29.06.2021
A new CNIPA-EPO pilot, launched on 1 December 2020, creates a speedway to Europe for patent applications of nationals or residents of the P.R. China.
The China National Intellectual Property Administration (CNIPA) and European Patent Office (EPO) launched a pilot that allows nationals or residents of the P.R. China to select the EPO as the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) when filing a PCT application. As a result, the patent grant proceedings can be accelerated by 12-30 months.
“This opportunity is especially appealing to Chinese companies seeking to protect their inventions in Europe. The patent application processing for obtaining a European patent by the European Patent Office (EPO) can now be accelerated by 12 to 30 months”, says Julia Urbanec, Kolster Patent Attorney.
A European patent can be validated in all of the EPO's 38 member states and in Bosnia and Herzegovina, Montenegro, Cambodia, Republic of Moldova, Morocco and Tunisia. Previously, the China National Intellectual Property Administration (CNIPA) has been the only option for ISA under the PCT.
“When a PCT applicant chooses the EPO as the International Search Authority instead of the CNIPA, the issued international search report will help applicants decide whether entering the European phase and subsequent national phases is wise for them. A positive International Preliminary Report on Patentability (IPRP) from the EPO means that the EP patent will almost certainly be granted.”
In order to participate in the pilot, the applicant must be a national or resident of China, and the application must be filed directly in English. The pilot runs for two years and operates on a ‘first come, first serve’ principle. However, a total of 2 500 and 3 000 applications will be accepted to the pilot in the first and second year, respectively.
The European examination fee reduced by 75 percent
Accelerating the patent filing process requires vigilance from the applicant. Requesting early processing can save up to 15 months, as all application documents are already in the EPO’s file and the processing of the Euro-PCT application can start immediately after receipt of the International Search Report (ISR).
“Another way to save time up to six months is to file a substantiated reply to the written opinion to the ISR (WO/ISA) to remedy the identified deficiencies and any further voluntary amendments, and waive communications providing additional time for the measures. The applicant may also file a PACE request, which allows the examining division to issue the next official communication within three months of the latest action as opposed to six”, Urbanec says.
As ISA, the EPO performs international searches to the same standard as a European search. Therefore, applications already searched by the EPO during the international phase do not have to undergo a supplementary European search upon entry into the European phase.
“Without the supplementary European search, the applicant saves both time and money. Additionally, upon deciding to enter the European phase on the basis of the EPO international preliminary examination report, the European examination fee will be reduced by 75 percent.”
European Patent Attorney to be kept at hand
In practice, the applicant selects the EPO as ISA while filing the application with the CNIPA electronically via CE-PCT system. The CNIPA collects filing fee information and sends the search copy to the EPO, after which the EPO issues the ISR and the WO/ISA.
Urbanec recommends keeping a European Patent Attorney at hand throughout the filing process to ensure a successful outcome and save time in communicating with the EPO.
“European Patent Attorneys can answer search reports, written opinions and file demands if necessary. Furthermore, only European Patent Attorneys receive the EPO’s notices via electronic mailbox, as opposed to the postal mail. Therefore, in addition to speed, the risk of losing a notice is considerably lower.”
