Summary: the patent evaluation report is a search, analysis and evaluation report by the state intellectual property office on the basis of requests from patent holders, stakeholders or alleged infringers for patents that are practical, new or outwardly designed. It is used primarily as evidence in the handling of patent tort disputes in the departments that hear or administer patent proceedings to determine whether the relevant proceedings need to be suspended. The factors that should be taken into account in the request for a patent evaluation by a patentee or interested person are briefly discussed in this paper, based mainly on existing patent law and relevant provisions in the draft review guide (2022), taking into account past work experience。
Currently, a growing number of applicants are submitting applications for practical new types of patents and patent applications for visual design in china. The increase in the number of patent applications for outward design may be attributed mainly to china's opening of the door to partial outward design in 2021 and its accession to the hague industrial design system in 2022. The increase in the number of patent applications for practical and new types may be attributed mainly to the fact that the creative requirements of chinese patent law for practical and new types of patents are significantly lower than those for inventions, and that the rate and speed of authorization of patent applications for practical and new types of patents are generally significantly higher than those for inventions。
However, it is precisely because patent applications for new practical and visual design are subject to a preliminary examination and not to a substantive review process that new practical and physical design patents are less stable. If the patentee is unable to properly recognize this legal instability and is too hasty to make a patent tort claim against another person for patenting, there is a great risk that the patent will be extinguished, time-consuming and, for others, impact on his or her normal productive activities. Thus, patent evaluation reports, which are officially issued by the national intellectual property office to assess whether the conditions for authorization under patent law and its implementing regulations are met, may, to some extent, compensate for the less stable nature of patent rights due to the absence of a substantive review procedure for a functional new or visual design patent。
In view of this, many lawyers and agents in the intellectual property community usually recommend to patent holders that, if they wish to defend a patent for a functional new or visual design, they may request the national intellectual property office to produce a patent evaluation report in advance of which they will then decide whether to implement or continue their advocacy activities. However, the author considers that such a legal recommendation may not be appropriate, since patent evaluation reports are like a double-edged sword, and if the results of patent evaluation reports are positive, this will give patentees greater confidence in patent defence; conversely, if the results of patent evaluation reports are negative, they will usually result in a greater disadvantage to patentee choices in the way they defend their rights。
In addition, it should be noted that the national intellectual property agency (inip) will produce only one patent evaluation report for the same functional new patent or appearance, rather than several reports. In the event of a request for a patent on the same functional new or visual design, the state intellectual property office will join the case and make only one patent evaluation report; moreover, the state intellectual property office will dismiss the request if the patent evaluation report is followed by a further request。
It should be noted, in particular, that the results of patent evaluation reports made by the national intellectual property agency are made available to the public at large and can be consulted or reproduced by any unit or individual. While the patent review guide clearly provides that patent evaluation reports may be modified on the basis of a written request submitted by the claimant, there is little chance that this will occur in practice, unless there are clear errors in patent evaluation reports, such as the recording of project information or errors in writing, apparent errors in the application of the law and obvious errors in the factual findings on which the conclusion is based. Given that the results of the patent evaluation report would not change and would be immediately accessible to the public, the author believes that the patentee should be more cautious about whether to request an evaluation report。
To sum up, patenting evaluation reports for practical, new or visual design are a rather important decision for patent holders and are by no means merely an insignificant procedural exercise. As a patent practitioner who is more aware of the many advantages and disadvantages of patent evaluation reports, the author does not recommend that the patentee hastily submit a patent evaluation request, which will be further elaborated later。
I. Who can request patent evaluation reports
Under the existing patent law and the practice of the state intellectual property agency, following the granting of a patent on a functional new type of patent or on a visual design, (i) the patent holder, (ii) the interested person or (ii) the alleged infringer may request the state intellectual property agency to make a patent evaluation report. No person may request a patent evaluation report for a patent application that is in a state of trial and has not been authorized for a practical new or visual design. For each of the three subjects entitled to submit patent evaluation reports, these are discussed separately below。
In the case of (i) patentee of one of the above-mentioned subjects, the draft patent review guide (2022) (hereinafter referred to as “the draft”) provides that where patent rights are shared by a number of patentees, the claimant may be a part of the patenter without the unanimous consent of the patent owner as a whole。
For (ii) interested parties of the subject two above, the draft defines it as “persons entitled to bring a patent tort dispute before the people's court or to request the administration of the patent work under article 65 of the patent act”. If the draft was finally adopted, the subject “stakeholder” would likely include:
(1) a licensee of a “exclusive licence”
(2) a licensee of an “exclusional licence” in the case of a waiver by the patentee; and
(3) a licensee of a “ordinary licence” in the case of an action by the patentee。
According to the draft, in the course of patent protection, the people's court or the department administering the patent may only require (i) the patentee or (ii) the interested person to submit a patent evaluation report, and not (iii) the alleged infringer to produce a patent evaluation report. It follows that the burden of proof in the evaluation of patent stability rests on the plaintiff/appellant side, not on the respondent/respondent side. According to the author, this is also one of the reasons why the former patent law has not included alleged infringers in the subject of patent evaluation reports。
Moreover, the supreme people's court, in the supreme people's court's case no. 383 (2020), expressed the view that the patent evaluation report was evidence for the consideration and handling of patent infringement disputes, but was not evidence that the plaintiff had to submit when filing a civil patent action, and that the supreme people's court did not support the dismissal of the complaint solely because the plaintiff had failed to submit the patent rights evaluation report as required. On this basis, it can be seen that the patentee or interested party may not refuse to submit a patent evaluation report on the sole ground that it was requested by the people's court or the administrative enforcement authority。
However, with the strengthening of judicial protection of ipr infringement at the national level and increased awareness among domestic innovation actors of the construction and protection of iprs, domestic ipr infringement litigation has shown a rapidly growing trend. In this context, since evaluation reports are not a condition for the judicial hearing and administration of tort disputes, it would be unfair for the alleged infringers if the patentee or interested person unreasonably delayed or did not even request an evaluation report, especially if the patentee or interested person itself discovered the existence of existing technologies that are clearly detrimental to the stability of the patent in the practical new or visual design. The extension of the subject of patent reporting requests to the alleged infringer is thus of positive significance, allowing the alleged infringer to submit a patent evaluation report on his own initiative, especially if the plaintiff is unwilling to do so, can be more effective in helping the judiciary and the executive to clarify the facts of the case and to make a quick decision, thereby contributing to the evaluation report's role as a dispute settlement。
The current definition of (iii) alleged infringers of the above-mentioned subject is still widely contested. According to the draft, the term “alleged infringer” refers to: (a) any unit or person who has been charged with a violation or (b) is likely to be charged with a violation. As to the interpretation of “possible infringement”, the draft gives the following examples of “units or individuals that have received a letter of attorney from the patentee, a notice of complaint from an electronic platform, etc.” (review of draft guidelines 2022, part v, chap. X, sects. 1, 2, 2, 2. 2 and 2. 3)。
It is clear that, according to the draft interpretation, if any unit or individual has only received a letter of attorney (e. G. A warning letter) but has not yet been sued in court for patent infringement, the unit or individual has been given the right to request a patent evaluation report from the national intellectual property agency. However, the current approach of the national intellectual property agency seems to differ from that of the draft. If a person only receives a letter from a lawyer and submits a request for an evaluation of patent rights to the state intellectual property office, the state intellectual property office rejects it in principle and issues a notification that the “request is deemed not to have been filed”. We have tried to discuss this issue with the staff of the national intellectual property agency, who seem to believe that only parties who have been charged with patent infringement in litigation or administrative defence proceedings are eligible to request patent evaluation reports. In other words, the national intellectual property authority's interpretation of the term “alleged infringer” is more conservative and close to the actual alleged infringer, rather than the potential alleged infringer who will or may be charged with the violation。
In the light of the above-mentioned attitude of the national intellectual property agency, patent holders (or stakeholders) of practical new or outward design patents can now issue warning letters to potential infringers without patent evaluation reports. Since potential infringers who receive warnings do not have the right to request patent evaluation reports in existing systems and practice, they are likely to spend additional time and money analysing patent infringement risks and even a great deal of effort searching for existing technologies or existing designs to prepare for filing a patent invalidation request。
To be frank, it is argued that the current approach of the national intellectual property agency may be unfair to “potential infringers” because patents for practical new types of patents and for visual design have never been subject to substantive scrutiny, and rights holders have easier access to “larger protection” patents and, on that basis, can easily send lawyers' letters to competitors. The author speculates that the current approach of the national intellectual property authority to requests from “potential infringers” is an “interim” approach that has not yet been formally adopted in the draft. To this end, the author recommends that the national intellectual property agency give serious consideration to the proposal for the draft, while giving potential infringers (e. G. Units or individuals who have received warnings) the same right to request patent evaluation reports as actual infringers (e. G. Units or individuals who have been brought before the courts) in order to prevent the abuse of patent rights by patent holders in practical, new or visual designs。
When will patent evaluation reports be required
According to current chinese patent law and practice, only a few enforcement procedures clearly require patent evaluation reports:
(i) procedures for filing complaints with e-commerce platforms about patent infringement in the context of new practical or visual design
(ii) procedures for submitting to customs patents for practical new types of patents or designs; and
(iii) declaration of open licensing of patents for practical new or visual design。
For (i) and (ii), this is mainly due to the fact that electrical platforms and customs are not exclusive to patent matters and necessarily require a positive patent evaluation report from the national intellectual property agency, and the patentability is more credible. For (iii), open licences are an entirely new system in our country, and patent evaluation reports are also required to protect escorts, as only positive patent evaluation reports (or partial positive patent evaluation reports) can give potential licensees greater confidence in patentability and protection。
On the other hand, as discussed above, in the handling of patent tort disputes by the people's court or the department administering the patent, although the plaintiff/applicant is usually required to provide an evaluation of the patent rights, it is not necessary (see supreme people's court in the supreme people's court in case no. 383-2020). In other words, the issuance of patent evaluation reports is not an administrative decision, but is simply regarded as “evidence”. In other words, patent evaluation reports are only those made unilaterally by the national intellectual property agency without any exchange of views with the applicant, and can only indicate to some extent the stability or instability of patent rights. In the view of the author, this was also one of the reasons why the evaluation report could serve only as reference evidence for the consideration and handling of patent infringement disputes and not as a condition for filing a case. As a result, patent stability is confirmed to some extent if certain conditions are met, for example, if the patentee is able to submit evidence that the patent has been maintained in an invalid proceeding, and the patent evaluation report appears to be optional. In addition, a court or patent administration enforcement authority that does not explicitly require a patent owner or interested person to provide a patent evaluation report in a patent tort dispute means that a patent evaluation report is also not necessary in such a case。
In practice, patent evaluation reports are not required for other forms of advocacy, such as the issuance of warning letters, notary purchases or web-page notaries, as these are not official forms of patent protection。
In general, the author's suggestion to patentee, taking into account his or her work experience, is that “the patent evaluation report should not be requested where it is not necessary”. A patent granted but relatively “undetermined” for a practical new or visual design may create a significant deterrent for your competitors. As noted earlier, even without patent evaluation reports, patent holders can still issue warning letters to potential infringers. In this way, the burden of responsibility will shift to potential violators who must take seriously the incident of receiving a warning letter and, under the current judicial system, only the alleged infringers who have received a warning letter cannot request an assessment of patent rights from the national intellectual property agency。
Even if a patent evaluation report is necessary, the author recommends that the patentee (or interested person) pre-research the patent evaluation report through the patent law firm before submitting a request to the state intellectual property office, in order to ensure that the stability of his or her patent is generally measured in order to avoid the risk of unexpected receipt of a negative evaluation report. If the search results of patent law firms show relatively stable patent rights in new practical or outward design, the patentee may make further patent evaluation requests, an approach that will increase confidence and likelihood of obtaining positive patent evaluation reports. If the patent law firm's search results show the existence of existing technologies that clearly undermine patent novelty or creativity, the patentee may consider adjusting the way in which rights are defended to a way in which no evaluation report is required, for example by sending only warning letters and settling privately。
Furthermore, it should be noted that even if the results of patent evaluation reports are negative, this does not mean that the patent is necessarily invalid. In practice, there are cases in which patent evaluation reports are useful and negative and remain valid after a round of ineffective attacks (e. G. Cn201420786681. 4). As noted earlier, patent evaluation reports are not administrative decisions and the applicant cannot initiate administrative review and proceedings in that regard. Thus, in the case of a negative patent evaluation report, if the patent owner or interested person disagrees with the results of the report and the patent stability is demonstrated by the search conducted through the patent attorney's services, the patentee or interested person may still consider filing a tort action and wait for the alleged infringer to initiate an invalid attack, or may even initiate an invalid proceeding on its own initiative to “validize the self-licensed patent”。
More importantly, even when negative patent evaluation reports are received, this does not mean that the patentee cannot successfully defend his rights in court proceedings. This is because, as mentioned above, patent evaluation reports are only considered evidence in tort proceedings. If the patentee still has sufficient grounds to support the validity of the patent in the case of negative patent evaluation reports, the court may still decide in favour of the patentee. For example, last year, a patent evaluation report by my division was designed for negative appearances, and the patent was finally successful in patent infringement proceedings before the beijing intellectual property court。
These are drawn from his work experience, as well as from his insights into existing patent laws and relevant provisions in the draft, and represent only personal points of view in the hope of contributing to the interests of his or her colleagues in the industry, as well as to those units or individuals who may request intellectual property reports from the national intellectual property agency in the future。
