In intellectual property agency practice, patent holders often entrust our law firm to enforce their authorized utility model and design patents in China to combat infringement by unauthorized parties. However, some clients, especially foreign patent holders, are puzzled by a particular requirement: why is it necessary to provide a Patent Right Evaluation Report for enforcement actions, given that these patents have already been granted by the China National Intellectual Property Administration (CNIPA)? Why can’t they be used directly for rights protection?

Let us first examine the regulations of Chinese e-commerce platforms regarding the use of utility model and design patents for infringement complaints. For example, on JD.com, when filing a complaint against others for patent infringement through the JD Intellectual Property Protection Platform, relevant documents, including proof of ownership, must be uploaded. When using a utility model or design patent as the basis for the complaint, the platform explicitly requires the submission of a Patent Right Evaluation Report as a mandatory supporting document. Similarly, the TaoTian Intellectual Property Protection Platform, shared across various e-commerce websites under Alibaba Group, specifies that for proof of ownership in patent infringement complaints: "Given that design patents and utility model patents are granted after only a formal examination and may lack stability, if your design patent or utility model patent was applied for on or after January 1, 2010, you need to obtain a Patent Right Evaluation Report, and the report must conclude positively."  Other major domestic e-commerce platforms, such as Pinduoduo, also have similar requirements mandating the submission of a Patent Right Evaluation Report for utility model and design patents.

Secondly, regarding intellectual property protection through customs recordation, Article 7 of the Implementation Measures of the Regulations on Customs Protection of Intellectual Property Rights of the People's Republic of China clearly stipulates that when applying for the recordation of a utility model patent or design patent, a Patent Right Evaluation Report issued by the patent administrative department under the State Council must be submitted. On the intellectual property protection recordation webpage of the General Administration of Customs, it is also explicitly stated that the Patent Right Evaluation Report for utility model or design patents is a necessary document for the application. Moreover, in the practical operations of customs recordation, if the applicant submits a Patent Right Evaluation Report with a negative conclusion—for example, where the claims of the utility model patent are wholly or partially found not to comply with the authorization requirements under the Patent Law—the corresponding customs recordation application will not be approved. This means the patent holder will be unable to enforce patent protection through customs recordation.

Next, let us examine the regulations for filing complaints of patent infringement involving utility model or design patents with administrative authorities. Article 11 of the Administrative Measures for Patent Enforcement formulated by the National Intellectual Property Administration stipulates:  "A party requesting the department responsible for patent affairs to handle a patent infringement dispute shall provide valid proof of patent rights, such as a copy of the patent register, a patent certificate, and a receipt for the annual patent fee paid for the current year. For patent infringement disputes involving utility model or design patents, the department responsible for patent affairs may require the requesting party to submit a Patent Right Evaluation Report issued by the National Intellectual Property Administration." When local intellectual property offices or market supervision administrations accept such administrative requests to handle patent infringement, they generally require the requesting party to provide a Patent Right Evaluation Report for utility model or design patents. Moreover, the conclusions in the report must not indicate that all claims or the entire design fail to meet the authorization requirements under the Patent Law, as such negative conclusions would hinder the administrative processing of the infringement complaint.

Finally, let us consider the situation where a patent holder seeks to enforce a utility model or design patent through judicial proceedings. Article 66, paragraph 2 of the Chinese Patent Law provides:  "In patent infringement disputes involving utility model or design patents, the People's Court or the department responsible for patent affairs may require the patent holder or an interested party to submit a Patent Right Evaluation Report issued by the patent administrative department under the State Council after the relevant utility model or design patent has been searched, analyzed, or evaluated, as evidence for hearing or handling the patent infringement dispute. The patent holder, interested party, or accused infringer may also voluntarily submit a Patent Right Evaluation Report." Although patent holders or interested parties need only submit materials that comply with the provisions of Article 122 of the Civil Procedure Law for the court to accept the case, providing a Patent Right Evaluation Report is not a mandatory condition for case acceptance. However, during subsequent court proceedings, the presence or absence of a Patent Right Evaluation Report can significantly impact both the procedural and substantive aspects of the infringement litigation. For instance, if the plaintiff (the patent holder) provides a positive Patent Right Evaluation Report, the court may choose not to suspend the trial even if the defendant files an invalidation request against the involved utility model or design patent during the defense period. Conversely, in actual judicial cases of patent infringement, there have been instances where the court dismissed the plaintiff’s lawsuit due to the lack of a Patent Right Evaluation Report.[1]

From the requirements for enforcing utility model or design patents through various channels, it can be observed that utility model and design patents in China are granted without substantive examination by the Patent Office. This creates a certain degree of instability in their patent rights. When a patent holder intends to enforce a utility model or design patent, e-commerce platforms, administrative authorities, customs offices, and courts may all require the submission of a Patent Right Evaluation Report for the relevant patent. Without such a report, infringement complaints on e-commerce platforms, requests to administrative authorities for infringement handling, customs recordation applications, or patent infringement lawsuits in court may not be accepted. Therefore, it is strongly recommended that patent holders prepare a Patent Right Evaluation Report in advance when planning to enforce a utility model or design patent. Considering that a patent holder can only request the National Intellectual Property Administration (CNIPA) to issue a Patent Right Evaluation Report once for a specific utility model or design patent, and the report’s conclusion may be either positive or negative—accessible for public inspection—a negative report could severely hinder future enforcement actions.  How can this situation be handled effectively?

First, before applying to the National Intellectual Property Administration (CNIPA) for a Patent Right Evaluation Report, it is recommended that the patent holder conduct a self-search or engage a professional law firm to investigate whether there are any prior art or prior designs that could significantly affect the stability of the utility model or design patent rights. Only after confirming that such prior art or designs do not exist should the patent holder submit a request to the CNIPA for the issuance of a  Patent Right Evaluation Report.

Second, if the issued Patent Right Evaluation Report contains a negative conclusion—particularly if all claims of the utility model are found to be invalid—the patent holder should verify whether the report contains errors. If errors are identified, the patent holder can request the CNIPA to correct them and issue a revised, positive Patent Right Evaluation Report.

Only when a positive Patent Right Evaluation Report is obtained—indicating that at least some claims of the utility model or at least one set of design claims comply with the authorization requirements under the Patent Law—should the patent holder proceed to enforce the utility model or design patent. This approach minimizes the risk of facing rejection of infringement complaints or mediation requests by e-commerce platforms or administrative enforcement agencies, denial of customs recordation for patent protection, or dismissal of patent infringement lawsuits by courts due to the absence of a valid Patent Right Evaluation Report.

[1] Can the Court Dismiss a Lawsuit if the Plaintiff Fails to Provide a Patent Right Evaluation Report?
Kanglegal WeChat Official Account, October 27, 2023.