By Linna Song
In a significant ruling issued in 2024 ((2024) Supreme People's Court Civil Retrial No. 244), the Supreme People’s Court of China clarified the role and legal effect of patent evaluation reports in infringement litigation involving utility models and design patents. This decision addresses a common but controversial practice in patent enforcement, treating evaluation reports as decisive in determining patent validity and the right to sue.
Background of the Case
A machinery company (Plaintiff) filed a patent infringement lawsuit based on a utility model patent. The defendant raised a prior art defense, and in response, submitted a patent evaluation report issued by the China National Intellectual Property Administration (CNIPA), which concluded that the patent lacked inventiveness and did not meet the legal conditions for patent grant.
The first-instance court dismissed the infringement claim based on the defendant’s prior art defense.
The second-instance court went further, relying heavily on the negative findings of the patent evaluation report to conclude that:
The patent was unstable in validity;
The plaintiff lacked the right to sue;
The case should be dismissed entirely;
The plaintiff’s actions constituted an abuse of rights, especially since it submitted the unfavorable evaluation report itself.
Supreme Court Ruling: Evaluation Reports Are Not Binding on Patent Validity
On retrial, the Supreme People’s Court overturned the second-instance decision, stating that
Patent evaluation reports are not administrative decisions. They are technical opinions issued by CNIPA upon request by a party, meant to serve as reference in infringement disputes. They do not have binding legal effect on patent validity.
Key Clarifications:
1. Evaluation reports are evidentiary tools, not final determinations. They assist courts in evaluating whether a patent is likely to meet the standards of novelty and inventiveness. But they do not replace formal invalidation proceedings before CNIPA.
2. A patent remains presumed valid unless it has been officially declared invalid through CNIPA’s invalidation procedure, and the decision has taken legal effect. Patent certificates, authorization texts, annuity payment receipts, and other relevant documents are sufficient to prove that the rights are in a legally valid state.
3. A plaintiff with a valid registration and payment of annuities retains the right to sue, regardless of whether the evaluation report questions inventiveness.
4. Dismissal based solely on a negative evaluation report is inappropriate if no invalidation ruling exists and the plaintiff holds a valid patent certificate.
5. Abuse of rights must be assessed cautiously.
6. Submitting an unfavorable evaluation report does not automatically imply bad faith or abuse of litigation rights.
7. The court emphasized adherence to the principle of good faith, but not at the cost of depriving patent holders of legitimate procedural rights.
Legal and Practical Implications
1. Evaluation Reports Are Relevant Evidence, Not Decisive Authority
Chinese courts frequently request or admit patent evaluation reports in utility model or design patent infringement cases. This decision reinforces that such reports should not be treated as conclusive on validity, especially when:
The report is negative;
No invalidation proceeding has been initiated or concluded;
The patentee possesses valid documentation (e.g. patent certificate, annuity payment records).
2. Misuse of Reports as a Shortcut to Avoid Full Adjudication Is Incorrect
Prior to this ruling, some courts would dismiss a case outright if the evaluation report was negative. The Supreme Court has now clarified that this approach wrongly deprives patentees of access to the courts, especially where no formal invalidation has occurred.
3. Burden of Proof Remains Balanced
The defendant can use a negative report to support a prior art defense, but it is not enough to deny the plaintiff standing or the right to a hearing on infringement issues. Validity challenges should be routed through proper administrative invalidation procedures.
4. Good Faith Is Still Required but Should Not Be Overextended
While the court criticized the plaintiff for submitting its own unfavorable evaluation without pursuing correction or invalidation of the report, it ultimately held that this did not justify dismissing the case or assuming abuse of rights in the absence of bad faith.
Conclusion
The Supreme People’s Court’s retrial decision in this case restores clarity to the limited legal weight of patent evaluation reports in China’s patent litigation framework. While these reports remain useful tools in assessing patent quality, especially for utility models, they cannot replace formal invalidation proceedings, nor can they be used alone to deny patentees their right to seek judicial protection.
For foreign and domestic rights holders alike, the message is clear: Hold a valid patent? You can sue, even if the evaluation report raises doubts.
However, patent owners are advised to:
Review evaluation reports carefully;
Consider initiating correction or re-examination procedures if the report is negative;
Avoid submitting damaging reports in court without strategic justification.
Need help evaluating a utility model before enforcement or interpreting a patent evaluation report in litigation?
Allasya Law & IP is here to assist with strategic legal guidance and CNIPA proceedings.
Cover photo by Possessed Photography on Unsplash