Patent Evaluation Reports Are Evidence, Not Administrative Decisions

Case number: (2017) Jing Xing Zhong No. 167. Appellant and first-instance plaintiff: Party A. Appellee and first-instance defendant: SIPO.

Keywords: utility model; patent evaluation report; specific administrative act. Relevant provisions: Article 61 of the Patent Law, Article 2 of the Administrative Reconsideration Law and Article 69 of the Administrative Procedure Law.

Case Background

The appellant requested correction of SIPO’s evaluation report for utility model ZL2013200877902. SIPO acknowledged defects and issued a partially corrected report replacing the original.

The appellant requested a further correction. SIPO replied in an examination-service letter that section 6.3 of Chapter 10, Part V of the 2010 Guidelines generally permits only one correction request. A further request is possible where the review panel has issued an amended report following a supplementary search. Here, however, the panel had relied on the same references and conducted no supplementary search. The reconsidered facts were matters of common knowledge, and the corrected report retained the conclusion that some claims lacked inventiveness. SIPO therefore declined a second review.

The appellant sought administrative reconsideration of the letter. SIPO refused to accept the request because administrative reconsideration requires a specific administrative act, and the examination-service letter did not constitute such an act under Article 2 of the Administrative Reconsideration Law. The appellant challenged that refusal before the Beijing Intellectual Property Court and then the Beijing High People’s Court.

Issue and Court’s Reasoning

The issue was whether issuing an evaluation report constituted a specific administrative act and whether SIPO’s refusal to accept reconsideration had a legal basis.

An evaluation report may serve as evidence when a utility model or design patentee enforces its rights. It does not directly determine or affect patent validity and therefore does not directly affect the rights and obligations of patentees or interested parties. It is not an administrative decision, and its issuance is not a specific administrative act. SIPO’s refusal to accept the reconsideration request was therefore lawful.

The appellant’s claims were dismissed, and it was ordered to bear the legal costs.

Commentary

Evaluation reports are evidence rather than administrative decisions, so patentees and interested parties cannot seek administrative reconsideration of them. A correction request should also set out the applicant’s arguments as fully as possible, because generally only one correction request is permitted.