Sep 25, 2025 | Expert Reports in IP Court Proceedings

1. In intellectual property litigation proceedings, the following two more common situations require the support of expert opinion:

a) situations which involves technical (e.g. it specialist) needs;
b) situation which require expert (e.g. professional accountant) opinion in recovering losses.

2. Usually when one party to the lawsuit (such as the plaintiff) requests an expert report, the other party (i.e. the defendant) will also request an expert report. The reason is that if one party makes this request and the other party does not, then the court will adopt more of the expert opinion of the proposing party, the other party will get their fingers burned.

3. Unlike witnesses, experts must have educational qualifications and/or experience and “independence” in the question. The so-called “independence” means that the expert does not provide advice at the behest of the customer, but rather the opinion of the relevant issues to the court based on his expertise. If a problem with “independence” is found, then the other side can challenge the expert’s opinion. Nonetheless, unlike factual witnesses, expert witnesses cannot be paid.

4. Expert opinion is not something that one party wants to do. It is necessary to obtain the court’s “allow (i.e. leave)” before submitting a court expert opinion. During the application and approval process, the court usually makes the following expert evidence orders:

a) determine the issues that experts need to address;
b) both parties simultaneously exchange “expert reports” within a specified time (for example: within 35 days after exchange of signed witness statements;
c) after exchanging expert reports, the two parties then exchange “expert reports in reply” within a specified period of time, for example by another 35 days;
d) experts from both sides then conduct a video conference within a specified time (e.g. 28 days) to make a joint expert report listing matters of agreement and disagreement (along with reasons); and
e) finally, experts from both sides produce a joint expert report to be submitted to the court.

5. If the expert report is about recovering losses, the expert will mostly be an expert with expertise in calculating losses, such as a university professor (methods of calculating losses) or professional accountants (calculating the quantity of losses).

6. Peculiarly, commissioning an expert report also needs to be done carefully and in an orderly manner. Otherwise, the other party will challenge the expert’s “independence” and reliability. Absolutely avoid failing miserably in a very easy task.