Nowadays, China is famous for its large number of utility model patents and design patents. In the field of patent protection, utility model patents and design patents play a leading role in quantity. Due to utility model patents and design patents do not need substantive examination, how to evaluate their stability when patentee enforce their patent right? If the patents are obviously unstable, it will not only cause unnecessary interference to the holder of the party, but also cause a great waste of administrative and judicial resources. In the practice of patent protection, the administrative or judicial authorities may require the patentee or interested parties (patent exclusive licensors, etc.) to submit a patent evaluation report issued by National Intellectual Property Administration to preliminarily evaluate the stability of the utility model patents and design patents.
Although the patent evaluation report can be used as the preliminary evidence of whether the patent is stable, it does not have the legal effect to prove whether the patent is valid. That is to say, even if the patent evaluation report is negative, the validity of the patent cannot be denied. The validity of the patent is determined by the patent invalidation procedure. However, in the process of patent protection, the patent evaluation report is still of reference value to the administrative and judicial authorities and e-commerce platforms, and even is necessary.
Which patent protection scenarios need patent evaluation report?
l E-commerce platform infringement complaints
In the case that e-commerce has become an important channel for the sale of infringing products, infringement complaints on e-commerce platforms have become a low-cost and efficient means of protecting rights to stop infringement. When using utility model patents and design patents for patent protection on e-commerce platform, patent evaluation report is usually required. For example, when online patent infringement complaints are made on Taobao, Tmall, JD and Alibaba, if there is no invalid decision to prove the stability of the patent right and maintain the validity of the patent right, a positive (showing a stable patent right) patent evaluation report must be uploaded before the e-commerce platform can accept the infringement complaint.
l Customs record
Although invention patents, utility model patents and design patents can be recorded with China Customs, considering the visualization degree of infringement judgment, in practice, most of the patents recorded by China Customs are design patents. According to Regulations on Customs Protection of Intellectual Property Rights, when recording utility model patents and design patents with China Customs, besides the documents such as patent certificates and copies of patent register, positive patent evaluation reports are essential.
l Patent administrative complaints and patent infringement litigation
In the procedure of patent protection, although the positive patent evaluation report is not a necessary element for accepting a case by the courts or administrative authorities, if the administrative or judicial authorities require it, the patentee or interested party must submit it, otherwise it may lead to the suspension of the litigation or bear adverse consequences.
If patent protection is carried out through administrative channels, according to the provisions of Measures for Administrative Enforcement of Patent, “when requesting the administration to handle patent infringement disputes, ……if a patent infringement dispute involves utility model patent or design patent, the administration can require the applicant to submitted a patent evaluation report issued by National Intellectual Property Administration.” Although the provision does not require that the patent evaluation report must be submitted by the applicant, in practice, most of the local intellectual property offices still require a patent evaluation report.
When protecting patent through judicial channels, Certain Provisions of the Supreme People's Court on Issues Concerning Application of Law in Trying Cases Involving Patent Disputes has the following provisions on the patent evaluation report:
Article 8 “…… where a plaintiff files a patent infringement lawsuit against a utility model patent or a design patent whose application date is on or after October 1, 2009, the plaintiff may produce the patent evaluation report issued by the patent administrative department of the State Council. The competent people's court may, depending on the necessity of the trial of the cases, require the plaintiff to submit a search report or patent evaluation report, and may render a ruling to suspend litigation proceedings or a ruling that the plaintiff shall bear the possible adverse consequences if the plaintiff refuses to submit the same without justification.”
Article 9 “With regard to a case accepted by a people's court and involving a dispute over infringement of a patent right of a utility model or of an exterior design, where the defendant files a request for declaring the patent right invalid within the answer period, the people's court shall suspend the proceedings except as required by the following circumstances: (1) The search report or patent evaluation report produced by a plaintiff contains no cause that leads to the invalidation of utility model patents or design patents;……”
From the above provisions, we can see that the patent evaluation report which is beneficial to the patentee or interested party has played a positive role in initially proving the stability of the patent right and may also play a role in preventing infringement litigation cases from being suspended by the patent invalidation request filed by the defendant.
However, if the result of the patent evaluation report is unfavorable to the applicant, what adverse consequences will it lead to?
First of all, due to the e-commerce platform complaints and customs records request positive patent evaluation reports, if the patent evaluation report is negative, and the patent invalidation procedure cannot proves that the patent is stable, these two protection measures cannot be started.
Secondly, according to Guidelines for Patent Examination, the patent evaluation report can only be requested once. Although the negative report can be requested for correction, the possibility of reversing the conclusion of the report through the correction procedure is very limited since the "obvious" means fact finding or law application error which involves substantive problems.
Lastly, once the patents are protected through administrative or judicial channels, the patent evaluation report will be in the state of being known to the public and easily found by the other party, which increases the possibility of the other party filing patent invalidation to suspend the proceedings.
How to deal with the risk of possible negative patent evaluation report?
In order to avoid the above adverse consequences of the negative patent evaluation report, the patentee or interested party can entrust a professional patent agency or law firm to conduct retrieval and stability assessment before applying for the official patent evaluation report, and then consider applying the patent evaluation report of those patent with stable assessment.
In addition, even if the patent evaluation report is negative, it does not mean that the patent will be invalid. We should carefully analyze the reasons and evidence of the patent evaluation report, consider its impact on the validity of the patent, and make appropriate adjustment and response to the follow-up protection procedures.