Notarised purchases
Legitimacy issues under procedural law
Alternative evidence collection approaches


It has long been acknowledged that obtaining evidence is an arduous task for patentees seeking to take legal actions in China. The fact that the plaintiff bears a greater burden of proof in judicial proceedings in China has drawn criticism from the legal community. The matter is further complicated by the lack of discovery procedure and the high bar set for the admissibility of evidence. This article offers patentees some guidance for obtaining evidence regarding infringing products or processes.

Notarised purchases

The courts in China have set a high bar for the assessment of the authenticity of evidence. It is practically impossible for the Chinese courts to rely purely on witness affidavit. Documentary evidence is the most popular and frequently adduced evidence in China. Under most circumstances, notarisation is recommended for the preservation of key evidence, given that the notarisation process will lend further credence to the evidence. Therefore, the patentee usually resorts to notarised purchases when gathering evidence on the infringing product or process. The typical procedure is to purchase the accused product (the purchase is often made by the patentee or its proxy) directly from the infringer (ie, the manufacturer or distributor) under the witness of a notary public. The infringing products will be packed and sealed by the notary public for court inspection at a later date (usually at the hearing).

Generally speaking, if the infringing product is consumer goods, the rights holder can make a purchase as an anonymous consumer under the witness of the notary public. However, the difficulty in carrying out a notarised purchase of infringing products designed for industry use will increase significantly. The reason is simple – the infringer would want to vet the identity of the buyer, especially in an industry with a small number of players. Patentees will have to disguise their true identities and pose as trustworthy buyers. It could take the patentee some time to build trust with the infringer before they let down their guard and sell the infringing product.

Legitimacy issues under procedural law

Technically speaking, notarised purchases are not free from risks under procedural law. After all, the infringer could challenge the legitimacy of the evidence gathered from the notarised purchase, contending that the rights holder fabricated an identity and tricked the infringer into selling the infringing product. Fortunately, China's Supreme People's Court (SPC) affirmed the legitimacy of the approach in an exemplary case, Founder v Gaoshu, in 2006.(1) The principle observed in this case has been widely followed since then.

The plaintiff, Founder, is the copyright owner of a set of software. The defendant, Gaoshu, secretly duplicated and sold the pirated software to several customers. To obtain evidence, an employee of Founder posed as a customer and approached Gaoshu, using a bogus name, to purchase the pirated software. The employee first purchased a hardware product to gain the defendant's trust and then asked the defendant whether they provided pirated software. After receiving a positive answer, the parties signed a sales contract and the defendant installed the pirated software on the buyer's computers as per his request. The transaction and software installation processes were witnessed by the notary public. The notary public and the Founder employee did not divulge their true identities.

In the ensuing litigation, the defendant argued that Founder had tricked its salesperson into selling the pirated software. The defendant claimed that its standard offer would be genuine software – it was Founder's employee who had specifically requested pirated software. Therefore, the evidence collection approach, according to the defendant, was illegal, and the evidence should not be admitted by the court. The opinion of the trial court and that of the court of appeal diverged greatly on the legitimacy of the approach and the case was later sent to the SPC for retrial.

The SPC allowed the evidence collection approach, holding as follows:

Despite the fact that laws have expressly stipulated offences, more often than not, due to the breadth of social life and complexity of interests at stake, laws tend to establish legal principles, rather than provide an exhaustive list of offences, so that judges may exercise discretion by weighing interest and taking into account value orientation. Therefore, regarding an act that is not expressly prohibited by laws and regulations, whether such act is detrimental to public interest shall be assessed based on its substantive fairness. The notarized approach Founder employed in evidence collection is not unjustified in terms of its objective and the acts did not harm public interest or others' legitimate interests. In addition, considering that computer software infringement is often covert and relevant evidence is difficult to gather, the approach employed by Founder is conducive to overcoming the difficulty in evidence collection, deterring potential infringers and ramping up intellectual property protection. The approach shall be deemed as legitimate and valid, and the evidence gathered shall be found admissible in ascertaining the facts of the case.

Alternative evidence collection approaches

If it is impossible for the plaintiff to gather evidence of its own accord, the plaintiff may seek assistance from the court. The courts may, upon the plaintiff's request, investigate and gather evidence regarding the accused product or process.

To serve that purpose, the plaintiff must:

  • produce prima facie evidence to substantiate its claim of infringement;
  • adduce evidence showing the whereabouts of the accused product or product line; and
  • submit a written statement, elaborating on:
    • the urgency of gathering evidence; and
    • the obstacles preventing the plaintiff from obtaining evidence of its own accord.

With or without a pre-litigation hearing to listen to the plaintiff's grounds, the court will decide whether the prima facie evidence merits the plaintiff's evidence collection request to be granted and to what extent the plaintiff's burden of proof is to be alleviated.

In Henglian v Changyi,(2) the patent at issue concerned a paper manufacturing process, for which the plaintiff was unable to produce notarised evidence. The plaintiff thus requested the court to gather evidence. To make a strong case, the plaintiff produced a video record of the defendant's product line as preliminary evidence and the request was granted. When the judges went to the defendant's factory to preserve evidence, the defendant deliberately led them to the wrong product line. The trial court ordered the defendant to disclose the manufacturing process, but to no avail.

The court thus found infringement based on the plaintiff's preliminary evidence. The lower court's decision was upheld by the SPC, affirming that the courts may shift the burden of proof to the defendant, provided that the plaintiff has:

  • proved that the accused product is identical to that produced by the process patent at issue; and
  • made every effort to gather evidence, based on common sense and life experience.

In such cases, judges may conclude that it is highly likely that infringement can be established.

In practice, the courts may also designate other parties to gather evidence. By issuing a court order, the courts may authorise lawyers to gather evidence by asking the parties to hand over evidence in their possession. Such court orders rarely apply when the plaintiff needs to collect the infringing product or process from the recalcitrant infringer. Nevertheless, the approach is widely used where the evidence is controlled by government agencies or third-party companies (eg, e-commerce platforms).


Due to the lack of discovery, obtaining evidence will remain a challenge in China. As the nation's judiciary is increasingly favouring rights holders, patentees are encouraged to fulfil their burden of proof by leaving no stone unturned in their search for physical and electronic evidence surrounding the business operation and financial performance of the infringer. With the implementation of China's new Patent Law, a trickle-down effect in the alleviation of the plaintiff's burden of proof and the award of significant damages is expected in the long run.

For further information on this topic please contact Feng (Janet) Zheng at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at

First published by MIP


(1) (2006) Min San Ti No.1.

(2) (2013) Min Shen Zi No. 309.