Frank Mu
The new Implementing Regulations of the Patent Law (hereinafter referred to as the "new Regulations") were promulgated on December 21, 2023, and were set to come into effect on January 20, 2024. The new Regulations had made some modifications to the patent evaluation report system from perspectives such as petitioners and times for filing the request, service and notification of the report, as well as correction of the report.
1. Evolution of the system
Given the arrangement that design patents and utility model patents are only subjected to formality examination and substantial examination is not necessary, their validity is more susceptible to questioning and challenges compared to invention patents. For the purpose of overcoming this defect, the Patent Law amended in 2000 introduced search report for utility model patents. The scope of evaluation was limited to novelty and inventiveness issues. The Patent Law amended in 2008 developed search report to patent evaluation report by expanding the scope of evaluation to all deficiencies not satisfying the requirements for granting a patent and extending the subject matter to design patents and utility model patents. Besides patentees and interested parties, the Patent Law amended in 2020 further listed alleged infringers as qualified petitioners for requesting for patent evaluation report.
2. Adjustments caused by adding alleged infringers as qualified petitioners for requesting for patent evaluation report
Compared with patentees or interested parties, conflict of interests is common between alleged infringers and patentees or interested parties, which will result in different attitudes on the conclusions and the reasons of a patent evaluation report. In case the request for patent evaluation report is filed by an alleged infringer, for the purpose of balancing the conflicting interests between alleged infringers and patentees or interested parties, Guideline for Patent Examination amended in 2023 make the following prescriptions where the request for patent evaluation report is filed by an alleged infringer:
Ø Alleged infringers include defendants in infringement lawsuits, respondents in administrative enforcement cases, recipients of cease & desist letters, or those accused of infringement and complained to e-commerce platforms. When an alleged infringer requests for a patent evaluation report, relevant documents proving his qualification shall be filed;
Ø When a patent evaluation report is completed, CNIPA will not only serve it to the alleged infringer but also to the patentee;
Ø In case the alleged infringer or the patentee believes there are some errors in a patent evaluation report, a request for correction can filed within two months from the date receiving a report.
3. Times for filing a request and deadline for completing a report
Prior to the new Regulations, requests for a patent evaluation report or search report shall be made after grant of relevant patent applications. The new Regulations set different times for filing a request according to the identities of the petitioner: for alleged infringers or interested parties, requests can only be filed after the grant of relevant patent applications; for patent applicants, requests can be filed at the time going through formalities of registration for an application to be granted.
The new Regulations also establish corresponding deadlines for completing a patent evaluation report: for those requests filed after the grant of relevant patents, the deadline for completing the report is within two months from the date filing the requests; for those requests filed at the time going through formalities of registration, the deadline for completed the report is within two months from the date of grant of relevant patents.
Given the above, it can be concluded that an applicant can file a request for patent evaluation report at the time going through formalities of registration for an application to be granted, which will facilitate the applicant to file two requests at same time without violating the current mechanism that a patent right for utility model or design needs not to undergo substantial examination, which is one of important features of a design patent or a utility model patent compared with an invention patent.
4. Issues yet to be clarified
According to the prescriptions of the Patent Law, the patent evaluation report is deemed as an evidence for handling patent infringement disputes. Thus conflict of interests between alleged infringers and patentees or interested parties will be inevitably embodied in different attitudes on the conclusion of patent evaluation report, that is, it can be expected that the disputes between alleged infringers and patentees or interested parties will be extended to the request and the correction of a patent evaluation report:
(1) Request for a patent evaluation report: pursuant to Rule 63.2 of the new regulations, if multiple requests are filed by different petitioners for a same patent, only one patent evaluation report will be made by China National Intellectual Property Administration (CNIPA), it is not explicitly stated how the official fee for one patent evaluation report should be allocated among the multiple petitioners. The identity of a petitioner for patent evaluation report is important for an alleged infringer, which is a prerequisite for his participation in subsequent procedures. In addition, the new Guideline for Patent Examination amended in 2023 only prescribes the obligation of CNIPA to notify the patentee when a patent evaluation report is completed, but no prescription is provided regarding whether CNIPA needs to notify the patentee when an alleged infringer files a request for patent evaluation report.
(2) Correction of patent evaluation report: if both alleged infringer and patentee believe that there are some errors for a patent evaluation report, thus two separate requests for correction basing on conflicting reasons are filed, in this scenario, two issues possibly arise: (a) before CNIPA issuing a notification of reviewing conclusion, whether CNIPA needs to respond to each reasons for correction, and if yes, should these responses be included in a same document or in separate documents? (b) Can CNIPA organize a hearing to hear the opinions of the alleged infringer and the patentee before issuing a notification of reviewing conclusion?
In summary, the new Regulations establish a framework for an improved patent evaluation report system. Nevertheless, certain issues remain to be clarified in practice, which are mainly caused by adding alleged infringers as petitioners for patent evaluation report.
Frank Mu
Frank Mu joined NTD in 2007 and stated his profession in intellectual property, specialized in handling tech-related IP disputes, including patent infringement, patent reexamination & invalidation, patent search & assessment, infringement investigation, IP due diligence, enforcement of IP rights at trade fairs, draft & review of contracts, technical secrets, license & management of IP rights, etc.
Mr. Mu has abundant experience in handling complex IP affairs related to materials, equipment manufacturing, medical instrument & equipment, textile, automotive, and other technologies. Mr. Mu has represented many well-known multinational and domestic corporations such as Nippon steel, Michelin, Dopont, Rimowa, Aetna Technology etc. and listed as the individual list of the World's Leading Patent Professionals 2022.
The Infringement Case of Patent entitled ‘Interlocking Intramedullary Nail’is recorded in the White Paper on The Judicial Protection of Intellectual Property Rights in Chinese Courts in 2021 issued by China Supreme Court. The case for Nippon steel vs. State Intellectual Property Office, Li Jianxin regarding patent invalidation dispute is selected as one of classic 50 IP cases in China in 2013. The case for Rimowa vs. Jiashan Keyue regarding patent infringement dispute is selected as one of top 10 cases by Zhejiang courts in 2019.
