Notarization in IP Matters: Its Extensive Use and The Challenges It Poses for Foreigners
Two important but related aspects of IP litigation in China are (a) its reliance on formalities, including notarized documentation, and (2) its speed. The two go hand-in-hand, mandating that litigants prepare their cases and evidence, to the extent possible, before initiating a case. Comparing timetables in the US and China in a complex IP litigation, it is entirely possible that a decision may be rendered in the Chinese case (typically within six months of case initiation) before the US case has concluded pre-trial discovery. Added to these challenges are the limited remedies available to victims of evidence spoliation, and the difficulty in securing digital evidence which, by its nature, may be ephemeral or easily destroyed.
Chinese domestic documents that are notarized are entitled to great deference by the court in proving relevant facts. It is not surprising then the notarization documents are common in IP litigation, and that they are frequently relied up by courts in reaching decisions. The data suggests that notarization in IP cases can be especially useful in proving infringement, in securing on-line evidence, and in supporting settlement discussions. However, at the same time excessive formalities can add additional burdens to litigants, particularly foreign litigants who often also have to have translations notarized and may needs foreign evidence to be both notarized and consularized.
According the Beijing Intellectual Property Institute and a Ministry of Justice news release, which both cite to a report prepared by the unit with the Ministry of Justice regarding notarization in IP matters, “Report on the Situation for Development of Notarization Services in IP in China” (中国 公证服务知识产权发展情况报告), from 2006 – 2013, there were 591,654 notarized IP matters in the Chinese courts. Trademarks constituted 54.18% of these matters; copyright 20.46%, patents 21.7%, and 3.66% were “other.” In 2013, notarized IP-related documents constituted only 0.93% of the total notarial work in China. Trademark matters continued to account for over 50% of the IP notarization “docket.” Notarization documents were most commonly used in IP matters involving “preservation” (51.06%). Contract and declarations were 41.73%. ownership and authorizations were 5.43%.
Data on notarization also shows differences in localities regarding the degree to which notarized documents are being used, the numbers of notarized documents per case and the types of cases in which notarized documents are being more frequently used. For example, 65.48% of IP cases in Zhejiang Province involved notarized documents. In 2009, the average case had 1.79 notarized documents. Growth in use of notarized documents to deal with on-line IP cases in Zhejiang has been especially dramatic: from 192 cases in 2007 to 933 in 2009. Indeeed, the use of notarized documents to prove digital evidence has been the subject of conferences and articles in recent years.
In Chongqing, about 65% of the IP cases heard by the High Court from January to November 2014 involved notarized documents. Other than notarizations to prove qualification of the parties, 84% of the cases involved notarization to prove infringement. About 63% of the IP cases in Chongqing were settled, and notarization was critical to establishing the evidence to support those settlements.
The Beijing Number 1 court had a different level of use of notarized documents. In 2013, thirty-five percent of the cases used notarized documents; however the notarized documents were accepted for evidence 83% of the time. Perhaps the lower level use of notarized documents by this court is due to the high level of administrative cases, which rely up on government documentation, or alternatively it may be due to a high level of foreign cases in this court and low foreign familiarity with notarization documents.
These summaries did not address the difficulties and expense that notarization and consularization pose for foreign-related litigation in China. A USPTO report on patent enforcement in China summarized some companies’ concerns and reported as follows:
“Commenters report that U.S. rights holders find it very difficult to introduce evidence obtained in a foreign country. Chinese courts often refuse foreign evidence unless that evidence was first notarized by a notary in the foreign country where such evidence was obtained and then legalized by a Chinese embassy or consulate in that country. This results in a significant financial and time burden to U.S. rights holders. Commenters also identified unclear rules for submitting translations of evidence that is originally in a foreign language and requirements to submit evidence through live testimony. Commenters recommended that China ease its notarization and legalization requirements, including by joining the Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents and/or by easing the requirement to legalize foreign evidence by, for example, eliminating the need to notarize and legalize foreign evidence. Commenters further recommended clear rules on the submission of translations of foreign-language evidence and on introducing evidence through live testimony.”