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Who can request the correction of the patent right assessment report ?
Time:2021-07-14

I was recently "refresh" by my WeChat Moment, regarding to the new section of Article 66 of the Patent Law (as Amended 2020) which came into effect on June 1, 2021, that Patentee, interested parties or accused infringer may also issue an patent right assessment report on their own initiative. The clause has been stipulated that in addition to the patentee and interested parties, the accused infringer can also request the CNIPA to issue a patent right assessment report. However, who can ask for a correction of the patent right assessment report?

 

According to the current Patent Examination Guidelines, correction procedures can be initiated in two ways, one is that the department who makes the patent right assessment report initiates it by itself, the other is that the applicant to request initiation. That is to say, except for the CNIPA, only the person requesting the patent right assessment report can make a request for correction of the patent right assessment report. Thus, for the patent right assessment report requested by the accused infringer, if it contains some negative content, such as lack of inventiveness or other defects, which causes the instability of the patent right, as the patentee of this patent can not make a request for correction, although it will not lead to direct loss in patent infringement disputes  field by patentee and interested parties, it will also put the patentee and interested parties into a disadvantageous situation, for example, the court should suspend the civil proceedings according to law when the accused infringer makes a request for invalidation of the patent involved in the case during the defense period.

 

So how can the patentee avoid the above situation? If the patentee and the interested party have issued the patent right assessment report for the patent involved before filing the civil lawsuit, they don't have to worry about it. For those patentees and interested parties who have not issued a patent right assessment report on the patent involved at the time of filing a civil lawsuit, the current Rules for the Implementation of the Patent Law and Patent Examination Guidelines have actually provided the solutions.

 

Article 57 of the Rules for the Implementation of the Patent Law stipulates that where two or more persons request a patent right assessment report in respect of the same patent for utility model or design, the patent administration department of the State Council shall make one patent right assessment report only. The Patent Examination Guidelines stipulates that, prior to the issuance of a patent right assessment report, if more than one applicant separately requests a patent right assessment report for the same patent for utility model or design, the CNIPA shall accept the request, but only one patent right assessment report shall be issued.

 

According to the above provisions, I believe that in order to enable the patentee and interested parties to have the right to make a request for correction of the negative assessment report, the patentee and interested parties should monitor the information of the intermediate documents of the patent involved after filing a civil lawsuit, if it is found that the accused infringer has requested the CNIPA to issue a patent right assessment report on the patent involved, and the patent right evaluation report has not yet been made, then the patentee and interested parties should also immediately submit a request to CNIPA to issue a patent right assessment report on the patent involved in the case, so as to make themselves one of the requesters. The patentee and interested parties have the qualification to make a request for correction against the negative patent evaluation report according to the relevant provisions of the current Patent Examination Guidelines, instead of being at a loss.

 

Of course, the current Rules for the Implementation of the Patent Law and Patent Examination Guidelines are both carrying on the matching modification for the Patent Law (as Amended 2020). I look forward to the revised Patent Examination Guidelines gives the patentee (don’t mention the interested party for now) the right to request correction for the negative assessment report when the patent right assessment report issued by the accused infringer, rather than taking too much effort as mentioned above, let's wait and see if we can fulfill this wish!