6.6.8 Experts
6.6.8.1 Role of experts and expert bodies and institutions
Although not strictly a separate institution, experts and expert bodies and institutions play a key practical role in patent matters. In this context, the Supreme Court of India, in Monsanto Technology LLC v. Nuziveedu Seeds Ltd,196 held that:
Summary adjudication of a technically complex suit requiring expert evidence also, at the stage of injunction in the manner done, was certainly neither desirable or permissible in the law. […]
[…] We are therefore satisfied that the Division Bench ought not to have disposed of the suit in a summary manner by relying on documents only, extracted from the public domain, and not even filed as exhibits in the suit, much less examination of expert witnesses, in the facts of the present case. There is no gain saying that the issues raised were complicated requiring technological and expert evidence with regard to issues of chemical process, biochemical, biotechnical and micro biological processes and more importantly whether the nucleic acid sequence trait once inserted could be removed from that variety or not and whether the patented DNA sequence was a plant or a part of a plant etc. are again all matters which were required to be considered at the final hearing of the suit.
Thus, experts and expert bodies and institutions are a critical component of proceedings where a patent’s validity is questioned. Most oppositions and revocations typically involve one or more opinions from experts or expert bodies, and the legal framework contains sufficient provisions to deal with expert opinions and evidence. For instance, under the Patents Act, 1970, the Indian Patent Office has the power to receive evidence on affidavits, issue commissions for the examination of witnesses or documents and so on.197 The Indian Patent Office may also allow any person to be cross-examined on the contents of their affidavit.198
6.6.8.2 Expert evidence under the Indian Evidence Act, 1872
The Indian Evidence Act, 1872, governs the rules of evidence applicable to enforcement proceedings under the Patents Act, 1970. It applies to all civil and criminal proceedings. This legislation has been amended and updated from time to time, including on the use of electronic documents and evidence.
Section 45 of the Indian Evidence Act, 1872, declares that the opinions of experts are “relevant facts.” Therefore, these opinions must be considered by courts in patent matters when forming an opinion on the point of science or art. The law only requires such experts to be “especially skilled” in the relevant area of science or art without specifying a minimum threshold. The Supreme Court of India has held that an individual could be an expert not just by the special study of the subject but also by acquiring experience in the field.199 Similar is the view of the Delhi High Court which, in a patent case where the expert witness produced did not hold a technology or engineering degree but had proven experience, held that an expert could be a person who possesses experience even if they did not have the educational qualification.200 What is relevant is whether the person is skilled and has adequate knowledge of the subject. The observation of the court reads as follows:
Be that as it may, it is accepted and recognised that a person could be an expert in an area of specialised knowledge by experience and he or she need not hold a degree in the field of specialised knowledge . A person can also become an expert by virtue of one’s avocation or occupation.201
It is generally understood that, in patent matters, the opinions of experts are critical to understanding the background in the art, as well as to appreciating the contents of the prior art and the invention. An expert could also testify as to the meaning of the terms in the claim as understood in the art. Typically, both parties to a patent enforcement action will produce such expert evidence on infringement, novelty and inventive step.
The expert will usually be highly qualified and would exceed the threshold of a person having ordinary skill in the art.
There is a view expressed that the expert in a patent matter must have personal knowledge of the prior arts,202 though this view is not correct. In law, all aspects of patent matters are viewed through the lens of a hypothetical person skilled in the art, who is normally deemed in law to automatically have knowledge of the prior arts. The correct view appears to be that the expert could testify as to their opinion on how a person skilled in the art would consider the matter.
The opinions of such experts are meant for matters of science or art, but, usually, such experts also give their opinions on infringement, novelty, obviousness and other grounds of invalidity. Even though such statements or conclusions on obviousness, novelty or infringement may also involve matters of law, it is not fatal to the admissibility of the expert opinion. Courts will focus more on the reasoning offered by the expert in the opinion. Expert opinions of the experts are not binding on the court.
6.6.8.3 Court-appointed scientific advisers
Section 115 of the Patents Act, 1970, empowers the court to appoint an independent scientific adviser to assist the court or to enquire and report upon any question of fact or opinion (but not involving a question of interpretation of the law). The Indian Patent Office maintains a roster of such scientific experts.203 Courts usually resort to these scientific experts to gain an independent assessment. These assessments are considered valuable in highly contested matters where the parties’ expert testimonies have offered widely disagreeing opinions. Like any other expert opinion, the opinion of a court-appointed scientific adviser is also not binding on the court.
As per Rule 103 of the Patents Rules, 2003, the Controller is to maintain a roll of scientific advisers, to be updated annually. The roll contains the names, addresses, specimen signatures and photographs of scientific advisers; their designations; and information regarding their educational qualifications, the disciplines of their specialization and their technical, practical and research experience.
A person must possess the following qualifications to be enrolled as a scientific adviser:
- a degree in science, engineering or technology or equivalent;
- at least 15 years of technical, practical or research experience; and
- holds or has held a responsible post in a scientific or technical department of the central or state governments or in any organization.204
The law provides that the fee or remuneration for such scientific advisers be provided by the Parliament, by law, for this purpose. However, usually, the parties share the costs of independent scientific experts.
The recently notified draft of the High Court of Delhi Rules Governing Patent Suits, 2020, also proposes the maintenance of a panel of scientific advisers to assist the court.
6.6.8.4 Hot-tubbing procedure
The procedure of hot-tubbing, where multiple expert witnesses give their evidence concurrently – and which has its origin in Australian law – is also permissible in India and has recently been ordered in some cases.205 The procedure for recording expert evidence through a hot-tubbing protocol was specified in Micromax Informatics Ltd v. Telefonaktiebolaget LM Ericsson.206 The Delhi High Court Rules have also been amended to incorporate this procedure,207 including its protocol.208
Though there has yet to be a patent infringement action concluded in which evidence has been given by the hot-tubbing procedure, hot-tubbing is expected to be applied more frequently in the future.