Examining the evaluation report system for patents

In China, due to the fact that applications for utility models and designs are only subject to preliminary examination rather than substantive examination, evaluation reports of patents for utility models and designs are important for patentees in order for them to conduct rights protection and infringement proceedings.

Applications for utility models and designs in China may be granted patent rights after preliminary examination and compliance with the requirements for formal examination. The fact that the novelty and inventiveness of patents are not subject to retrieval, analysis and evaluation leads to the low stability of patent rights for utility models and designs. In order to make up for the lack of substantive examination when it comes to the authorisation of utility models and designs, the evaluation report system for patents has been established in China.

In general, evaluation reports of patents provide evidence of patent stability for patentees, courts or departments in charge of patent affairs.

According to Article 61 of the Patent Law of the People's Republic of China, where a patent infringement dispute involves a patent for a utility model or design, the people's court or the department in charge of patent affairs may require the patentee or interested party to submit an evaluation report of patents compiled by the administrative department for patents under the State Council. This is after the relevant utility model or design has been retrieved, analysed and evaluated and acts as evidence in patent infringement disputes.

As can be seen from the above provisions, the patent evaluation report is evidence for the people's court or the department in charge of patent affairs to try and handle patent infringement disputes. It is mainly used to prove the stability of the patent rights in patent infringement cases by the court and to facilitate the people's court or the department in charge of patent affairs to determine whether or not the relevant procedures should be suspended.

In the process of patent infringement proceedings, the accused infringer will often initiate patent invalidation procedures to invalidate the patent involved. The court may decide whether or not to suspend the proceedings on the basis of the conclusions of the patent evaluation report. In circumstances where the conclusion of the evaluation report of the patent is that there is no evidence that the patent right does not meet the statutory requirements of authorisation, the court may not suspend the trial even if the accused infringer makes a request for invalidation. On the other hand, when the conclusion of the patent evaluation report is that the patent right does not meet the statutory requirements of authorisation, and the accused infringer makes a request for invalidation, the court may suspend the trial; if the accused infringer does not make a request for invalidation, the court may not suspend the trial.

Given the above, the patentee may, according to the results of the patent evaluation report, consider whether or not to bring an infringement lawsuit and adjust the direction of the lawsuit accordingly. In addition, although the submission of the patent evaluation report is not a pre-condition for the patentee to bring a patent infringement lawsuit, the patentee may submit the evaluation report of the patent as soon as he initiates infringement proceedings, which may speed up the lawsuit process and make the trial develop in a direction beneficial to the patentee.

Moreover, the patent evaluation report can help the public and interested parties correctly understand the stability of patent rights and reduce transaction risks. In cases where the conclusion of the patent evaluation report is that there is no evidence that the patent rights do not meet the statutory requirements for authorisation, the report can play a role in the following aspects:

• In the licensing, pledge, transfer and other transactions of patent rights, it is easier for the licensee, pledgor, assignee and other interested parties of the patent rights to conclude transactions with the patentee, therefore reducing the transaction time.

• In internationally recognised exhibitions such as the Canton Fair, if the patentee provides an evaluation report of patent containing affirmative opinions, the intellectual property management department of the exhibition can more easily accept complaints and reject the relevant defences of the suspected infringer.

• Where the patentee provides an evaluation report of patents containing affirmative opinions when the patent right is filed with customs, customs will, in consideration of the stability of such rights, be more willing to take the initiative to detain the articles suspected of infringement.

The patent evaluation report is a comprehensive evaluation report made by the State Intellectual Property Office on the basis of a comprehensive retrieval of the patentability of the authorised patent for the utility model or design at the request of the patentee or interested parties. No other organisation has the right to make a patent evaluation report.

After the patentee of the patent for the utility model or design is authorised and announced, the patentee or interested parties or their entrusted agencies may request the State Intellectual Property Office to make a patent evaluation report by submitting a request for a patent evaluation report and paying the request fee, while others have no right to request such a report. That is, only the patentee or interested parties qualify to be a requestor. The interested parties may be, for example, the licensee under an exclusive licence contract for patent exploitation and the licensee under the general licence contract for patent exploitation with the right of prosecution granted by the patentee.

The State Intellectual Property Office shall, within two months from receiving the qualified request for a patent evaluation report and the request fee, compile a patent evaluation report. The patent evaluation report will only be sent to the requestor, that is, the patentee or interested parties or their entrusted agencies. The patent evaluation report will contain a clear conclusion as to whether or not the evaluated patent meets the authorisation requirements stipulated in the Patent Law of the People's Republic of China and its detailed rules for implementation. In particular, for cases where the requirements for authorisation are not met, the evaluation report will contain specific evaluation statements and refer to reference documents when necessary.

The State Intellectual Property Office does not make patent evaluation reports for patent applications for utility models or designs that are not authorised to be announced, or patents for utility models or designs that have been completely invalidated. Moreover, only one patent evaluation report shall be made for a patent, and any entity or individual may consult or reproduce the patent evaluation report that has been made.

A requestor who believes that there are errors in the patent evaluation report that should be corrected may make a request for correction within two months from receiving the patent evaluation report. The contents that can be corrected include: errors in descriptive item information or writing, procedural errors in preparing the patent evaluation report, obvious errors in the application of laws, obvious errors in ascertaining the facts on which the conclusion is based and other errors that should be corrected. The request for correction should be made in written form as a statement of opinions, stating the contents to be corrected and the reasons for the correction, but the patent document shall not be modified.

However, the patent evaluation report is not an administrative decision and patentees or interested parties who refuse to accept the conclusion of the patent evaluation report cannot request administrative reconsideration or bring administrative litigation.

To sum up, the system of patent evaluation reports in China is an important supplement to the preliminary examination system for applications for utility models and designs. It can help patentees or interested parties as well as courts and the public to understand the stability of patent rights, improve judicial efficiency and rights protection efficiency in infringement litigation, reduce losing risks and also reduce transaction risks.

Yanling Zhou is a patent attorney at DEQI Intellectual Property Law Corporation. She obtained a MSc degree in mechatronic engineering and has two years of technical research and development experience.

Yanling Zhou offers intellectual property legal services. She has significant experience in preparing and prosecuting patents as well as patent reexamination and invalidation in the areas of mechanics, fluid power and automatic control and manufacturing. In addition she has experience in analysis and advice regarding patent protection, including evaluation of patentability. Yanling is a member of the All China Patent Agents Association.