China: Patent Evaluation Report And Legitimacy Of Patent Right

Last Updated: 10 November 2016
Article by Xiangong Meng

As provided in the current Chinese Patent Law, a patentee of a utility model patent or a design patent usually is required to furnish a patent evaluation report to the relevant authority, i.e. a court of law or an administrative office, to assert its patent right. The relevant provisions were included in the current Chinese Patent Law for various reasons, among which the absence of substantive examination on utility model and design applications and the potential abuse of these unexamined patented rights.

A patent evaluation report shall be made with respect to a utility model patent or design patent by the State Intellectual Property Office of China (hereinafter referred to as "SIPO") at the request of the patentee or the interested party, by conducting a search with respect to the utility model patent or design patent, and analyzing and evaluating whether the patent is in conformity with the granting conditions provided in the Chinese Patent Law and its Implementing Regulations. A patent evaluation report is a relatively authoritative evaluation report of patent quality from the authorities. In disputes over patent infringement in mainland China, before instituting litigation for the purpose of protecting rights, the patentee often requests the SIPO to make a patent evaluation report with respect to the relevant patent right he/it owns, in order to evaluate in advance the stability of the patent right. Besides, when the People's Court or the administrative authority for patent affairs judges and deals with disputes over patent infringement, where the infringing party files a request for invalidation of the patent concerned, the People's Court or the administrative authority for patent affairs may determine whether it is necessary to suspend relevant procedures based on the patent evaluation report. A patent evaluation report is, in substance, a form of evidence or a certifying document, and can be used as preliminary evidence for the stability of a patent right, and is not an administrative decision or a valid legal document.

Recently, regarding the request for invalidation of the utility model patent No. ZL201420786681.4 (hereinafter referred to as "patent concerned") entitled "Transmission Device of Roller Type Dust Adhering Machine", and owned by Shenzhen Fangtai Equipment Technology Co., Ltd. (hereinafter referred to as "Fangtai Company"), the Patent Reexamination Board made an examination decision on request for invalidation to maintain the validity of the patent right concerned. In this invalidation case, the difficulty for the patentee lies in that, before the request for invalidation of the patent concerned was filed, a patent evaluation report with respect thereto had been made by the SIPO, in which evaluation report the examiner, based on the evidence obtained by search, draws a conclusion that all of the claims of the patent concerned possess no inventiveness, and that, after the patent evaluation report was reviewed, said conclusion had been upheld. Under the circumstances, once the petitioner for invalidation requests to invalidate the whole of the patent concerned based on the evidence and the evaluation opinion set forth in the evaluation report, it would be quite difficult for the patentee to obtain the result of the validity the patent right of the patent concerned being maintained.

The patent in question, a utility model patent granted on May 6, 2015, includes 10 claims, of which the independent claim 1 is as below: "A transmission device of a roller type dust adhering machine, characterized by comprising a cleaning roller and a driving shaft, the cleaning roller and the driving shaft being connected via a coupling."

Fangtai Company, after putting the patented products on the market, found that a company in Shenzhen was suspected of infringing its patent right, and then instituted civil litigation before the People's Court to protect its patent right. After the litigation was instituted, the defendant, the above-mentioned company in Shenzhen, filed a request for invalidation of the patent concerned, attempting to suspend the litigation and invalidate this patent so as to avoid the accusation of infringement. After the defendant filed the request for invalidation of the patent concerned, Fangtai Company as the patentee made argument against the invalidation.

The conclusion set forth in the evaluation report with respect to the patent concerned is that, claim 1 has the distinguishing technical feature of "the cleaning roller and the driving shaft being connected via a coupling" as compared with evidence 1, the means of achieving connection via a coupling belongs to common knowledge in the art, and thus it is obvious to those skilled in the art to combine the means of using a coupling with the evidence 1 and arrive at the technical solution claimed in claim 1, and hence claim 1 possesses no inventiveness. The petitioner has presented the same opinion in the request for invalidation.

In the situation as stated above, the patentee formulated a detailed responding strategy on the basis of conducting a careful analysis and search and grasping the prior arts in the technical field to which the patent concerned relates. The patentee has presented the following opinion: for the patent concerned, connecting the cleaning roller and the driving shaft that are separately provided via the coupling can achieve the technical effect of quickly detaching the cleaning roller from the dust adhering machine, while the cleaning roller disclosed in the evidence 1 is an integral shaft; although in the mechanical field a coupling is a connector commonly used between shafts or between a shaft and a rotating member, in the prior arts there is no motivation that would prompt a person skilled in the art to separate an integral shaft into two separate parts, i.e. a driving shaft and a cleaning roller, and then connect the two parts with a coupling, so as to solve the technical problem of detaching an integral cleaning roller in the form of a shaft being not easy.

After taking oral proceedings, the panel has accepted the opinion of the patentee, and hold that, no sufficient ground or corresponding evidence shows that solving the technical problem of detaching a cleaning roller from a dust adhering machine being not easy by using said distinguishing technical feature is conventional technical means or common knowledge in the art, and that by using this distinguishing technical feature, it is possible to conveniently detach the cleaning roller from the dust adhering machine, thereby improving the working efficiency and reducing the labor cost. Therefore, the panel has concluded that claim 1 possesses inventiveness over combination of the evidence 1 and common knowledge.

Accordingly, the Patent Reexamination Board has made the examination decision on request for invalidation as indicated above, in which the following decision points are set forth: if a technical solution claimed in a claim has a distinguishing technical feature over a prior art, and there is no motivation in the prior arts to use the distinguishing technical feature for solving the relevant technical problem while the distinguishing technical feature does not belong to common knowledge in the art, and moreover the distinguishing technical feature brings about a beneficial technical effect for the technical solution claimed in this claim, the technical solution claimed in this claim is inventive.

Due to the authority of the SIPO, a patent evaluation report made by the SIPO is usually used as evidence of the stability of the patent right of a patent involved in disputes over patent infringement; and, if the conclusion set forth in the patent evaluation report is that the patent does not meet the requirements for being granted a patent right, the patentee will tend to give up taking action to protect his/its patent right without careful analysis. However, in the invalidation case discussed above, in the situation where the patent concerned has been considered to lack inventiveness in the patent evaluation report, the patentee carefully analyzed the facts of the case, and on this basis, by determining the distinguishing technical feature starting from the closest prior art and then determining the corresponding technical problem actually solved, came to a conclusion that there was no relevant motivation in the prior arts, and finally acquired the result of the validity of the patent right being maintained. This indicates that, the stability of the patent concerned should be judged from the viewpoint of a person skilled in the art based on the reference evidence and pursuant to relevant provisions, and the legitimacy of the patent right of the patent concerned should not be simply denied based on the negative conclusion set forth in the relevant patent evaluation report.

This article was originally published in The Patent Lawyer Magazine of CTC Legal, July/August 2016 issue, Page 41-43.

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