Understanding Patent Evaluation Reports: A Crucial Tool for Patent Owners in China
An in-depth look at the Patent Evaluation Report (PER) system in China, its applications, and the critical considerations for patent owners, parties of interest, and accused infringers.
With the surge in utility model and design patent applications in China, the role of Patent Evaluation Reports (PER) has become increasingly significant. This article explores the complexities of requesting and using PERs, highlighting the benefits and potential pitfalls for patent owners, and offering insights into the legal framework governing this essential tool.
Table of Contents
- The Rising Trend in Patent Filings
- The Double-Edged Sword of PER
- Who Can Request a PER?
- The Controversy Surrounding Accused Infringers
- Strategic Considerations for Patent Owners
The Rising Trend in Patent Filings
China’s recent integration into the WIPO Hague Industrial Design system and the opening of gates for partial designs have led to a noticeable increase in design patent filings. Utility model filings have also risen due to their higher grant rate, faster grant speed, and lower inventive step requirements.
The Double-Edged Sword of PER
While PER can be a valuable asset for enforcing utility model or design patents, it also carries risks. A positive PER result can bolster the patent owner’s confidence in enforcement proceedings, but a negative result can render the patent unenforceable. The irreversible nature of PER results, coupled with their immediate public availability, makes the decision to request a PER a significant one.
Who Can Request a PER?
According to the current patent law and draft examination guideline (2022), the following entities can request a PER:
- Patent owners
- Parties of interest
- Accused infringers
The draft guideline provides further clarification on these categories, including the rights of co-owners, licensees, and the controversial definition of accused infringers.
The Controversy Surrounding Accused Infringers
The term “accused infringers” has sparked debate in China. While the draft guideline interprets it broadly, the China National Intellectual Property Administration (CNIPA) adopts a more restrictive view, considering only actual accused infringers eligible for requesting PER. This discrepancy has led to concerns about fairness and potential abuse of patent rights.
Strategic Considerations for Patent Owners
Patent owners must weigh the pros and cons of requesting a PER carefully. The CNIPA’s current interpretation allows for strategic use of cease and desist letters without requesting a PER, potentially placing burdens on potential infringers. Some argue that this approach may be unfair and call for a more balanced interpretation in line with the 2022 version of the patent examination guideline.
The Patent Evaluation Report system in China is a complex and multifaceted tool that requires careful consideration by patent owners, parties of interest, and accused infringers. The decision to request a PER should not be taken lightly, as it carries both opportunities and risks. As the legal landscape continues to evolve, staying informed and seeking professional, experienced legal guidance is essential for navigating the intricacies of patent evaluation and enforcement in China.
Discuss Your Patent Needs with a Professional: Navigating the complexities of patent evaluation reports requires careful consideration and expertise. Speak with our knowledgeable and responsive patent attorneys to understand how these regulations may impact your intellectual property strategy. We can offer comprehensive protection for your business, regardless of where it is located. Schedule a consultation.