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Patent Right Evaluation Report in China’s Patent System
China's Patent Law stipulates that where a patent infringement dispute involves a utility model patent or a design patent, the people's court or the relevant administrative department may require the patentee or the interested parties to submit the patent right evaluation report (or PRER for short) of the asserted patent, which is made by the CNIPA after searching, analyzing, and evaluating. The PRER could be used as evidence for the trial or dealing with patent infringement disputes. The alleged infringer may also voluntarily submit the PRER.
The interested parties refer to the licensee of the exclusive patent license contract and the licensee of the non-exclusive patent license contract to which the patentee has granted the right to sue.
In addition, if an open license statement is made for a utility model or design patent, a PRER shall be provided.
The CNIPA will make a PRER within 2 months after receiving the request. The PRER is not an administrative decision, and the parties cannot file an administrative reexamination or administrative lawsuit on it. Whether a patent right is valid can only be determined by the invalidation procedure.
For the same utility model or design patent, multiple requesters ask for a PRER, the CNIPA shall only issue one PRER.
Almost all the reasons that can be used to challenge the validity of utility model and design patents, such as whether the description is sufficiently disclosed, whether the claims are clear, whether the necessary technical features are lacking, and whether the amendment is beyond the scope, etc., can be included in the scope of the PRER, which is basically equivalent to conducting a substantive examination of the patent involved.
If the requester believes that there are errors in the PRER that need to be corrected, the requester may file a correction request within two months after receiving it. The correction procedure does not allow the requester to make any amendments to the patent document, not even the simple deletion and incorporation of claims.
After the PRER is made, any entity or individual may consult or copy it. The electronic file of the report can be inquired through the CNIPA's website.
The PRERs are required under different circumstances. For example, according to the implementation measures of the "Regulations on the Customs Protection of Intellectual Property Rights", the right holder of the utility model or the design should provide a PRER when making the customs recordal.
When the right holder applies to the patent administration department for handling a dispute over utility model and design patent infringement, that is, when requesting an administrative investigation, the patent administration department may also require the right holder to provide a PRER according to the Measures for Patent Administrative Enforcement.
In addition, if the right holder complains of utility model or design patent infringement through e-commerce platforms such as Alibaba, Tmall, JD.com, etc., the e-commerce platform usually takes the PRER as a necessary condition for accepting the complaint.
In judicial practice, the PRER is not a necessary condition for the acceptance of infringement litigation cases. However, according to the relevant judicial interpretation, if the defendant files a patent invalidation request within the period of defense, the people's court shall stay the lawsuit, but if the PRER submitted by the plaintiff does not find any prior arts that lead to the loss of novelty and inventiveness of the asserted patent, the litigation may not stay.
Moreover, the judge can also understand the state of the prior art of the utility model involved or the current design state of the design patent involved based on the PRER , which helps to make a reasonable determination of infringement.
In addition, for invalidation cases in post-grant proceedings, the PRER can be provided as a reference to facilitate a favorable decision by the collegiate panel.
