Richard Yong WANG  Partner, Attorney-at-law and Patent Attorney

 

With the accelerated advancement of economic globalization and science and technology, cross-border intellectual property disputes have become increasingly frequent. Extraterritorial evidence plays a crucial role in intellectual property cases in China, particularly in patent invalidation proceedings. However, due to differences in legal systems and cultural backgrounds between the evidence's country of origin and the jurisdiction where the case is heard, issues concerning the authenticity, admissibility, and probative value of extraterritorial evidence often become contentious and pivotal in case adjudication. According to Chinese law, evidence formed outside the territory of the People's Republic of China generally requires notarization by a notary public of the country where the evidence was formed, or completion of authentication procedures stipulated by relevant international treaties. Nevertheless, to facilitate litigation for the parties involved, the law also provides certain exceptions, including for extraterritorial evidence obtainable through publicly available domestic channels. In practice, however, there is still much controversy over how to examine such exception, requiring ongoing exploration and refinement.

 

As one of the Top Ten Patent Reexamination and Invalidation Cases of 2024 officially released by the China National Intellectual Property Administration (CNIPA), Patent Invalidation Decision No. 568592 provides an exemplary case involving the legitimacy examination of extraterritorial evidence—specifically, a foreign-language technical book. In this invalidation request proceeding, the petitioner submitted multiple supplementary pieces of evidence to substantiate the authenticity and publication date of the foreign-language book. Meanwhile, the patentee challenged its authenticity, admissibility, and probative value. Notably, the collegial panel ultimately adopted this extraterritorial evidence and its review logic and criteria for determination warrant in-depth analysis. This article will take the above-referenced decision as a case study and, in conjunction with relevant legal provisions, explore and analyze the legitimacy review framework for extraterritorial evidence.

 

I. The summary of the Case

 

This present case concerns an invention patent titled "Apparatus, Method And Computer-Readable Storage Medium for Manipulating a User Interface Element" (Patent No. ZL201280055598.3). On February 7, 2024, the petitioner filed a request for invalidation with the CNIPA, primarily asserting that: the claims do not comply with Rule 20.2 of the Implementing Regulations of the Patent Law for lacking essential technical features, and the claims do not comply with Article 22.2 or 22.3 of the Chinese Patent Law for lack of novelty or inventive step. In support, the petitioner submitted multiple prior art documents and annexes as evidences, among which "Annex 4" (hereinafter referred to as "D3") comprises a foreign-language book titled ‘Introducing Windows 7 for Developers’ and partial Chinese translations of its contents.

 

The patentee contested the invalidation request, contending that "the authenticity of D3 is unverifiable". Specifically, the patentee asserted that D3 is inadmissible, since it is an extraterritorial evidence without notarization and authentication. Furthermore, the patentee argued that Annexes 10 to 15 and 18 to 19 collectively failed to substantiate either the authenticity of D3 or its publication date.

 

Regarding the authenticity, admissibility, and publication date of D3, the petitioner submitted the following primary evidentiary materials:

• ►Annex 10: Notarial certificate documenting the process of browsing product details, reviewing ratings, and placing an order for D3 on Amazon.com, which indicates a publication date of November 4, 2009 and records multiple purchasers who bought and reviewed the book between December 2009 and February 2011.
• ►Annexes 11-12: Trusted timestamp certifications confirming the download of an electronic copy of Introducing Windows 7 for Developers from CSDN website, evidencing user uploads of the electronic file in 2010.
• ►Annex 13: Notarial certificate documenting the archiving process of the electronic version of D3 obtained via the Wayback Machine, which verifies that the electronic file was captured and archived on January 24, 2011.
• ►Annex 14-15: IP360 Evidence Preservation Certificate documenting the query of D3's ISBN on isbnsearch.org, returning a publication date of November 4, 2009.
• ►Annexes 16-17: Order confirmation screenshots and video recording of receipt documenting the purchase of the physical copy of D3 from Abebooks.com.
• ►Annexes 18-19: Documentation certifying that D3 is held in the collections of multiple global libraries and that its ISBN is verifiable through their catalog records.
• ►The petitioner physically presented the physical copies of D3 purchased through Amazon.com and Abebooks.com.

 

The patentee rebutted as follows:

• ►D3 lacks publication date information on its physical copy, bearing only an ISBN number. As it was not notarized and authenticated, this unauthorized publication should be deemed inadmissible and its authenticity unrecognized.
• ►Annexes 10, 13-15, and 16 involve content accessed from extraterritorial websites without notarization/authentication, rendering their authenticity unverifiable.
• ►Annex 10: Product details on Amazon.com could have been altered, making its authenticity unconfirmable.
• ►Annexes 11-12: CSDN's library conducts no authenticity review of user-uploaded documents, thus failing to prove the downloaded file's genuineness.
• ►Annexes 13-14 rely on non-official ISBN lookup platforms, and authoritative ISBN registries show no traceable record of this publication
• ►Annex 16 (unnotarized order screenshots) and Annex 17 (receipt video) cannot mutually corroborate, thus failing to establish a complete chain of custody.
• ►Annexes 18-19 merely prove library holdings and ISBN registration, but do not substantiate actual publication date.

 

II. Overview of D3's Examination Process in This Case
 

The collegial panel's review of D3 constituted a pivotal aspect of these proceedings, with its determination process reflecting the prevailing standards for extraterritorial evidence admissibility review in China's patent invalidation practice.

 

1. The Collegial Panel's Determination on Authenticity and Admissibility of D3

The panel first clarified the fundamental principle for reviewing extraterritorial evidence: "extraterritorial evidence refers to evidence formed outside the territory of the People’s Republic of China. Such evidence shall be notarized by a notary public  in its country of origin, or undergo certification procedures under relevant treaties between China and that country." However, the panel simultaneously affirmed a critical exception: "when such evidence is obtainable through publicly accessible domestic channels (excluding Hong Kong, Macau, and Taiwan regions), parties may waive formal certification procedures in invalidation proceedings."

 

Applying this doctrine, the collegial panel determined: "although D3 is a foreign-language publication, the petitioner directly purchased it domestically via www.amazon.com. Consequently, it qualifies as evidence obtainable through publicly accessible domestic channels, thus exempt from notarization requirements."

 

Regarding the authenticity of D3's physical copy, the panel verified that: "its content matched the original physically submitted during the hearing, and the presence of an ISBN number confirms its status as a standardized publication." Based on these findings, the panel recognized both the authenticity and admissibility of D3. Consequently, for extraterritorial websites accessible domestically (e.g., Amazon.com, isbnsearch.org), related certification procedures are likewise exempt.

 

2. The Collegial Panel's Determination of D3's Publication Date

 

Following the recognition of its authenticity and admissibility, establishing D3's publication date became critical for evaluating its status as prior art. The collegial panel conducted a comprehensive evaluation of supplementary evidence:

• ►Publication Date & User Reviews on Amazon.com: the collegial panel considers that Annex 10's notarial certificate is formally proper. As an internationally renowned e-commerce platform, Amazon maintains standardized mechanisms for product display, purchasing, and reviews—where user feedback can only be deleted, not altered. D3's product page explicitly indicates a November 4, 2009 of publication date, with substantial purchaser reviews documented between December 2009 and February 2011. Crucially, no evidence suggests modification of this product information. These elements collectively provide prima facie corroboration of the publication date."

• ►ISBN Search Results from website of isbnsearch.org: the collegial panel confirmed that Annexes 14-15’s IP360 Evidence Preservation Certificates complied with formal requirements. While the patentee argued that isbnsearch.org was not an official platform, the panel noted: this third-party specialized ISBN lookup platform was established by Amazon employees, providing verified bibliographic data and pricing. In the absence of demonstrated conflict of interest between its operators and case parties, its query results (indicating a November 4, 2009 publication date) are admissible as probative evidence."
• ►Mutual Corroboration of the Evidentiary Chain: the collegial panel emphasized that the publication date on Amazon.com, timestamps of user reviews, and isbnsearch.org's retrieval results converged to mutually corroborate D3's public availability before this patent's priority date (September 13, 2011). The failure to locate bibliographic records on other platforms merely indicates non-inclusion in those databases, which does not diminish the probative value of the extant evidence.

 

Thus, the panel conclusively determined that the collective evidence sufficiently established both the authenticity and publication date of D3.

 

III. Discussion on Examination Principles for Extraterritorial Evidence Legitimacy

The evidentiary review practices in this landmark case provide invaluable reference material for critically examining the jurisprudential principles and review criteria governing extraterritorial evidence.

 

1. Admissibility Requirements of Extraterritorial Evidence: Notarization, Certification & Exceptions

Pursuant to the Supreme People's Court Provisions on Evidence in Civil Proceedings (2019 Amendment, hereinafter "Civil Evidence Rules"), Chinese law establishes explicit admissibility requirements and exceptional circumstances for extraterritorial evidence—defined as evidence formed outside the People's Republic of China.

 

Core Examination Requirement: Notarization and Certification

Article 16 of the Civil Evidence Rules constitutes the foundational provision governing extraterritorial evidence, mandating that such evidence typically must satisfy the following conditions:

 

• ►Notarization: the evidence's authenticity shall be certified by a notarial public in its country of origin.

 

• ►Certification: evidences must undergo authentication by embassies or consulates of the People’s Republic of China, or comply with certification procedures stipulated in relevant treaties between China and the originating state (e.g., the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents)."

 

Unlike prior rigid "one-size-fits-all" approaches, the current rules establish category-specific requirements as follows:

 

• ►Public Documentary Evidence: when public documentary evidence (e.g., government records, court judgments, business licenses) is formed extraterritorially, it shall undergo notarization by local authorities or comply with certification procedures under relevant Sino-foreign treaties. It should be noted that only notarization is required, and authentication by the embassy or consulate is not mandatory.

 

• ►Evidence Concerning Personal Status: for evidence related to personal status (e.g., marriage certificates, birth records), stricter requirements apply: such evidence must be both notarized by competent local authorities and authenticated by Chinese embassies/consulates, or comply with certification procedures under relevant bilateral/multilateral treaties."

 

• ►Evidence Originating from Hong Kong, Macau, or Taiwan: for evidences formed in Hong Kong, Macau, and Taiwan, relevant proof procedures should also be followed.

 

Exceptions:

 

A pivotal advancement in the Revised Civil Evidence Rules lies in its significant narrowing of the extraterritorial evidence scope mandating notarization/certification, thereby alleviating evidentiary burdens on parties. Beyond public documentary evidence and personal status evidence specified above, other extraterritorial evidence categories (e.g., ordinary contracts, emails, chat records—classified as private documentary evidence) principally require no compulsory notarization or certification.

 

In judicial practice, courts holistically evaluate authenticity and admissibility of such evidence absent notarization/certification through the following dimensions:

• ►Admission by the Opposing Party: where the adversarial party acknowledges the evidence's authenticity, courts generally admit it into evidence.
• ►Corroboration by Domestic Evidences: when corroborated by probative domestic evidence to form a complete chain of custody, the evidentiary weight of extraterritorial evidence is substantially enhanced.
• ►Reliability of Source: evidence obtained through public and reliable channels (e.g., foreign patent documents from official websites or public libraries) typically requires no additional certification formalities.
• ►Lawfulness of Collection Methods: courts further examine whether collection procedures comply with mandatory provisions of Chinese law or the jurisdiction where the evidence resides, particularly regarding public policy violations.

 

This landmark decision explicitly invoked and applied the "publicly accessible domestic channels" exception. The rationale underlying this principle holds that: "where extraterritorial evidence is obtainable through publicly accessible and lawful channels within China, its authenticity and admissibility become presumptively established, while evidentiary accessibility is significantly enhanced. In such scenarios, compulsory notarization/certification requirements would impose undue evidentiary burdens and litigation costs on parties, thereby contravening the fundamental principle of evidentiary accessibility."

 

The objective and operational criteria for determining "publicly accessible domestic channels" must be established. In this case, the demonstrated capability to purchase the foreign-language book directly via Amazon China constituted sufficient proof of domestic accessibility. This indicates that assessments of "publicly accessible domestic channels" shall focus on whether evidence can be acquired through legitimate, routine commercial transactions or information channels within China without extraordinary procedures, as exemplified by foreign publications procurable through domestic e-commerce platforms, publicly accessible documents from foreign governments or international organizations directly downloadable via mainland Chinese official portals.

 

2. Proving Authenticity and Publication Date: The Corroborative Evidentiary Framework

 

Within the legitimacy review of extraterritorial evidence, substantive verification of authenticity and publication date proves paramount—transcending mere procedural compliance with notarization/certification requirements (or exceptions). A notable jurisprudential breakthrough in this case lies in the collegial panel’s rejection of fragmented evidentiary assessment, instead adopting a "multi-source corroboration doctrine" to construct an integrated evidentiary chain confirming both the authenticity and publication date of D3.

• ►Analysis of Evidence Categories and Probative Value
  • •Notarized Document: As shown in Annex 10, this document is properly notarized without formal defects and carries substantial probative value. It primarily serves to authenticate specific actions (such as the Amazon purchase process).
  • •Third-Party Platform Information (Amazon Product Pages, User Reviews): Amazon, as an internationally recognized platform, maintains credible product information and review mechanisms. The timestamps of user reviews serve as indirect evidence for the existence of the publication and when it was obtained.
  • •Professional Database Query Results (ISBNsearch.org): Websites of this type provide retrieval of publication information via ISBN numbers. Though not necessarily official sources, they still hold significant reference value if their operators are impartial to the case and the results corroborate other evidence. In this case, the collegial panel investigated the background of isbnsearch.org and confirmed it was established by Amazon employees, thereby enhancing its credibility.
  • •Library Collection Records: As authoritative knowledge repositories, libraries' collection records and ISBN-based search results can strongly substantiate a publication's existence and legitimacy.
  • •Timestamp Authentication and Data Preservation: For electronic evidence (e.g., CSDN downloads, Wayback Machine archives), timestamp authentication and data preservation can partially fix their content and time of existence. However, comprehensive assessment alongside other evidence remains necessary to mitigate risks of tampering inherent to digital evidence. In this case, while the collegial panel received such evidence, its final determination relied primarily on more direct and compelling evidence.
• ►Flexibility and Rigor in Substantive Examination:

The collegial panel demonstrated both flexible and rigorous approaches during the examination process. On one hand, rather than simplistically accepting or rejecting the patentee’s objections such as claims of "non-official websites" or "failure to form a complete evidence chain", the panel conducted contextual analyses. For instance, while ISBNsearch.org is non-official, its operational background and impartiality lent credibility to its query results. On the other hand, the panel did not engage in equally exhaustive evaluations of all evidence, but instead focused on core evidence capable of constructing a valid evidentiary chain. This prioritized approach avoided entanglement in minor disputes while enhancing examination efficiency.

 

3. Challenges and Potential Issues

 

Although this case’s examination practice holds positive implications for improving the efficiency of invalidation reviews, the verification of foreign evidence’s legitimacy still faces challenges and potential problems:

 

1) Defining the Scope of "Accessible via Domestic Public Channels”: further refinement of rules is needed to clarify the boundaries of "domestic public channels" and prevent misuse. For example: whether a foreign website merely need to be generally accessible within China to qualify; whether evidence obtained from websites accessed via VPN falls under this exception; whether additional criteria (e.g., public credibility and authoritativeness) should be required; and how to assess such "public credibility and authoritativeness."

 

2) Vulnerability of Electronic Evidence: even with timestamps and notarization, the authenticity and integrity of foreign electronic evidence (particularly online content) may still be challenged due to the ease with which web-based information can be generated, modified, or deleted. Such evidence necessitates stricter verification standards and more diversified corroborative methods.

 

3) Burden of Proof and Standard of Proof:

In disputes involving foreign evidence, the reasonable allocation of the burden of proof among the parties and the establishment of clear evidentiary standards are crucial for the fair adjudication of cases. In this case, the petitioner still submitted substantial corroborating evidence to reinforce the probative value of "D3" in demonstrating its authenticity and accurate publication date. This demonstrates that in practice, the parties' burden of proof is not negated by the "obtainable from domestic public sources" exception, and they may still be required to make diligent efforts to provide diverse and mutually corroborating evidence.

 

Recognized as one of the Top Ten Patent Reexamination and Invalidation Cases of 2024, the CNIPA Patent Invalidation Decision (No. 568592) provides a guiding precedent regarding the legitimacy review of foreign evidence. While respecting the principles of notarization and authentication for foreign evidence, this decision applied the exception rule for evidence "obtainable from domestic public sources." Through mutual corroboration of multiple pieces of evidence, it successfully established the authenticity and publication date of a foreign-language book as prior art. This approach not only offers valuable insights for the admissibility of foreign evidence in China's intellectual property judicial practice but also demonstrates the review board's efforts to balance impartiality and efficiency.

 

 

Author:

Mr. Richard Yong Wang

 

Mr. Wang received his bachelor's degree in 1991 from the department of computer science of East China Normal University and his master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994. In 2005, he received degree of master of laws from Renmin University of China. Mr. Wang joined Panawell in January 2007.

 

In the past years, Mr. Wang has handled thousands of patent applications for both domestic and foreign clients, and he has extensive experiences in application drafting, responding to office actions, patent reexamination and invalidation proceeding, patent administrative litigation, infringement litigation, software registration and integrated circuit layout design registration. As a very experienced patent attorney and attorney-at-law, Mr. Wang also participated in many patent litigation cases on behalf of a number of multinational companies as leading attorney. Mr. Wang's practices include computer hardware, computer software, communication technology, semiconductor devices and manufacturing process, automatic control, household electrical appliances, and etc.