A two‑year pilot between the China National Intellectual Property Administration (CNIPA) and the European Patent Office (EPO) has started on December 1, 2020, enabling nationals and residents of the People's Republic of China to select the EPO as their International Searching Authority (ISA) for applications filed in English under the Patent Cooperation Treaty (PCT). This pilot is open to PCT applications filed with either the CNIPA or the World Intellectual Property Organization's International Bureau (IB) as Receiving Office (RO) and can be advantageous to Chinese applicants and foreign applicants who are entitled to file PCT applications with the CNIPA. By participating in this pilot and if the International Search Report established by the EPO is positive, it can be expected that applicants may acquire intellectual property protections in Europe and countries all over the world with higher certainties and shorter pendency.

Concerning the above mentioned RO, i.e. the CNIPA or the IB, there is a difference in the filing procedures, due to the foreign filing license requirement under the Chinese Patent Law. For inventions made in China, if the RO is the IB, a separate request for a foreign filing license must be filed with the CNIPA disclosing the technical details in Chinese language and approval must be obtained before filing the PCT application with the IB. On the other hand, filing a PCT application with the CNIPA as the RO is deemed as simultaneously filing a request for a foreign filing license requirement, and no separate request is needed. This makes filing PCT applications with the CNIPA a more commonly used option. Thus, the costs and time limits in this article are analyzed based on PCT applications filed with the CNIPA. In addition, applicants'(especially foreign applicants') entitlement to file PCT applications with the CNIPA, and the conditions, costs and advantages for participating in the CNIPA-EPO pilot will be introduced.

I . Eligibility to file PCT applications with CNIPA: Who can file PCT applications with the CNIPA?

According to Chinese patent law, nationals and residents of China are entitled to file PCT applications with the CNIPA. In practice, there are many foreign applicants with Chinese inventors and/or inventors residing in China. When the inventions are made by these inventors in China, the applicants may wish to firstly file PCT applications with the CNIPA, in order to fulfill the responsibility of complying with Chinese Patent Law. By adopting a suitable filing strategy, this is completely applicable and we would like to explain as follows:

  1. Nationals refer to all Chinese citizens and entities officially registered in China by competent commercial authorities.
  2. Residents refer to all persons and entities having legal residence in China, including foreigners.
  3. Nationals and residents of China, includes nationals and residents in Taiwan, Special Administrative Regions Hong Kong and Macau.
  4. If one of the co-applicants is a Chinese national or resident, the PCT application can be filed before CNIPA. For example, if one applicant is a foreign company while the second applicant is a Chinese company, it is completely acceptable.
  5. If one of the inventors is a Chinese national or resident, it is also applicable to file PCT application before CNIPA by adopting a suitable filing strategy, for example, by designating this Chinese inventor as applicant only for a remote country into which the applicant is not interested to enter. This method will not affect any interests of the applicant.
  6. If all the applicants and inventors are neither Chinese nationals nor Chinese residences, it is applicable to designate a third party who is a Chinese national or resident as applicant only for a remote country into which the applicant is not interested to enter. This method is very similar to that in item e and will not affect the interests of the applicant.

As can be seen, for foreign applicants, if one of the applicants or inventors is a Chinese national or resident, there can be a suitable way to file the PCT application with the CNIPA and participate in this pilot.

II. The conditions for participating in the CNIPA-EPO pilot: language and others

The CNIPA-EPO pilot is open to PCT applications electronically filed with the CNIPA or the International Bureau (IB). Taking PCT applications filed with CNIPA as an example, the following conditions should be fulfilled:

  1. The PCT application should be filed with the CNIPA in electronical form via the CE-PCT software or the CE-PCT online filing system developed by the CNIPA, designating the CNIPA as the RO.
  2. The PCT application must be filed in English. The CNIPA will not accept international applications filed in Chinese for the pilot, even if the applicant files a translation in English later.
  3. EPO should be selected as ISA at the time of filing the PCT application. If not, it cannot be selected at a later date. By participating in this pilot, if the applicant chooses to file a Demand for International Preliminary Examination, the international preliminary examination authority will be the EPO.

It should be noted that this pilot is on a first-come first-serve basis and is limited to a total of 2500 applications in the first 12 months and 3000 applications in the second 12 months.

III. The cost for participating in this pilot: International Search Fee (Mandatory)/ International Preliminary Examination Fee (optional)

There is no official fee for participating in this pilot and the International Search fee due to the EPO is EUR1775. If the applicant chooses to file a Demand for International Preliminary Examination, the official fee due to the EPO will be EUR2013 (examination fee of EUR 1830 plus handling fee of EUR183).

According to current practice, applicants participating in this pilot will be required to pay the international filing fee in CNY to the CNIPA and pay the international search fee/preliminary examination fee in EUR directly to the EPO via credit card or EPO deposit account. According to the EPO, it is planned to soon enable applicants participating in the pilot to pay this fee in CNY to the CNIPA on filing their applications.

For comparison, we would like to introduce that if CNIPA is selected as the ISA and IPEA, the international search fee is CNY2100 and the preliminary examination fee is about CNY3000 (examination fee of CNY1500 plus handling fee of CHF200). It is clear that the official fee of selecting the EPO as the ISA is significantly higher than that of selecting the CNIPA. However, selecting the EPO as the ISA will greatly save the costs for the European phase. For example, the official fee for the supplementary search will be saved and if international preliminary examination is demanded, the examination fee will be reduced by 75%.

IV. Advantages for participating in the CNIPA-EPO pilot: Why would applicants like to participate in this pilot?

Participating in this pilot is advantagous for both the intennational and national/regional phase of the PCT application.

  1. High quality search results

It is certain that both the CNIPA and the EPO are reputable for carrying out high quality work in patent search and evaluation on the patentability. Nonetheless, by participating in this pilot, the applicant will receive an ISR and a WO/ISA in English from an examiner of the EPO, which will be widely accepted by countries all over the world. According to the figures from the EPO website, the EPO is competent ISA for applicants from 144 countries and established 80700 (32.1% of the total, ranking first in the world) search reports in 2019, which is a perfect illustration of the high quality work of the EPO. By participating in this pilot, International Search Report (ISR) and Written Opinion (WO/ISA) established by the EPO provide the applicant with a clear evaluation of their invention's patentability and a solid basis for making decisions on whether or not to enter the various national/regional phases under the PCT, particularly the European phase.

Furthermore, the ISR and WO/ISA established by the EPO also give the applicant a preview of how the application will be examined during the European phase. Although the examiner may find new prior arts in the national phase, the examination in Europe is more likely to raise the same arguments with substantially the same prior arts. Therefore, the ISR can provide the applicant a fair prediction on the prospect of the application when prosecuting in Europe.

In addition, there are a lot of countries with PPH coopereation program with the EPO, including China, the United States, Japan, Korea, Australia, etc. If the international application contains claims that are determined to be patentable/allowable by the EPO as ISA, the applicant may request accelerated examination under the PPH programme after entering into national phases and get protection as early as possible.

  1. Save time

According to the EPO, the ISA will be established in about 3 months from receipt of the search copy. If the applicant selects CNIPA as the ISA, the due date for issuing the ISR is in 9 months from the earliest priority date (for applications with no priority, from the international filing date) or 3 months from receipt of the search copy, whichever is later. Therefore, for cases without priorities or cases filed soon after the filing of priority application, by selecting the EPO as the ISA, the applicant may obtain the ISR sooner and obtain more time to consider the following steps to take.

The above mentioned is mainly the advantages for the international phase while it is also advantageous for the national phase applications, especially the European phase.

  1. The cost and time for the European phase

As mentioned above, selecting the EPO as the ISA will greatly save the costs for the European phase. Also, time for the European phase will also be significantly saved. These will be analysed as below.

  1. Cost for European Phase

If the ISR is established by the EPO and the demand for preliminary examination is filed, the applicant will save about EUR3385 for the European phase.

  • Where the EPO has already drawn up the ISR, the supplementary European search report is dispensed with for the European phase and so the applicant will not need to pay the European search fee of EUR1350 on entry into European phase (EUR1350 saved).
  • If the applicant chooses to file a demand for international preliminary examination under PCT Chapter II, with the EPO acting as IPEA, the examination fee payable on entry into the European phase will be reduced by 75% and the examination fee after discount is EUR475 (EUR1425 saved).
  • During the prosecution of the European phase, the dispensation of the supplementary search report and accelerated examination will help to save the maintenance fee, which is EUR610 for the 4th year and more for the succeeding years (EUR610 or more saved).
  1. Time for the European phase

Where the EPO has already drawn up the international search report, the supplementary European search report is dispensed with in the European phase and so the time for establishing and responding to the search report will be saved (about 12 months). After entry into the European phase, the application will be immediately within the competence of the examining division.

Besides, there are several steps that can be taken on entry into the European phase, for example, filing request for early processing in EPO Form 1200 (13 months saved), the Rules 161 and 162 waiver in EPO Form 1200 (about 6 months saved) and the PACE request, which will enable the applicants to receive the first official communication within 3 months. By adopting these steps, at most 31 months will be saved and the prosecution of the European application may be completed in about 20 months.

Similarly with the international phase, based on the grant claims of the European application, applicants may expedite the prosecution of applications in countries and regions with PPH program with EPO, including China, the United States, Japan, Korea, Australia, etc.

As CNIPA Commissioner Dr. Shen Changyu commented: "The PCT/ISA pilot programme is one of the important outcomes of the comprehensive strategic partnership between the CNIPA and the EPO and will help applicants to acquire IP protection in Europe." It is anticipated that this pilot will attract both Chinese and foreign applicants seeking rapid patent protection in the world.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.