No.:(2017) Jing Xing Zhong No. 167

Appellant (the Plaintiff in the Previous Instance): Party A

Appellee (the Defendant in the Previous Instance): State Intellectual Property Office (SIPO)

[Keywords] Utility model, Patent Evaluation Report, Specific Administrative Action

[Relevant Legal Rules] Article 61 of the Patent Law, Article 2 of the Administrative Reconsideration Law, Article 69 of Administrative Procedure Law

[Summary of the Case]

The Appellant applied for correcting the patent evaluation report of SIPO on the utility model ZL2013200877902. SIPO asserted that the original patent evaluation report on utility models was defective and had therefore partially corrected by issuing a new patent evaluation report in place of the original one.

Thereafter, the Appellant applied to SIPO once again for correction of the patent evaluation report. SIPO then issued a Special Letter for Examination Service in response, arguing that in accordance with Article 6.3, Chapter 10, Part 5 of the Guidelines for Patent Examination of 2010, usually only one request for correction of a patent evaluation report may be submitted, however, for the amended patent evaluation report issued by the review group after a supplementary search, the petitioner may once again submit a request for correction. As far as this case is concerned, the review group made some corrections to the patent evaluation report, but still used the same cited references that have been used in the original patent evaluation report, and no supplementary search was conducted. Therefore, this case does not fall with the foregoing circumstances referred to in the Guidelines for Patent Examination. In addition, the facts redetermined by the review group are common sense, and the conclusion that some claims are not inventive has not been changed in the corrected report. Therefore, SIPO insists on not conducting the second review.

The Appellant is dissatisfied with SIPO's Special Letter for Examination Service and applied for administrative reconsideration. SIPO made a Notice of Inadmissibility of Reconsideration Application with the reason that one of the prerequisites for accepting an application for administrative reconsideration is that there shall be a specific administrative action and the said Special Letter for Examination Service does not constitute any of the specific administrative actions specified in Article 2 of the Administrative Reconsideration Law of the People's Republic of China.

The Appellant is dissatisfied with the Notice and then filed an administrative lawsuit to Beijing Intellectual Property Court and Beijing High People's Court during the first instance proceedings and the second instance proceedings respectively.

[Focus of Dispute]

Does SIPO's making of the patent evaluation report constitutes a specific administrative action of an administrative organ, and does the Notice of Inadmissibility of Application made by SIPO have a legal basis?

[Court Opinions]

Patent evaluation reports may be used as a piece of evidence when utility model and design patentees seek to safeguard their rights but may not be used as the direct evidence for determining the validity of the patent rights, nor can they affect the validity of patent rights, so they cannot directly affect the rights and obligations of the patentees or stakeholders. Therefore, the patent evaluation reports are not administrative decisions, and SIPO's making patent evaluation reports does not constitute a specific administrative action. Accordingly, the Notice of Inadmissibility of Reconsideration Application from SIPO has a legal basis and should be supported.

[Final Judgment]

1. The Appellant's litigation claims are dismissed.

2. The legal costs are borne by the Appellant.

[Comments]

This case reminds us to have a good understanding of patent evaluation reports, in other words, the patent evaluation reports are merely evidence instead of administrative decisions. Therefore, patentees or stakeholders may not apply for administrative reconsideration on the reports.

In addition, if a request for correction of a patent evaluation report is submitted, it shall be fully represented to the maximum extent in the observations submitted because usually only one request for correction may be submitted.