Rewind to 1492 for a moment – yes, really! Back then, understanding a Latin word ‘licet’ required the wise advice of an expert (see the paywalled reference here). Thus, the tradition of seeking expert counsel was born! We’re here to explore the juxtaposition of legal eagles and scientific advisers and the experts, waltzing through legal labyrinths faster than you can say ‘Sectumsempra‘!

So, we dive into the dispute over the role of scientific advisers versus expert evidence in IP litigation. In a recent case, the English Patent Court dealt with the distinction between scientific advisers and expert evidence offering an intriguing insight into the matter. The decision comes at a very interesting stage of IP discussion especially in a globally reclusive IP forum in India, albeit for the sake of inspiration and education. I will briefly touch upon why the present case looks important, what it states and how it could be important for the developing IP Benches in India, still pondering whether to embrace expert roles comprehensively in IP disputes.

Deciphering the Duel Between Scientific Advisers and Expert Evidence

This recent judgment delivered by Mellor J in an entitlement dispute between Dr. Vanessa Hill and Touchlight Genetics, sheds light on the distinct roles of scientific advisers and expert evidence in proceedings within the English Patents Court. The case revolves around patents concerning synthetic DNA vectors known as doggybone DNA or dbDNA and their enzymatic production. While Dr. Hill claims she invented aspects of these inventions before her employment with Touchlight, the company disputes this. A critical  aspect of the case, for the present post’s purpose, is the idea that the matter is complex, and not intrinsically related to law, raising the question of what ought to be the best method for the Court to understand the intricacies of the complex technology. What we find is that Dr. Hill’s legal team advocates for a scientific adviser, while Touchlight prefers expert evidence as delivered by a technical expert. Note: technical experts are appointed/selected by individual parties. 

Touchlight elucidated that scientific advisers in patent cases are subject to strict control, primarily tasked with providing non-partisan background information to the Court. Their involvement is carefully limited, with a clear distinction drawn between their role and that of expert evidence. Touchlight further argued that scientific advisers do not substitute expert evidence but rather supplement it. They are intended to educate the judge objectively, without addressing the core issues under dispute. Here Mellor J noted that indeed there have been no instances of discussing scientific advisers without expert evidence. 

However, Dr. Hill argued that in cases involving entitlement disputes, understanding subjective states of mind, such as when inventions were conceived or disclosed, (such as in the present case), required a different approach than traditional expert evidence, which typically deals with objective questions. Dr. Hill further suggested that appointing a scientific adviser to interpret subjective states of mind holistically is necessary. According to her counsel, the scientific adviser should be present throughout the trial, not just during pre-reading, to ensure a comprehensive understanding.

On the other hand, Touchlight contended that it is the role of expert evidence to address the core issues of the case, which scientific advisers are not equipped to do, and no jurisprudence stands to validate the contrary. They advocate for the presence of an independent expert whose submissions can be subjected to rigorous scrutiny and cross-examination. Touchlight argued that appointing a scientific adviser would risk usurping the role of expert evidence, as communications with the adviser would occur privately with the Court and would not be subject to cross-examination. They assert that the present Court, comprising of 45 category judge, was sufficiently equipped to adjudicate the dispute with the assistance of expert evidence and submissions from both parties. In the Patent Court guide issued by the UK Government, it is explained that the English Patents Court utilizes a technical rating system ranging from Category 1 to Category 5. This system aims to assess the technical complexity of patent cases, with Category 5 representing the highest level of technical complexity. The primary objective of this system is to assign patent cases to judges based on their technical expertise rather than legal complexity (see here).

Now Now, What did His Lordship say?

According to the English Patent Courts, “scientific advisers are not there to decide the issues or to give opinions on the very issues in contention in a case”. Instead, the scientific adviser is used to provide a non-controversial scientific background to the Court. Also, “as the subject matter of patent actions becomes increasingly complex such a non-controversial introductory course for the judge seems to me [read Birss J.] to be highly desirable” and that “decided that the right thing to do is to ask the parties to arrange for the judge hearing the trial to have a non-controversial introductory course, probably over no more than a day, before reading into the case in any depth”, i.e., a ‘teach-in”. 

The Court referred to the two rules with regard to the scientific advisers and expert evidence, i.e., Section 70 (3) of the Senior Court Act, 1981 (see here) and Civil Procedure Rules 35.15 (see here). The Court solemnly resolved on the outset that ‘expert evidence’ shall be restricted to that which is reasonably required to resolve the proceedings. Mellor J. notes that although scientific advisers are helpful in giving a thorough understanding of the technology at stake in an IP litigation, they are not intended to directly address technical disputes or have any ultimate influence in the crucial questions that will decide a case’s outcome. Rather, their main responsibility is to inform the court, usually by means of pre-trial teach-ins.

Mellor J’s decision provides insight into the role of scientific advisers, emphasizing that English Patents Court judges, particularly those handling technically intricate cases, typically possess extensive experience in patent law and science. With regard to the procedure related to the scientific adviser, the method contemplated by the bench was a non-controversial “teach-in” in order to aid the court’s understanding. 

Although “hot-tubbing” as a term was not mentioned, the Bench gave a fantastic direction for a discussion between the experts for the purpose of reaching an agreement on the technical issues, and preparation of a statement for the Court setting out those issues on which they agree and those on which they disagree, with a summary of their reasons for disagreeing.  For those familiar with the concept of hot-tubbing, the procedure sounds a bit familiar (Please read my article on hot-tubbing here).  The further unfolding of the case will  shed more light on this aspect.

Mellor J, thus, deems it necessary to allow expert evidence alongside the appointment of a scientific adviser. By permitting each party to bring in a technical expert witness in molecular biology, the judge ensures that the court receives detailed insights into the technical aspects of the case. Moreover, the directive for these experts to engage in discussions and seek agreement on technical issues demonstrates the judge’s commitment to facilitating a thorough examination of the case while promoting transparency in the resolution of disagreements.

Walk, trot, and gallop?

When delving into the realm of expert evidence, it’s imperative to make explicit references to both the “Frye” and “Daubert” standards. While both the Daubert and Frye standards are employed to evaluate the admissibility of expert evidence in court, they diverge in their methodology. The Daubert standard prioritizes the reliability and methodology of expert testimony, whereas the Frye standard centers on the widespread acceptance of scientific principles or techniques within the pertinent scientific community.  In the arena of expert evidence these two cases have explicitly set the stage for the ‘expert evidence’, (see the paywalled reference here) and in the subject area are the pivotal foundations in American legal jurisprudence. The United Kingdom has diverged from the approaches taken by the United States in cases like Frye and Daubert thus, consequently, its standards for admissibility have deviated from those used in the United States. Throughout history, experts have been called upon to assess a wide array of matters, ranging from determining whether a ship’s wood has been corroded by seawater for insurance purposes, to evaluating medical conditions, gauging the extent of a crime, discerning the freshness or depth of a wound, interpreting legal pleas submitted in Latin, analyzing commercial documents, assessing the legitimacy of child, and even in cases where individuals have been erroneously labeled as “witches” based on “scientific examinations” of hysterical fits (see here). 

Overall, this decision by Mellor J. reflects a balanced approach that leverages the strengths of both scientific adviser and expert evidence to ensure a fair and informed adjudication of the matter at hand.

What about our ‘reclusive’ IP forum in India?

Indian IP ecosystem has been defined as ‘yet to be fully exposed to the global ecosystem’ (see here). According to the researcher the same applies in the context of expert evidence in IP litigation in India currently. A little bit about the Indian paradigm. Section 115 of the Patents Act, 1970 empowers the court to appoint an independent scientific adviser to assist with factual inquiries, excluding questions of legal interpretation. The Indian Patent Office maintains a roster of such experts to provide impartial assessments, particularly in contentious cases where conflicting expert testimonies are present. Rule 103 of the Patents Rules, 2003 mandates the Controller to annually update a list of scientific advisers, including their qualifications and experience. Eligibility criteria for enrollment as a scientific adviser include a science, engineering, or technology degree, a minimum of 15 years of technical experience, and a history of holding significant positions in scientific or technical departments. Parties usually divide the cost (see here).

The Delhi High Court Intellectual Property Rights Division Rules 2022 (see here) mentions a ‘Panel of Experts’ and contains directions with regard to Early Neutral Evaluation (ENE) which is a form of alternative dispute resolution (ADR) used in IP disputes adjudication. It involves the use of an impartial third-party evaluator, typically an expert in the relevant field, who assesses the merits of the dispute and provides a non-binding evaluation or assessment of the likely outcome of the dispute if it were to proceed to formal litigation or arbitration. The rules also talk about the appointment of a qualified and independent evaluator. 

The Draft Intellectual Property Rights Division Rules Of The High Court At Calcutta, 2023 (see here), talk of ‘Independent Experts’. In submitted comments on the draft (see here) Swaraj, Praharsh, Pranav and I have commended this move especially considering that many IP matters are highly technical in nature. Regarding this, it has been discovered that Rule 22 states that experts can be appointed from a list of willing individuals furnished by the parties or a list of experts that would be maintained by the department to administer and manage proceedings before the proposed Intellectual Property Rights Division (IPRD) and Intellectual Property Rights Appellate Division (IPRAD). However, it has been submitted in our comments  that the proposed Rules do not state anything about the criteria for selecting experts for these lists. We have already expressed our view that clarity is required regarding the mode and criteria for adding an expert’s name to the two lists of experts mentioned in the Calcutta IPD Rules. It is pondered whether there should be a demarcation of the type of expert that is being brought on under different heads which indicatively can be scientific, economic, legal, or technical. Also to note, currently the IPD rules should also accommodate requests to hear any other person like a patent agent, academician, etc. possessing the necessary knowledge about the subject matter of the dispute. Such a provision is made within the Delhi High Court IPD Rules under Rule 34. 

We are at a place in the history of IPR where there is a large increase (Indian Patent Office Puts out 1532 Orders in One Day!) in the number of decisions being put out every day by the Indian Patent Office (see here for the interesting blog by Swaraj). We stand at a juncture where IP litigation transcends its traditional domain, extending beyond the purview of elite barristers and academics. Its significance in both commercial realms and the governance of our nation cannot be overstated.  It can be safely said that the Indian IP regime is making tiny ripples of shift but then again (dramatic pause) when has it not? We will keep looking at the development that this case will be making, till then please read up and give your suggestions below!

 I will be back next week for more expert’s expert talk!

 Leviosa!

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• Source: https://spicyip.com/2024/03/westward-look-navigating-the-divide-between-the-roles-of-scientific-advisers-and-technical-experts-in-ip-litigation.html