The EPO and the China National Intellectual Property Administration (CNIPA) last month signed an agreement to allow Patent Cooperation Treaty (PCT) applications filed in English, with CNIPA as Receiving Office, to designate the EPO as their International Search Authority (ISA). This option is expected to become available in 2020 and run as a two-year pilot programme.
China is now the fifth most active country of origin for European patent applications, accounting for 5% of applications in 2018, with an annual growth rate of nearly 9% (see WIPO statistics). The number of PCT applications originating from China has grown particularly strongly in the last 10 years, second only to the US in 2017. This agreement is the latest development in a strategic partnership between the EPO and CNIPA which began in 2017, the first such partnership between major patent offices.
For inventions that originated in China, the applicant may be required to file the PCT application at the CNIPA; this applies to non-Chinese as well as Chinese applicants. In that case, the option to designate the EPO as the search authority will be welcome to applicants who are used to dealing with the EPO on PCT applications. The EPO is by some margin the most active international search authority, accounting for nearly twice as many search reports as CNIPA in 2017.
Although the details have not yet been confirmed, applicants filing with CNIPA should also be able to request preliminary examination of their International patent applications at the EPO, after the search report is issued. This option is useful for overcoming objections raised in the search opinion during the International phase, with the aim of achieving rapid grant of a subsequent European patent application.
Chinese applicants can benefit from an EPO search and opinion during the International phase, potentially reducing time to grant of a European patent by up to a year. The quality of search and examination at the EPO is highly regarded, so a positive opinion in the international phase should give applicants the confidence that further investment in patenting at the national stage is justified. However, it should be recognised that a positive opinion is not binding on national patent offices, so success cannot be guaranteed.
The ability to designate the EPO as search authority is likely to be attractive to Chinese companies intending to file a European patent application based on the PCT application. This option is less likely to appeal to smaller companies and individuals wishing to defer costs, as the search fee for the EPO is around US$2,000, compared to around US$300 for CNIPA. The cost of translating the application into English, if originally drafted in Chinese, must also be taken into account. However, for applicants who subsequently file a European application based on the International application, designating the EPO as search authority will be almost cost neutral in the long term.
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