A patent evaluation report is a report issued by the P.R.C. State Intellectual Property Office (“SIPO”) based on a database search and analysis that evaluates whether a utility model or design patent conforms to the legal requirements for granting a patent. Although patent evaluation reports are available only for utility model and design patents, it is unnecessary to submit a report when filing a lawsuit involving such a patent. Since utility models and design patents do not undergo substantial examination before the patent is granted, these types of patent rights are inherently unstable. In a lawsuit, the defendant is very likely to submit a patent invalidation petition to SIPO before its court-ordered response deadline expires, and then petition the court to suspend the trial pending the outcome of the administrative invalidation proceedings. In this circumstance, a positive patent evaluation report may be used in court as preliminary evidence of the validity of the patent, and can also be used a basis for the court to decide whether or not to suspend the trial pending invalidation deliberations.
According to the law, only patentees and interested parties can ask SIPO to issue a patent evaluation report. “Interested parties” are parties that are entitled to file lawsuits or file complaints with the patent administration authority just as a patentee. Such parties include the licensee in a sole license contract; and, if the patentee declines to file a lawsuit, the licensee of an exclusive license contract.
Since the patent evaluation report system commenced on October 1st, 2009 when the P.R.C. Patent Law (2008 Amendment) came into effect, SIPO only accepts requests for patent evaluation reports for utility models and design patents whose patent applications were filed on or after this date. The report is usually issued within a month or two after the request is submitted.
If a utility patent application was filed before October 1st, 2009, the patentee can ask SIPO to issue a patent search report under the P.R.C. Patent Law (2000 Amendment). Since the patent search report is the predecessor of the patent evaluation report, its function is similar to that of the patent evaluation report – they are both used as preliminary evidence to determine the validity of a patent.
Since the law does not provide that the patentee can request a patent evaluation report for design patents filed prior to October 1st, 2009, the patentee can only engage non-governmental institutes to conduct a prior art search to preliminarily determine whether any factor that may influence the patentability of the patent exists. Among these institutes, the Patent Search Consulting Center, a SIPO-affiliated institution, also provides patent search reports. Because of the affiliation with SIPO, these reports are considered more authoritative and acceptable.
Although the law provides that only the patentee and interested parties can request the issuance of a patent evaluation report, anyone can review or copy the report after it is issued. Moreover, although the evaluation report does not by itself constitute an administrative decision on the validity of the patent, a report containing an unfavorable conclusion can give support invalidation petitions filed by other parties. On the other hand, although patent evaluation reports are issued by SIPO, since these reports are not by nature administrative decisions, the patentee cannot request administrative reconsideration or litigation proceedings to reverse an unfavorable report.
Relevant Legal Provisions:
Article 61.2 of the P.R.C. Patent Law
Where a patent infringement dispute involves a utility model or a design patent, the People's Court or the patent administration authority may require the patentee or an interested party to provide a patent evaluation report to serve as evidence for hearings and the resolution of the dispute. A patent evaluation report is issued by the administrative department for patents under the State Council after searching, analyzing and evaluating the disputed utility model or design patent.
Guidelines for Patent Examination, Chapter 10 “Patent Evaluation Report”, Section 1, Paragraph 3
A patent evaluation report constitutes evidence that helps the People’s Court or the patent administration authority to judge and deal with patent infringement disputes. Patent evaluation reports are mainly used to determine whether or not it is necessary to suspend the relevant procedures. Since a patent evaluation report is not an administrative ruling, a patentee or an interested party cannot apply for administrative reconsideration and cannot institute administrative litigation over a patent evaluation report.
Article 56.1 of the Detailed Regulations for the Implementation of the P.R.C. Patent Law
After the decision to grant a utility model or a design patent is issued, the patentee or any interested party referred to in Article 60 of the Patent Law may ask the patent administration department under the State Council to prepare an evaluation report for the patent.
Article 57 of the Detailed Regulations for the Implementation of the P.R.C. Patent Law
……Any entity or individual may review or copy a patent evaluation report.
Article 1.2 of the Several Provisions of the Supreme People’s Court on the Application of the Law Concerning Temporary Restraining Order Before a Patent Infringement Trial
The interested parties that may file such a request include the licensees of patent licensing contracts and the legitimate inheritors of patent property rights. Among licensees of patent licensing contracts, the licensee of a sole licensing contract can file a separate request with the People's Court. The licensee of an exclusive license contract can file a request if the patentee declines to do so.
Article 57.2 of the P.R.C. Patent Law (2000)
Where an infringement dispute involves a utility model patent, the People's Court or the patent administration authority may require the patentee to furnish a search report prepared by the patent administration department under the State Council.