Patent forensic examination

FORENSIC EXAMINATION is a procedural action that consists of investigation and giving an expert opinion concerning issues resolution of which requires special knowledge in the field of science, technology, art and trade and which are addressed to the expert by the court, judge, agency of inquiry, person conducting the inquiry, investigator or prosecutor. Based on the results of investigation expert prepares an opinion, which is one of the proofs.

PATENT FORENSIC EXAMINATION is one of the key proofs in judicial processes relating to infringement of intellectual property rights. In most cases, patent forensic examination is an investigation of objects containing results of intellectual activity aimed at ascertainment of infringement or non-infringement of rights to intellectual property objects.

PATENT FORENSIC EXAMINATION can be conducted by state judicial agencies and experts, as well as non-state experts in order to assist courts, judges, agencies of inquiry, persons conducting the inquiry, investigators and prosecutors in finding out the circumstances subject to a proof in specific criminal and civil cases, cases concerning administrative offense.

Activity of state expert institutions’ experts and non-state forensic experts is regulated by the Federal Law No. 73 as of May 31, 2001 “On state forensic expert activity in the Russian Federation” and relevant procedural legislation.

Special knowledge is traditionally understood to mean knowledge going beyond general education acquired in the process of special professional education in one or another field of science, technology and arts based on theoretical and methodological propositions of the relevant branches of knowledge and supported by acquired skills.

So what special knowledge specialists invited as independent patent experts should have? Does such specialist need knowledge in the field of law? Should an expert on intellectual property have legal knowledge?

As you know until fairly recently there was virtually unanimous opinion that legal knowledge is not special. Perhaps this opinion was consolidated after clarification of the USSR Supreme Court Plenum in 1971 that “courts should not address to the expert legal questions that are beyond his/her competence”. At present, this approach is obsolete.

Today it is considered to be normal that patent attorneys participate in judicial proceedings as experts or specialists. Federal Law No. 316 “On patent attorneys” as of December 30, 2008 confirmed in Article 4 the right of patent attorneys to act as experts in courts.

Questions that are put to experts involved in judicial proceedings for patent rights study, for example, may have the following wording: are all essential features of independent claim (utility model) under the patent No. XXXX or equivalent features used in technical documentation submitted for an examination? It is obvious that parts and components in technical documentation can be denoted and named differently than features of claim. In this case, there is a need of interpretation of the invention essential features on the basis of patent description or use of the theory of equivalents. It seems difficult without special legal knowledge.

Intellectual rights cover technical devices, computer programs, works of literature and art, etc. As a result courts often schedule a comprehensive expert examination involving a patent attorney and a specialist depending on the branch of special knowledge to which belong the intellectual property object.

Our experts have experience in carrying out pre-trial and forensic examinations in the field of intellectual property.

Organizations carrying out patent forensic examinations:

1. Patent Forensic Examinations Center
2. V.V. Vinogradov Russian Language Institute