In the field of intellectual property agency work, it is not uncommon for patent holders, especially foreign patent holders, to be puzzled by a seemingly counterintuitive requirement. Despite having obtained authorization for their utility model patents or design patents from the Chinese Patent Office, they are often required to provide a Patent Right Evaluation Report when seeking to enforce these patents against infringers. Why is this additional step necessary?

    Let's first examine the regulations regarding the use of utility model patents or design patents for infringement complaints on e-commerce platforms in China. For example, on JD.com's Intellectual Property Protection Platform, when initiating a complaint for patent infringement, the platform explicitly requires the submission of a Patent Right Evaluation Report as part of the proof of ownership. Similarly, on Alibaba Group's Taobao and Tmall Intellectual Property Protection Platform, it is clearly stated that: "Given that utility model patents and design patents are granted after a formal examination and may be unstable, if your utility model or design patent was applied for on or after January 1, 2010, a Patent Right Evaluation Report with a positive conclusion is required." Other major e-commerce platforms in China, such as Pinduoduo, have similar requirements for the submission of a Patent Right Evaluation Report.

    Next, let's consider the customs protection of intellectual property rights. According to Article 7 of the Implementation Measures for the Protection of Intellectual Property Rights by the Customs of the People's Republic of China, when applying for the recordation of a utility model patent or a design patent, a Patent Right Evaluation Report issued by China National Intellectual Property Administration(CNIPA) is required. On the Customs General Administration's website for intellectual property rights recordation, it is also explicitly noted that a Patent Right Evaluation Report is a necessary document for the recordation of utility model patents or design patents. In practice, if the evaluation report concludes that the claims of a utility model patent do not meet the requirements of the Patent Law of China, the application for customs recordation will not be approved, and the patent holder will be unable to obtain customs protection for the patent.

    When it comes to administrative complaints for patent infringement, according to Article 11 of the Patent Administrative Law Enforcement Measures issued by CNIPA, "When requesting the Administrative authority for patent affairs to handle a patent infringement dispute, the requester shall provide proof of the validity of the patent right, such as a copy of the patent register or the patent certificate and a receipt for the payment of the annual patent fee for the current year. In cases involving utility model or design patents, the Administrative authority for patent affairs may require the requester to submit a Patent Right Evaluation Report issued by China National Intellectual Property Administration." Generally, local intellectual property bureaus or market supervision bureaus will require the submission of a Patent Right Evaluation Report for utility model or design patents, and the report must not contain a negative conclusion that all claims or all designs do not meet the authorization requirements of the Patent Law of China.

    Lastly, let's take a look at the situation when a patent holder seeks to enforce utility model or design patent rights through judicial proceedings by filing a lawsuit. According to Article 66, Paragraph 2 of the Patent Law of China, "In patent infringement disputes involving utility model patents or design patents, the people's courts or the Administrative authority for patent affairs may require the patent holder or interested parties to submit a Patent Right Evaluation Report issued by CNIPA, which has conducted a search, analysis, or evaluation of the relevant utility model or design patent, as evidence for the trial or handling of the patent infringement dispute. The patent holder, interested parties, or the alleged infringer may also submit a Patent Right Evaluation Report voluntarily." Although the submission of a Patent Right Evaluation Report is not a prerequisite for the acceptance of a case by the people's court, as long as the materials submitted by the plaintiff meet the requirements of Article 122 of the Civil Procedure Law of China, the presence or absence of a Patent Right Evaluation Report can have a significant impact on the procedural and substantive aspects of the infringement litigation. For example, if the plaintiff provides a positive Patent Right Evaluation Report, even if the defendant files an invalidation request against the utility model or design patent within the defense period, the court may proceed with the trial without suspending the case. On the other hand, there have been cases in judicial practice where the court dismissed the plaintiff's lawsuit due to the absence of a Patent Right Evaluation Report.

    From the above analysis of the requirements for enforcing utility model patents or design patents through different channels, it is clear that due to the lack of substantive examination during the authorization process, utility model and design patents in China have a certain degree of instability. When a patent holder seeks to enforce these patents, e-commerce platforms, administrative authorities, customs, and courts may all require the submission of a Patent Right Evaluation Report. Failure to provide a Patent Right Evaluation Report may result in the non-acceptance of infringement complaints on e-commerce platforms, the rejection of administrative requests for handling infringement, the denial of customs recordation applications, or the dismissal of patent infringement lawsuits by the people's court. Therefore, it is strongly recommended that patent holders prepare a Patent Right Evaluation Report before asserting their utility model patents or design patents.

    Considering that a patent holder can only request the issuance of a Patent Right Evaluation Report once from CNIPA for a specific utility model patent or design patent, and that the conclusion of the report can be either positive or negative, and that the report is accessible to the public, what should a patent holder do if they receive a negative conclusion? First, before applying to China National Intellectual Property Administration for a Patent Right Evaluation Report, it is advisable for the patent holder to conduct their own search or commission a professional law firm to conduct a search to determine whether there are any prior art or prior designs that could significantly affect the stability of the utility model or design patent. Only after confirming the absence of such prior art or designs should the patent holder apply for the Patent Right Evaluation Report.

    Second, if the received Patent Right Evaluation Report has a negative conclusion, especially if all claims of a utility model patent are negative, the patent holder should verify whether there are any errors in the report. If errors are found, the patent holder may request CNIPA to correct them and issue a corrected Patent Right Evaluation Report with a positive conclusion.

    Only when a positive Patent Right Evaluation Report is obtained, i.e., the report concludes that at least some claims of the utility model patent or at least one set of designs meet the authorization requirements of the Patent Law of China, should the patent holder proceed with the enforcement of the utility model patent or design patent. This approach can help avoid the situation where e-commerce platforms, patent administrative authorities, or customs do not accept complaints or recordation applications, or where a patent infringement lawsuit is dismissed by the court due to the lack of a Patent Right Evaluation Report.