Highlight: Introducing what kind of role does the assessment report play in utility model patent litigation, and also we will analyze the characteristics of it.
As patent lawyers, we’re often consulted by clients that what measures could be taken to against the infringement on their patent? The answer from us is that the novelty retrieval report or patent assessment report is demanded before the utility models suits, depending on the application date. (For those utility models applied before 1st Oct. 2009, the novelty retrieval report shall be applied, while those applied after that, the assessment report shall be applied accompanied, and we will discuss the differences between the reports in other essays on the website).
That’s because any administrative granted patent shall be novel, creative and practical, however, the preliminary examination on the utility model are only the formal examination, by which the applied utility models will be granted unless there are practical defects. For this reason, not all the granted utility models are novel, creative and practical, and it’s less stable in patent right than invention.
Therefore, when the utility model owner decides to initiate the litigation against infringement, the effectiveness of his/her utility models shall be determined by the assessment system. And the following is the introduction on the assessment system from Bridge IP commentary:
I. The function of the assessment report
By relevant laws and regulations in China, when initiating suit, the utility model owner shall first apply to the patent administration for the patent assessment, which normally could be completed by the administration in 2 months.
The report will assess the granted utility models from different aspects for the determination of the legal character of the patent as well as the any other situations which may influence the effect of the utility models, such as no support on the demands from the written description, no full disclosure of the description, unclear demanded protection scope, etc. And the utility model owner may make decide whether to start the litigation basing on the report, which could also be the solid evidence to the effectiveness of the utility models in the charge.
In conclusion, the main function of the assessment report is: 1. To help to fix the effectiveness of patent right for the legal owner; 2. To examine the right defect in early stage for the avoidance of the prolonged suits.
II. The characteristics of the assessment report system
1. Is it the necessary document in the lawsuits related?
By the Article 8 of the Several Provisions on the Law Application in the Hearing of Patent Cases by Supreme People’s Court, the plaintiff in the case of the utility model infringement shall present the retrieval report issued by the patent administration of the State Council in litigation (the retrieval report was altered to the patent assessment report after the amendment on the Patent Law in 2009).
In practices, for the drafting of the assessment report may take a long period, the legal owner may suffer losses shall he/she halted the litigation waiting for the final assessment report. Therefore, it’s supplemented by the Supreme People’s Court that the people’s court shall file the case conforming to the Article 108 of the Civil Litigation Procedure Law. But for the situation when the plaintiff refuses to present the retrieval report and the defendant claims the invalidity of the utility models in the reply period, the people’s court shall abate the lawsuit unless there are other legal situations to continue the hearing.
Basing on the above regulations and specifications, the legal owner may also start the lawsuit even there has issued no assessment report, which may be presented during the hearing as the evidence to the effectiveness of the patent right, otherwise the litigation could be abated. Therefore, the assessment report is necessary in practices though it’s not in procedure.
2. The regulations on the re-prodction of the assessment report
Is the legal owner entitled to claim the reproduction of the assessment report when the report is unfavorable to the legal owner? In the latest Examination Guidance of 2010, before the completion of the assessment report, when there are more than one person claim the right of the same utility model or the design, the State Intellectual Property Office shall handle the claim in one case and make one assessment report; for those claims made after the assessment report, the State Intellectual Property Office will make no other new assessment reports. For any mistakes, the legal owner may apply for the correction.
Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
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