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
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
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
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.
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.