IP Cases & Articles

EPO may continue to be ISA and IPEA for Chinese PCT applicants

The European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA) recently announced an extension to the pilot program provided to nationals and residents of China, which allows for selecting the EPO as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA) for their Patent Cooperation Treaty (PCT) applications.

The pilot was launched on 01 December 2020, and has since received positive feedback and support from local and international companies in China. The two-year program was originally scheduled to close on 30 November 2022 but the extension will now allow a further 3,000 eligible PCT applications to benefit from the arrangement for another year.

Traditionally, nationals and residents of China could only choose CNIPA as ISA and IPEA for PCT applications. The pilot offers an alternative track for Chinese applicants to obtain international search reports (ISRs) and international preliminary examination reports (IPERs) from the EPO, which is particularly advantageous for PCT applications aiming at entering European national phase.

One of the main benefits of choosing the EPO as ISA (and IPEA) is the potential acceleration of the European phase procedure. This is accomplished firstly by saving the six-month period which the EPO would have spent on establishing a supplementary search report. Then there is also no need for responding the accompanying written opinion attached to the supplementary search report, which may save further six months.

If the Chinese applicants wish to expedite the European phase by requesting an early regional phase entry, designating the EPO as ISA (and IPEA) will further accelerate the process, since the ISR was issued in an EPO official language and does not need any translation by the World Intellectual Property Organization's International Bureau (IB).

The ISR and accompanying written opinion issued by the EPO will also provide Chinese applicants with a sound basis for taking an informed decision on whether or not to enter the European phase. Additionally, choosing the EPO as ISA (and IPEA) may lower the prosecution cost in Europe, as the applicant no longer needs to also be reduced by 20%.

In order to participate in the pilot the PCT applicants must be (1) nationals of China, having a place of residence in China or in one of the seven countries where the EPO cannot be designated as ISA, and/or (2) nationals of one of the seven countries where the EPO cannot be designated as ISA and have a place of residence in China. The PCT application also needs to be in English and must be submitted to the CNIPA or to the IB.

The seven countries where the EPO cannot be designated as ISA are: United Arab Emirates, Australia, Canada, Dominica, Democratic People's Republic of Korea, Republic of Korea and Papua New Guinea.

If you have any questions regarding this topic, or would like any further information, please get in touch with your usual D Young Co LLP representative.

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