a discussion between the experts they must prepare a joint statement for the court setting out those issues on which agree and disagree, along with a summary of their reasons for any disagreement. However in practice, this is rarely ordered.

Under CPR 35.7 where two or more parties wish to submit expert evidence on a particular issue, the court may direct that the evidence on that issue be given by a single joint expert rather than competing experts. If the parties cannot agree on a single joint expert, the court may select the expert from a list prepared or identified by the parties, or direct that the expert be selected in any other manner. In practice, the appointment of a single joint expert in patent litigation proceedings is not common.

Pursuant to section 70 of the Senior Courts Act 1981 the court may in certain circumstances appoint an assessor or a scientific adviser to assist the court in dealing with a matter in which the assessor has skill and experience. Under CPR 35.15, such an assessor will take such part in the proceedings as the court may direct, and in particular, the court may direct an assessor to prepare a report for the court on any matter at issue in the proceedings, and attend the whole or any part of the trial to advise the court on any such matter. Assessors are not commonly relied upon in patent litigation proceedings.

There is also scope for the use of a neutral scientific adviser in technically complex cases (separately from that provided for under the Senior Courts Act 1981), whereby said adviser stages a ‘teach-in’ to assist the court in understanding the relevant technology, without sitting in court for the whole trial. In this regard, see Electromagnetic Geoservices ASA v Petroleum Geo-Services & Ors [2016] EWHC 881 (Pat).

In patent litigation proceedings involving complex subject matter, it is common for the parties to prepare before trial a joint technical primer setting out the agreed basic undisputed technology relevant to the case. The Patents Court Guide at paragraph 13.6 encourages the production of a technical primer in advance of the expert reports so as to avoid substantially the same material being described by each expert. It is also common for a defendant to an allegation of infringement to provide a Product and Process Description (“PPD”) of the alleged infringing product or process in lieu of providing disclosure.

United States Small Flag United States

In addition to documents and factual testimony, which are collected during fact discovery, patent litigation in the U.S. often involves expert witnesses to address issues such as infringement and validity. Competing expert witnesses will usually be retained by the patent owner and accused infringer. During expert discovery, these witnesses are required to submit a report describing their opinions and the facts which support them, may optionally submit a rebuttal report addressing the opinions of the opposing side’s experts, and must be offered for deposition to the opposing side.

While expert witnesses are retained by the parties and tend to advance the parties’ respective positions, ultimately their duty is to provide impartial evidence to the court.

Vietnam Small Flag Vietnam

ue to their lack of knowledge and experience in IP, Vietnamese courts often rely on expert opinions from authorised expert witnesses to handle IP cases. These expert opinions, though non-binding, can tip the balance in infringement proceedings, and often provide guidelines for enforcement bodies (the courts and administrative enforcement bodies such as MOST) to resolve their cases. Therefore, for the purpose of patent enforcement, the patentee should try to win a favourable expert opinion confirming patent infringement.

The patentee can seek the expert opinion before filing a suit/administrative action. This would enable the patentee to gauge the chance of success for the proceedings. During the proceedings, the patentee can either seek the expert opinion itself, or ask the court/enforcement body to do so.

Only a few entities in Vietnam are licensed to issue recognized expert opinions on IP infringement, including:

- Vietnam Intellectual Property Research Institute (VIPRI): A quasi-governmental agency under the management of MOST. VIPRI is the only agency authorised to issue expert opinions in the IP field in Vietnam.

- Other licensed independent, individual experts. These experts are mostly former, high-ranking officers at the IP Office.

In addition to VIPRI, the IP Office also issues opinions on IP infringement to facilitate potential enforcement actions. However, in practice, the IP Office has unofficially decided not to issue opinions to IPR holders on patent infringement matters. They primarily only give their opinions to the competent authorities such as the MOST Inspectorate, on request.

Updated: November 14, 2019