Withdrawal of an expert in disputes related to intellectual property

In accordance with Art. 82 of the Arbitration Code of the Russian Federation, parties participating in the case are entitled to file an appropriate petition with the court for the appointment of an examination of the case. At such a request or with the consent of the persons participating in the case, in order to clarify issues requiring special knowledge, the court appoints an expert examination on the case under consideration. The court also appoints an expert examination on its own initiative, regardless of the consent of the persons participating in the case, in cases where the appointment of an expert examination is prescribed by law or provided for by an agreement, or is necessary to verify a statement about the falsification of evidence, or if an additional or repeated expert examination is required. An arbitration court shall issue an appropriate ruling on the appointment of an expert examination or on the rejection of a petition for the appointment of an expert examination.

The regulatory framework governing the activities of conducting an examination is made up of the relevant norms of the Arbitration Code of the Russian Federation, Federal Law No. 73-FZ of May 31, 2001 "On State Forensic Expertise Activities in the Russian Federation" (hereinafter referred to as the Law on Expertise), as well as the Decree of the Plenum The Supreme Arbitration Court of the Russian Federation dated 04.04.2014 N 23 "On Some Issues of the Practice of Application by Arbitration Courts of the Legislation on Expertise" (hereinafter - Resolution of the Plenum No. 23). On the basis of Article 41(1) of the Law on Expertise, a forensic examination may be carried out outside state forensic institutions by persons with special knowledge in the field of science, technology, art, or craft, but who are not state forensic experts. Non-state forensic activities and non-state experts are also subject to the relevant provisions of the Law on Expertise.

In accordance with paragraph 3 of Art. 82 of the Arbitration Procedure Code of the Russian Federation, the persons participating in the case have the right to apply for the involvement of the persons indicated by them as experts or for the conduct of an examination in a specific expert institution. Paragraph 2 of Decree of the Plenum No. 23 states that when ordering an examination of a person who is not a state forensic expert, the court also finds out information about his education, specialty, work experience, and position held and indicates them in the ruling on the appointment of an examination (Art. 82).

The aforementioned regulatory legal acts establish requirements for the activities of an expert, non-compliance with which may be the basis for the removal of an expert. In particular, the grounds for challenge are established in Art. 21 and 23 of the Arbitration Code of the Russian Federation.

In accordance with Art. 23 of the Arbitration Code in the cases provided for by Art. 21 of the Arbitration Code, the grounds for disqualification of an expert are:

1. Conducting an audit or inspection by an expert, the materials of which have become a reason for applying to an arbitration court or are used in the consideration of a case;
2. If the expert is a relative of the person participating in the case or his representative;
3. If the expert is personally, directly, or indirectly interested in the outcome of the case, or there are other circumstances that may cast doubt on his impartiality;
4. If the expert is or was previously in official or other dependence on the person participating in the case or his representative;
5. If the expert made public statements or gave an assessment on the merits of the case under consideration.

In addition, Art. 16 of the Law on Expertise states that an expert is not entitled to:

1. enter into personal contact with the participants in the proceedings, if this casts doubt on his disinterest in the outcome of the case;
2. independently collect materials for the production of a forensic examination;
3. inform anyone about the results of the forensic examination, with the exception of the body or person who appointed it;
4. destroy objects of research or significantly change their properties without the permission of the body or person who ordered the forensic examination.

Based on paragraph 3 of Art. 82 of the Arbitration Procedure Code of the Russian Federation, one of the rights of the persons participating in the case is the right to challenge the expert. At the same time, according to the legal position of the Constitutional Court of the Russian Federation dated July 17, 2012 No. 1409-O, the obligation of the expert to declare self-withdrawal is established, as well as the obligation to withdraw the expert from participation in the forensic examination and the need to immediately terminate its production, if it is entrusted to him, in the presence of the stipulated procedural statutory grounds, including when interested in the outcome of the case. This definition also states that the provisions of Article 24 of the Arbitration Procedure Code of the Russian Federation do not imply arbitrary application: if there are grounds established by Articles 21 and 23 of this Code, consideration of the issue of challenging an expert is not a right, but an obligation of the arbitration court considering a specific case.

In accordance with paragraph 2 of Article 24 of the Arbitration Procedure Code of the Russian Federation, self-withdrawal or challenge must be motivated and declared before the start of the consideration of the case on the merits. During the consideration of the case, an application for self-withdrawal or challenge is allowed only if the grounds for self-withdrawal or challenge became known to the person declaring self-withdrawal or challenge after the commencement of the consideration of the case on the merits.

Judicial practice on the challenges of an expert in disputes related to intellectual property is rather scarce. First of all, this may be due to the fact that the facts that may serve as grounds for possible subsequent removal of an expert are usually considered by the court before issuing a ruling on the appointment of an expert examination in the case on the basis of information about the expert provided by the persons participating in the case. Let us consider the cases of challenges of experts in cases related to intellectual property.

By the ruling of the Court for Intellectual Property Rights dated October 26, 2020, in case No. SIP-978/2019, the applications of third parties who do not file independent claims regarding the subject of the dispute (hereinafter referred to as third parties) on the removal of expert Vladimir Khoroshkeev, as well as on the removal of the expert candidacy Lisovenko Viktor Borisovich in view of the following. The third person, when motivating doubts about the lack of interest and impartiality of the expert, refers to the fact that the expert Khoroshkeev V.A. from 1985 to 1991, worked in the previous federal-state institution of the Federal Institute of Industrial Property (FIPS) as a state patent examiner. This fact, according to the third party, testified to the official or other dependence of the person participating in the case. Furthermore, the third party pointed out that the expert opinion of Khoroshkeev V.A. contained additional conclusions on issues not raised by the court, and the expert's answers to these questions could be a legal assessment of the disputed decision of Rospatent, which is the exclusive prerogative of the court. These circumstances, according to the third party, could also indicate the existence of doubts about the impartiality of the expert. Assessing the above arguments, the court pointed to the absence in the case file of information about the work of Khoroshkeev V.A. in an organization that is the legal successor of FIPS. At the same time, the court agreed with the argument of a third party on the additional conclusions contained in the conclusion and on the basis that the expert was personally, directly, or indirectly interested in the outcome of the case, granted the application for the challenge of the expert Khoroshkeev V.A. This ground is provided for by subparagraph 5 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation.

Also in the present case, the applicant applied for the removal of expert V.B. Lisovenko. In particular, the applicant pointed out that this expert worked in a company that provided patent and representation services to another third party in the case under consideration. In this case, the court also saw grounds for challenging the expert under subparagraph 5 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation - personal, direct, or indirect interest in the outcome of the case, or the presence of other circumstances that may cast doubt on his impartiality.

By the decision of the Court for Intellectual Property Rights in case No. SIP-664/2018 of 03/07/2019, the application of a foreign person to challenge the expert Pasynok M.S. was satisfied. This statement was motivated by the fact that from 03/04/2005 to 05/07/2008 the named expert worked at FIPS as a patent expert, and, therefore, was in official or other dependence on the person participating in the case. According to the evidence available in the case file, the court concluded that Pasynok M.S. previously was in official or other dependence on the person participating in the case, and on the basis of subparagraph 6 of part 1 of article 21 of the Arbitration Procedure Code of the Russian Federation satisfied the application of the foreign person to challenge the expert.

There is much more judicial practice on the rejection by the courts of petitions to challenge an expert. Thus, in case No. SIP-909/2019, by a ruling dated 12/09/2020, the court of the first instance refused to satisfy the application for the challenge of expert Korchagin I.I. The court of cassation also did not see a contradiction between the refusal to challenge this expert. There were also refusals to satisfy the demands for the removal of experts in cases No. SIP-708/2018, SIP-567/2020, A40-256459/2019, SIP-783/2019, SIP-676/2019, A70-9233/2016, SIP -685/2017, SIP-158/2014, SIP-134/2013.

An analysis of judicial practice has shown that in disputes related to intellectual property, the courts satisfied the requirements to challenge experts on the basis of subparagraphs 5 and 6 of part 1 of Article 21 of the Arbitration Procedure Code of the Russian Federation, by virtue of which an expert cannot participate in the consideration of the case and is subject to challenge if he personally, is directly or indirectly interested in the outcome of the case, or there are other circumstances that may raise doubts about his impartiality, as well as if he is or was previously in official or other dependence on the person participating in the case, or his representative.

Thus, when entrusting an examination to a person who is not a state forensic expert, the persons participating in the case should be as careful as possible about the candidates for experts proposed for consideration by the court.