The Intellectual Property Office of Zhejiang Province asked the State Intellectual Property Office for instructions on Whether the Patent Evaluation Report Provided by the Claimant can be Directly Used as the Existing Design Defense Evidence in Patent Infringement Dispute Cases (Zhezhi (2021) No. 34). After study, the State Intellectual Property Office gave the following reply: 

Article 67 of the Chinese Patent Law stipulates: "In a patent infringement dispute, where the accused infringer has evidence to prove that the technology or design implemented thereby belongs to prior art or prior design, it shall not constitute a patent infringement". According to the above provisions, the existing design defense right, as a defense right, is premised on the defense claim of the accused infringer, and the accused infringer needs to submit the existing design evidence.  In this case, in the absence of a defense claimed by the accused infringer, the patent administration department cannot apply the existing design defense on its own initiative.  Moreover, the design patent evaluation report is submitted by the applicant, which does not comply with the requirements of submitting the subject matter by the existing design.  

According to the Guidelines for Handling Administrative Adjudications of Patent Infringement Disputes, when applying the defense of existing design, only one existing design should be compared with the design of the accused infringing product, and the identical or substantively identical judgment criteria should be adopted. For this case, according to Rule 56 of the Implementing Regulations of the Chinese Patent Law and the relevant provisions of the Patent Examination Guidance, the design patent evaluation report is an evaluation on the condition of being granted a patent right prescribed on whether the design patent complies with the Chinese Patent Law and the Implementing Regulations thereof, including the form part reflecting the correlation between the reference documents and the evaluated patent, and the description part on whether the evaluated patent complies with the condition of being granted a patent right. Thus, the design patent evaluation report cannot prove whether the accused infringing design is identical or substantively identical to the existing design.