Article 79 of the Chinese Civil Procedure Law grants parties the right to request an appraisal, with the purpose of the appraisal being to ascertain the facts related to “specialized issues.” Article 19 of the Chinese Supreme People's Court's regulations on evidence in intellectual property civil litigation (referred to as the SPC Provisions on Evidence) provides an enumeration of “specialized issues” in the field of IP, with technical IP cases commonly involving the following: (a) the similarities and differences between the infringing technical solutions and the patented technical solutions, as well as the corresponding technical characteristics of the prior art in terms of means, functions, effects, etc.

It should be noted that Article 19 of the SPC Provisions on Evidence concerning Intellectual Property Rights not only refines the concept of “Specialized Issues” but also serves as a “power of attorney” for the judge's authority to initiate a judicial appraisal, as it states, “The court may commission an appraisal of the following specialized issues of facts to be proved…….” The term used here is “may,” and the judge's discretion lies in the choice between exercising this power or not.

To limit the judge's discretion, Article 1 of the Provisions of the Supreme People's Court on Several Issues Concerning the Review of Entrusted Appraisals in Civil Litigation by People's Courts (referred to as the SPC Provisions on Entrusted Appraisal Review in Civil Litigation) specifies the exceptions to the application of “may.” Our article discusses Article 1(5) of the SPC Provisions on Entrusted Appraisal Review in Civil Litigation, which states that if facts can be identified through court investigation, inquiry, and other methods, they will not be entrusted to an appraisal. The Chinese Supreme Court has provided guidance on the understanding and application of this provision, explaining why identification is not entrusted when facts can be ascertained through court investigation, inquiry, and other methods. The Supreme Court stated, “On the one hand, similar identification applications do not require special scientific and technological expertise. On the other hand, considering trial efficiency and litigation costs, facts can be identified through investigation, evidence collection, and on-site inspection without commissioning an appraisal.” In summary, the purpose of an appraisal is to provide support for identifying the facts of the case with the help of the relevant equipment of the appraisal organization and the expertise of the appraisal personnel. If the court staff has the relevant equipment and expertise, and considering trial efficiency and litigation costs, there is no need to commission an appraisal.

In current judicial practice, the technical investigation officer has become a “standard” for technical IP cases, acting as the judge's “brain” to compensate for the lack of a scientific and technological professional background among judges. Imaging that with the technical investigation officer’s professional knowledge, the judge already possesses “special scientific and technological expertise,” is the survey sufficient to ascertain the facts, and is there a need to commission an appraisal?

The difficulty of the technical program itself (i.e., whether special scientific and technical knowledge and expertise are required) and the complexity of the survey process are factors affecting the judge's choice between a survey and an appraisal. The complexity of the technical program makes the judge apprehensive, and the time-consuming and laborious investigation process increases the pressure on the judge's trial limit. However, in the definition of patent law, the subject of judging the difficulty of the technical solution or the subject of comparing the technical features is “the person skilled in the field.” According to the definition in the Patent Examination Guidelines, “a person skilled in the field” is a legal construct, assumed to know all the general technical knowledge in the technical field to which the invention belongs before the filing date or priority date, and to be aware of all the prior art in the field, with the ability to apply conventional experimental methods before that date, but without the ability to create or invent. In my opinion, the Technical Surveyor is the real-world embodiment of “a person skilled in the field” and is the reality that best fits the concept of “a person skilled in the art.” Therefore, the technical investigation officer should assess the degree of difficulty of the technical solutions involved in the case and undertake the work of comparing technical features. The judge should not and cannot handle the fact-finding of complex technical IP cases alone, as this does not align with the original intention of establishing the system of technical investigation officers.

At this point, the answer to the previous question is clear: the technical investigation officer plays a pivotal role in determining whether an appraisal is necessary. It should be noted that “special scientific technology and expertise” are not exclusive to appraisal bodies; the technical investigation officer is the best “equalizer.” By providing intellectual support through the technical investigation officer, the judge has the responsibility and should also have the confidence to put an end to the abuse of the right to initiate judicial appraisals, thereby elevating the legitimate rights and interests of the parties and trial efficiency to a higher level.