In tort proceedings, evidence is always a point of contention between defenders.Generally speaking, the burden of proof for civil litigation is assigned according to who claims who provides proof. According to this rule, for patent infringement involving manufacturing method, the patentee needs to prove that the manufacturing method of the infringing product is the same as that of the patented product.
However, in patent infringement litigation, there exists a special case of inversion of burden of proof, that is, for the invention patent of "new product manufacturing method", the accused infringer provides evidence that the manufacturing method of his product is different from the patented method. That is, for the "new product", the patentee no longer bears the burden of proof to prove that the manufacturing method of the infringing product is the same as that of the patented product, and the burden of proof is transferred to the accused infringer.
Relevant regulations
Article 66 of the Patent Law of the People's Republic of China (effective as of June 1, 2021)：Where a patent infringement dispute involves a patent for invention for the manufacturing process of a new product, any entity or individual that manufactures the same product shall provide proof that the manufacturing process of its product is different from the patented process.
Article 17 of the Interpretation of the Supreme People's Court on several Issues concerning the Application of the Law in hearing Cases of Disputes over Infringement of Patent Right:Where the product or the technical proposal for manufacturing the product has become known to the public at home and abroad before the date of filing for a patent, the people's court shall determine that the product is not a new product as provided for in Paragraph 1 of Article 61 of the Patent Law.
Article 112 of Patent Infringement Judgment Guide (2017) issued by Beijing Higher People's Court : "New product" as provided for in Article 61 of the Patent Law means a product produced for the first time at home or abroad which is obviously different from the similar products already in existence before the date of patent application in terms of composition, structure, or quality, performance or function. Where the product or the technical scheme for manufacturing the product becomes known to the public at home and abroad before the date of patent application, the product shall be deemed not to be a new product as provided for in the Patent Law. Whether it is a new product or not shall be proved by the right holder. Where the obligee submits evidence prima facie proving that the product is a new product under the patent Law, it shall be deemed that he has fulfilled the burden of proof.
Article 2.12 of Guidelines on Rules of Evidence in Intellectual Property Civil Proceedings of Beijing Higher People's Court :Where the plaintiff claims the application of the inversion of burden of proof rule on the grounds that the patent involved is a patent for invention of new product manufacturing method, it shall provide the following prima facie evidence: (1) the product directly obtained by the patented method is the first secondary product at home and abroad, and is obviously different from the similar product existing before the date of patent application in terms of its composition, structure or its quality, performance or function; (2) there is no material difference in shape, structure or composition between the sued infringing product and the product directly obtained by the patented method;
According to the relevant provisions above, the burden of proof in patents involving "new product manufacturing method" is distributed as follows:
The patentee is not completely exempt from the burden of proof, but only bears the burden of preliminary proof, that is, it only needs to provide preliminary proof that the patented product is a new product.
The burden of proof of the accused infringer lies in the fact that the manufacturing method of the accused infringing product is different from that of the patented product.
