On April 21, 2025, the Supreme People’s Court (SPC) released the Abstract of the 2024 Annual Report on the Application of Law in IP Cases by Courts Nationwide (“2024 Abstract”). Among the 43 application-of-law issues distilled from IP cases concluded in 2024, the very first is the legal characterization of patent evaluation reports in patent infringement disputes. This shows that clarifying the nature and use of patent evaluation reports in infringement litigation is an urgent issue.
I. Judicial Practice Concerning Patent Evaluation Reports
Typical Case 1
The first typical case listed in the 2024 Abstract—Wenzhou XX Machinery Co., Ltd. v. Guizhou XX Parts Co., Ltd., et al. (petition for retrial) 【(2024) Zui Gao Fa Min Zai No. 244】—states the following holding:
In patent infringement disputes, a patent evaluation report may serve as one piece of evidence, but the validity of the patent at issue must still be determined based on the granted patent documents and effective administrative decisions. Where the patentee brings suit on the basis of a patent that remains effective, courts may not dismiss the case solely because the evaluation report concludes that the patent fails to meet statutory grant conditions.
In that case, the courts found that the CNIPA issued a utility model patent evaluation report on August 5, 2022. Its preliminary conclusion was that claims 1–7 did not meet the conditions for patent grant. Specifically, claims 1–7 satisfied novelty (Art. 22(2) of the Patent Law) but lacked inventiveness (Art. 22(3)).
On retrial, the SPC noted that the appellate court had relied on the report to find the patent’s legal status unstable, concluded that the plaintiff lacked a basis to sue, and dismissed the complaint.
The SPC held that a patent evaluation report is a technical report issued by the State patent administration upon a party’s request after search, analysis, and evaluation of whether a utility model or design meets the standards for grant. It is evidence for handling patent infringement disputes and only a basis for assessing the stability of patent validity; it is not an administrative decision rendered in the exercise of administrative authority. In other words, the report’s conclusion is neither the sole nor an absolute basis for determining validity.
In infringement suits, the patent’s validity must still be determined by reference to the grant documents and effective decisions made by CNIPA in the relevant administrative grant/confirmation proceedings. In this case there was no evidence that the patent had undergone an invalidation proceeding and been invalidated by an effective CNIPA decision. As the plaintiff submitted the patent certificate, grant documents, and annuity receipts—sufficient to prove lawful acquisition and that the patent remained in force—the plaintiff had the right to sue. The appellate court’s dismissal based on the evaluation report’s negative conclusion was improper and should be corrected.
Typical Case 2
In Zhuhai XX Lighting Technology Co., Ltd. v. XX County Municipal Construction Administration, et al. (petition for retrial) 【(2020) Zui Gao Fa Min Zai No. 383】, the SPC held:
If the plaintiff fails to submit a patent evaluation report as requested by the people’s court but can prove that the patent remains valid, the court should not dismiss the case merely because the plaintiff declined to submit the report.
The SPC reasoned as follows:
First, a patent evaluation report is essentially a type of evidence in civil patent infringement litigation. Based on CNIPA’s search, analysis, and evaluation, parties can—outside of invalidation procedures—form a more accurate, reasonable expectation regarding the state of the prior art/design and the stability of patent validity, thereby litigating more rationally and purposefully. Courts may also use the report as a reference when assessing validity stability. Considering factors such as the scope of protection of a design patent, its differences from prior designs, degree of creativity, and validity stability, as well as the likelihood of infringement, civil liability, and whether CNIPA has issued an invalidation decision, courts may decide whether to require the patentee or interested party to provide a report.
Second, Article 8 of the Provisions of the SPC on Several Issues Concerning the Application of Law in the Trial of Patent Dispute Cases (2015 revision) provides: “**Where necessary for adjudication, the people’s court may require the plaintiff to submit a search report or a patent evaluation report. If the plaintiff fails to submit it without justifiable reasons, the court may rule to suspend the proceedings or order the plaintiff to bear possible adverse consequences.” Thus, if the court expressly requires a report and the plaintiff unjustifiably refuses to request one from CNIPA or to submit it to the court, the court may—based on the record and the parties’ arguments—make adverse findings or presumptions against the plaintiff relating to prior design status, routine design, design space, degree of creativity, etc., that are associated with the report.
Finally, because a patent evaluation report is evidence for trying and handling infringement disputes, it is not a mandatory filing for initiating a civil action for design patent infringement. As to whether the patent should be invalidated, the report has only referential value and cannot substitute for an administrative invalidation decision and related judgments. Therefore, if the plaintiff fails to provide a report as requested but submits CNIPA’s invalidation decision upholding the patent’s validity, the court should not dismiss the case on the ground that the plaintiff refused to submit the report.
II. Judicial Dilemmas in Applying Patent Evaluation Reports
Although laws and judicial interpretations do not specify how courts should handle a situation where a report concludes that the patent fails to meet grant conditions yet the plaintiff insists on suing, the doctrinal logic is the same as in cases where the court requests a report and the plaintiff unjustifiably refuses to submit one: the report serves as evidence for courts to assess the stability of patent validity.
Accordingly, both scenarios may be handled under Article 4(1) of the SPC’s Provisions (2020 revision): “Where necessary, the court may require the plaintiff to submit a search report or a patent evaluation report. If the plaintiff fails to submit it without justifiable reasons, the court may suspend the proceedings or order the plaintiff to bear possible adverse consequences.” These are parallel measures; “suspension” is not encompassed within “adverse consequences.”
Suspension is typically used when:
(1) The plaintiff undertakes to apply for a report from CNIPA or has applied, but CNIPA needs time (generally about two months) to issue it—so the court suspends the case pending the report; or
(2) Although the plaintiff has not applied for or refuses to submit a report, the defendant or another party has filed an invalidation petition against the patent—so the court suspends the case pending the invalidation decision.
However, when the plaintiff refuses to apply for and submit a report and no invalidation petition has been filed, suspension may be inapt, as the court cannot suspend proceedings indefinitely. In practice, courts may use the possibility of suspension as leverage to encourage the plaintiff—mindful of timing and enforcement considerations—to obtain and submit a report.
For plaintiffs who adamantly refuse to submit a report, or where CNIPA’s report indicates the patent does not meet grant conditions yet the plaintiff still sues, courts must rely on the alternative measure: ordering the plaintiff to bear possible adverse consequences. But what exactly counts as “adverse consequences,” and how should they be applied?
Based on the holdings in the typical cases above, the SPC has excluded “dismissing the complaint” from the scope of adverse consequences. Thus, where the plaintiff unjustifiably refuses to request or submit a report, or sues despite a negative report, courts may not directly dismiss the action.
Yet the SPC has not set out comprehensive handling standards for the two scenarios. Lower courts thus may neither ignore doubts about validity stability arising from the absence of a report or a negative report (lest the relevant provisions lose effect) nor summarily dismiss the action (which would deprive the plaintiff of the right to sue). This undermines parties’ expectations and creates a judicial application dilemma concerning patent evaluation reports.
III. Paths to Improving Judicial Application
Drawing on litigation practice, the author considers that the “possible adverse consequences” the court may order the plaintiff to bear could include the following:
1. Adverse Findings in Substantive Judgments
The court may, in light of the evidence, presume defects in validity that affect the infringement determination. For example, if the plaintiff refuses without justification to submit a report, or the report indicates a risk of invalidity, the court may be inclined to find the patent unstable and, within its discretion, interpret the scope of protection and doctrine of equivalents more narrowly (to the plaintiff’s detriment). If the defendant raises prior art or prior design defenses, the court may lean toward recognizing those defenses.
2. Reduction or Limitation of Damages
If refusal to submit a report casts doubt on validity, or the report indicates instability, the court may reduce damages at its discretion—perhaps supporting only the portion of actual loss that is clearly proven. Although damages can reference license fees or statutory ranges, courts may adopt lower multipliers or conservative figures where no report is provided.
3. Procedural Restrictions
A plaintiff who refuses to provide a report, or whose report shows instability, may fail to obtain provisional measures such as pre-suit injunctions or asset preservation, impairing enforcement leverage.
In sum, the specific content and application of “possible adverse consequences” contemplated by the judicial interpretation remain to be clarified by the SPC. In particular, for cases where the plaintiff unjustifiably refuses to submit a report, or sues despite a report indicating instability, more detailed rules are needed on what consequences should follow and how they should be applied, so as to provide stable, predictable outcomes for parties in future cases.