Key Takeaways

  • A patentability evaluation determines whether an invention qualifies for patent protection based on novelty, non-obviousness, and utility.
  • The evaluation is essential for design and utility models in jurisdictions like China and helps protect against invalidation during litigation.
  • Key steps include reviewing technical merits, market potential, and prior art through backward and forward citations.
  • Evaluation also informs commercialization potential and freedom-to-operate risks.
  • A clear distinction exists between patentability evaluations and patent searches—each serves different legal and strategic purposes.

Patent evaluation is when a report is done by the State Intellectual Property Office to see if a specific design patent or utility model fits the granting conditions that are set by the Implementing Regulations of the Chinese Patent Law and the Chinese Patent Law. These reports get issued before a prior art search and happen when the interested party or patentee requests it. These evaluation reports are only applicable to design and utility model patents. Invention patents don't count, as they've already gone under a thorough exam before they get granted.

Why Request a Patent Evaluation Report?

The interested party or the patentee can request the patent evaluation report. If more than one party requests it for an identical design or utility model patent, only one patent evaluation report will be made. In a design or utility model patent infringement case, it's common for the defendant to start a patient invalidation procedure on the patent that's relevant in front of the Patent Reexamination Board. They can also ask that the court suspends operations of the suit. This is unable to happen if the patentee has a patent evaluation report that supports the patent's validity.

A patent evaluation report is created to confirm a design patent or utility model. The patentee may request the report to get proof of the inventiveness and novelty of the patent. This report may be used as proof in the People's Court as well as at a local patent office to review when there are disputes regarding patent infringement. The patent evaluation report may also be used to get specific remedies. As an example, a patentee might want to block products that violate the patent from being sold internationally.

They can record the patent with the Chinese General Administration of Customs so the items won't leave China. The report is also helpful to figure out if the patent might be invalidated or to see if the patent being exploited might infringe the patent rights for the third parties.

Benefits of a Patentability Evaluation Beyond Legal Use

A patentability evaluation goes beyond confirming legal validity; it also supports strategic business decisions. By understanding whether a design or utility model is likely to be granted protection, inventors can:

  • Prioritize high-potential innovations in R&D pipelines.
  • Avoid costly filings on ideas that lack novelty or inventiveness.
  • Strengthen licensing and investor negotiations with evidence of innovation strength.
  • Support defensive publication strategies when pursuing alternative IP protection paths.

It is also useful when seeking IP insurance or asserting rights internationally, as jurisdictions may request documentation verifying novelty and inventiveness.

Steps in Evaluating a Patent

One of the most crucial parts of the patent evaluation is seeing if the patent allows the person who filed the patent the option to claim exclusive rights to their item. They might have a patent that gives the patent exclusive rights to a type of technology that can be copied, but not duplicated. This is often in the person's best interest to do several evaluations at the same time. An example of this would be where the products and technologies are comparable to each other.

Another thing to consider during the patent evaluation process is if the company that wants to promote the idea has adequate resources to put the product on the market. They may have a good idea, but that doesn't mean they're able to see it through based on the available resources. The company might not be able to carry the implementation out and get the product marketed.

Various factors or qualities need to be looked at when considering investing in a patent, including the following:

  • How big the patent family is.
  • How much competition there is for identical products with identical patents.
  • How long the patent has survived for.

If the original inventor has exclusive patent rights for a decent period of time, there may be a good chance that the product is a proprietary and exclusive advancement of technology that should be looked into for further consideration and possible investment. If an opposition has been filed to the patent, it will also need to be considered in addition to what the outcome of the opposition could be.

Patentability Evaluation vs. Patent Search

While often used interchangeably, a patentability evaluation and a patent search are distinct:

  • Patent Search: A technical process that identifies existing patents or publications related to an invention (prior art).
  • Patentability Evaluation: An interpretative analysis conducted by a patent professional to assess how likely it is that the invention would be deemed novel and non-obvious by an examiner.

A comprehensive evaluation combines both a search and legal analysis to determine if patent protection is viable. Skipping the evaluative step may result in wasted resources on non-viable patents.

Key Criteria in Patentability Evaluation

When assessing an invention’s patentability, evaluators typically focus on:

  • Novelty: Is the invention new compared to existing prior art?
  • Non-obviousness: Would it have been obvious to someone skilled in the art at the time of invention?
  • Utility/Industrial Applicability: Can the invention be used in an industry or have practical application?

Secondary factors include:

  • Subject matter eligibility: Certain innovations, like abstract ideas or natural phenomena, may be excluded.
  • Patent claims clarity: Vague or overly broad claims are likely to be rejected.
  • Enablement: The application must clearly teach others how to use the invention without undue experimentation.

What Are the Types of Citation?

Citation analysis has been used regularly for a few decades to evaluate what the quality of a patent is and see how patents possibly impact their competition and the world as a whole. Forward citations an artifact derived from reverse citations and depend on what the point of view is. Backward citations are based on the 892 and 1449 forms in the United States as well as other related forms from different jurisdictions. They give examples of the related art that currently exists.

Common Patentability Pitfalls to Avoid

Even promising inventions can fail patentability evaluations due to avoidable errors. Key pitfalls include:

  • Filing too early without a clear, workable prototype.
  • Drafting vague or overly broad claims.
  • Overlooking existing prior art in adjacent technical fields.
  • Misidentifying the actual inventive concept.
  • Failing to include adequate technical details in the specification.

Working with a patent attorney can help navigate these risks and improve your odds of success.

How Citations Influence Patent Value

Citation analysis helps assess the impact and potential strength of a patent. The key types include:

  • Forward Citations: Indicate how many future patents have referenced the patent in question. A high number can suggest technological relevance.
  • Backward Citations: Show which prior patents were considered during examination, providing context for novelty claims.

Citations can also influence:

  • Patent strength in litigation.
  • Perceived market value.
  • Potential licensing opportunities.

Analyzing citation trends can help identify innovation hotspots and avoid crowded IP landscapes.

Frequently Asked Questions

  1. What is the difference between a patent search and a patentability evaluation?
    A patent search identifies existing prior art, while a patentability evaluation interprets that data to determine whether your invention meets legal standards for patenting.
  2. Who should conduct a patentability evaluation?
    Ideally, a registered patent attorney or agent with technical expertise should conduct the evaluation to ensure accuracy and legal insight.
  3. Can you get a patent without a patentability evaluation?
    Yes, but it’s risky. Without an evaluation, you might invest in a patent application that will ultimately be rejected or easily invalidated.
  4. Is a patentability evaluation legally binding?
    No, it is an opinion and does not guarantee a granted patent. However, it significantly increases your likelihood of a successful filing.
  5. How long does a patentability evaluation take?
    Timelines vary but typically range from a few days to a couple of weeks depending on complexity and jurisdiction.

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