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What you need to know about patent evaluation reports




Guiming (Gary) Wu of Kangxin Partners provides answers to frequently asked questions about the ins and outs of patent evaluation reports

What is a patent evaluation report?

A patent evaluation report is a report issued by the State Intellectual Property Office (SIPO) to evaluate whether a certain utility model or design patent meets the granting conditions under the Chinese Patent Law and the Implementing Regulations of the Chinese Patent Law. Patent evaluation reports are issued following a prior art search by SIPO, and are done at the request of the patentee or interested party.

Patent evaluation reports only apply to utility model and design patents, not invention patents. Invention patents already undergo substantive examination before they are granted, including a prior art search, and so do not require patent evaluation reports.

Since it is not an administrative decision, the patentee or interested party cannot apply for administrative reconsideration or institute administrative litigation with regard to a patent evaluation report.

Who can request a patent evaluation report?

Either a patentee or an interested party can request a patent evaluation report.

An 'interested party' includes an exclusive licensee of the patent or a non-exclusive licensee who has been given the authorised right of action by the patentee.

If two or more parties request a patent evaluation report in respect of the same utility model or design patent, SIPO will only make one patent evaluation report.

Why request a patent evaluation report?

As they do not undergo substantive evaluation, utility model and design patents are unstable.

In a utility model or design patent infringement case, a common defensive tactic by the defendant is to initiate a patent invalidation procedure against the relevant patent before the Patent Reexamination Board, and to request that the court suspend proceedings of the suit. However, this cannot be done if the patentee presents a patent evaluation report supporting the validity of his patent.

A patent evaluation report is therefore made to confirm a utility model or design patent. A patentee can request a patent evaluation report in order to obtain proof of his patent's novelty and inventiveness. The report can be used as evidence at the People's Court or the local patent office to consider when dealing with disputes over patent infringement.

A patent evaluation report can also be used to obtain certain remedies. For example, if a patentee wants to block products that infringe his patent from being sold abroad, he can record his patent with the Chinese General Administration of Customs to prevent the goods from leaving China. In such a scenario, according to the provisions of the Implementation of the Provisions of the Chinese Customs Protection for Intellectual Property Rights, a patent evaluation report should be provided.

Some patentees receive money from patent licensing and patent transactions. A patent evaluation report is also useful for determining whether the patentee's patent could be invalidated, or if exploiting the patentee's patent would infringe the patent rights of third parties.

How do you request a patent evaluation report?

The patentee or interested party has to submit a patent evaluation report request to SIPO specifying the patent number, and pay a fee of Rmb2,400 ($350). Typically, a patent evaluation report can be expected within three months.

When to request a patent evaluation report?

It is important to note that after a patent evaluation report is made, any entity or individual may access it, regardless of its conclusion.

Since a patent evaluation report will be accessible to anyone, including the patentee's competitors, I recommend getting a patent agency to conduct a pre-assessment of the utility model or design patent before submitting a request for a patent evaluation report. That is, conducting a search against the relevant patents to discover whether there is any similar prior art or existing design, and conducting a comparative analysis.

If you find there is no similar prior art or existing design adversely affecting your patent, the patent evaluation report can be formally requested since a supportive conclusion can be expected. If your assessment indicates otherwise, requesting a patent evaluation report is not recommended.

Guiming (Gary) Wu
 

As a senior patent attorney for more than 20 years, Wu is highly experienced in patent prosecution, invalidation, and due diligence in a wide range of technical fields. Since 1991, Mr Wu has successfully handled a large number of patent applications and IP disputes involving patent infringements and patent invalidation for both foreign and domestic clients including Fortune 500 entities. His clients include Haier, Gree, ZTE, Samsung, LG, Toshiba, and Unilin.

Wu has written many articles in both Chinese and international journals such as Electronics Intellectual Property, World Trademark Review, Managing IP's China IP Focus and the China Intellectual Property newspaper. He has also been an active speaker and moderator at a number of international conferences and seminars, sharing his knowledge and experience of patent practice in China with audiences from all over the world. In 2016, he was named in the Top 10 Leading Patent Attorneys in China by China Intellectual Property News. He joined Kangxin Partners in 2000 and is a member of the All-China Patent Attorneys' Association, the Beijing Patent Attorneys' Association and the Committee on Enforcement of the Chinese National Group of AIPPI.



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