Using evidence preservation properly to solve the difficulty of proof in trade secret cases

Compared with ordinary civil cases, intellectual property cases are harder to investigate because the right is intangible, and trade secret actions are the hardest of all. A trade secret is a company's core value, secret and hidden, not known to the public; and most infringement of trade secrets is deliberate, the infringer being familiar with how the secret is used and kept within the company, acting with greater care in carrying out the infringement, and setting greater store by the infringing material he has obtained, so that the rights holder can seldom reach it and gathering evidence is harder still.

How the rights holder may obtain and fix, through the courts, evidence that will support its case thus becomes the key to success in a trade secret dispute.

1. What is to be preserved

The evidence the rights holder gathers chiefly covers two matters: first, evidence of the infringer's acts infringing the trade secret; second, evidence of the profit the infringer has made through the infringement.

2. The means of preservation

1. Notarial preservation of evidence

Evidence preserved by notary is widely used in civil proceedings, and the Civil Procedure Law and the related judicial interpretations affirm the probative force of notarised evidence from the standpoint of judicial practice. The Civil Procedure Law provides that the People's Court shall take as the basis for findings of fact the legal facts and documents proved by notarisation in accordance with statutory procedure, unless there is contrary evidence sufficient to overturn the notarial proof. Preserving evidence by notarisation to prevent its loss is also a comparatively convenient means for the rights holder.

2. Preservation of evidence before proceedings

The Civil Procedure Law of China provides that, where evidence may be lost or is difficult to obtain later, a participant in the proceedings may apply to the court for preservation of evidence before proceedings. The Copyright Law and the Trademark Law, two intellectual property statutes, expressly provide for pre-litigation preservation, but in trade secret disputes there is no express provision. Some courts at present review an application for pre-litigation preservation, and where they consider it truly necessary, rule that preservation be carried out.

3. Preservation of evidence during proceedings

Compared with preservation before proceedings, preservation during proceedings is comparatively easy.

3. The conditions for preservation

A participant in the proceedings applying for preservation of evidence should satisfy the following conditions:

(1) the applicant is a party or an interested party;

(2) the evidence to be preserved has probative value for the facts of the case;

(3) the circumstances are urgent, so that without immediate preservation the evidence would be lost or difficult to obtain. At the same time, an applicant for preservation of evidence should provide leads to the evidence and pay the preservation fee in advance.

The written application submitted by the applicant should contain the following:

(1) the applicant's particulars;

(2) the content and scope of the evidence whose preservation is sought;

(3) the connection between that evidence and the case, and the matters it may prove;

(4) the grounds for preserving the evidence. The matters above should be accompanied by the necessary explanation.

In addition, when reviewing an application for preservation the court considers not only the standing of the applicant and whether security has been provided, but also makes a preliminary examination of whether the underlying right is lawful, that is, whether the interest the applicant seeks to protect constitutes a trade secret, whether the respondent has committed an infringing act, and whether the applicant is genuinely unable to obtain the evidence itself; bringing a court to obtain trade secret evidence is no easy matter.