Written by: Haoyu (Elliot) ZHOU

 

Among three types of patents in China, only invention patents will be substantively examined by the China National Intellectual Property Administration (CNIPA), whereas the patentability of utility models and design patents will not be examined in details. The “lack of substantive examination” in utility model and design patent prosecution often results in granted patents which are not stable enough for patent enforcement at a court. 

If a patent owner wants to enforce a Chinese utility model or a design patent via a court proceeding, the court will normally ask the patent owner to provide a Patent Evaluation Report, as issued by the CNIPA, to show that the utility model or the design patent are actually novel and inventive. This is because the court is also suspicious of the patentability of utility models and design patents, which were never examined in detail. 

Patent Evaluation Reports (PERs) are like search reports issued by the CNIPA after the Chinese utility model or design patents are granted. PER will be issued only upon a written request filed to the CNIPA, and it will be issued in 1-2 months after filing the request. Under the current Chinese Patent Law, PER can be requested by not just patent owners, but also parties of interest, such as accused infringers or patent licensees, given that these entities can provide evidence to support that they are legitimate parties of interest. The results of PER could be positive, negative or partially positive. Once a PER is issued, it will be laid open to the public, so everyone will be able to know the CNIPA’s opinion on the patentability of the utility models or the design patents. 

In the past, PER was commonly treated as a necessary document for the start of the utility model or design patent infringement litigation at a court. But, this perception was changed after the ruling in a design infringement re-trial case by the Supreme People’s Court (SPC) of China in 2020. Specifically, in this case (Zui Gao Fa Min Zai 383, 2020), the SPC ruled that PER is just a piece of evidence, and should not be considered as an indispensable document that must be submitted in a design infringement lawsuit. A court should not dismiss a lawsuit simply because the patent owner fails to submit a PER. Additionally, the SPC held that if a patent owner can submit other evidence to show that the design in question is patentable (for example, in cases where the CNIPA maintained the validity of the design patent after undergoing a patent invalidation proceeding), such evidence could be used as an alternative to the PER. 

This ruling clarifies that PER is no longer deemed as an essential document for utility model or design patent infringement proceedings. However, according to our experience, if the court explicitly requests the patent owner to provide a PER, and if the patent owner refuses to provide the PER or any other evidence that supports the patentability of the utility model or design patents, the court will likely wait and see if the defendant (namely, accused infringer) will proceed to invalidate the patent at the CNIPA or submit any prior art defense argumentations. The court may even stay the proceeding and wait for the patent owner to provide the PER or similar supporting evidence. This indicates that, although PER is not a must according to the SPC ruling, the accused infringer will actually gain the initiative if the plaintiff fails to provide the PER. 

Thus, albeit the ruling above, PER appears to be still a highly recommended document and should be obtained before lodging a patent infringement lawsuit. A positive PER could certainly increase the confidence of the court regarding the patentability of the utility models or designs, and could help the court to focus on the trial of patent infringement itself but not the validity/invalidity of the patent. 

On the other hand, if patent owners are worried that a negative PER will be received, they could conduct a patent stability search on their own before officially requesting a PER from the CNIPA. Alternatively or additionally, if patent owners are not confident about the stability of the utility models or design patents and do not want to obtain the PER, they can use unofficial ways to enforce the patent, like cease and desist letters or informal negotiation with the potential infringers, through which PER is usually not required. 

If you have any questions about this topic, or if you want to know more about Chinese intellectual property practice, please feel free to contact Mr. Elliot Haoyu Zhou at patent@foundin.cn