CHINA | Accelerating International Patent Protection

The European Patent Office (“EPO”) and the China National Intellectual Property Administration (“CNIPA”) establishes two-year pilot cooperation under the Patent Cooperation Treaty (“PCT”).

Effective from 1 December 2020, international patent applications from nationals, and residents of the People Republic of China including the Hong Kong Special Administrative Region and Macau Special Administrative Region may select EPO as their International Searching Authority (“ISA”). Applicants can also select the EPO as International Preliminary Examining Authority (‘IPEA’) when filing international patent applications under the PCT for CNIPA or the International Bureau (“IB”) of World Intellectual Property Organisation (“WIPO“) as the receiving Office. Under the pilot, companies, Chinese researchers and inventors (‘Applicants’) may accelerate intellectual property (“IP”) protection internationally.

Below, we summarise the main Q&A from our clients when designating EPO as the ISA.

Q: What are the main advantages of designating EPO as the ISA?

A: For applicants seeking patent protection internationally, selecting EPO as the ISA permits an International Search Report (‘ISR’) and Written Opinion (‘WO’) from EPO. As a result, the ISR and WO can provide clear evaluation of the patentability and indication to pursue patent protection in nationally/ regionally under the PCT, especially in the European region. In other words, from the ISR and WO, the applicant may understand what arguments could be raised and the technical value of the intervention when examined in the European phase and subsequent national phases. Therefore, applicants could save time and costs by selecting EPO, as the preliminary evaluation.

Equally, for Applicants proceeding in the European phrase, early international searches is performed by ISA as the same high-quality standard as a European search a supplementary European search will not be undertaken upon entry into the European phase. Thus, accelerating the application procedure.
Furthermore, if the EPO as IPEA has established an international preliminary examination report, and the applicants decide to enter the European phase on that basis, the European examination fee payable in that phase will be reduced significantly.

Q. What is the estimated time-frame for an international application under the PCT?

A. Usually, the procedure takes 18 months from the filing date of the international patent application, before the national/ regional phase may begin.

Q. What are the main differences between designating EPO as the ISA opposed to CNIPA?

A. Whilst both the EPO and CNIPA conduct an international search for prior arts, the CNIPA due to the nature of the keywords and database utilised may find Chinese language documents as additional prior art. On the other hand, results from the EPO can be European and US heavy. Such differences may result in a different aspects of the international search. Therefore, applicants could consider the regions of the patents filed by competitors to determine which ISA to designate.

Q. Which office is the application filed?

A. Applicants file with either the CNIP or the IB of WIPO acting as receiving Office in digital. Payment is made to the EPO in EURO during the transitional phase, however, there are plans to enable RMB payments to CNIPA in the future.

The pilot is open to 2,500 applicants in the first 12 months and 3,000 applicants in the second 12 months. Such development in China patent applications demonstrates greater importance to IP and the significance of IP to sustain development and core competitiveness.

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