The European Patent Office is now an International Search Authority option for Chinese PCT applicants

December 01, 2020

Today, 1st December 2020, a two-year pilot project between the between the European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA) has begun. The project enables nationals and residents of China to select the EPO as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA) for Patent Cooperation Treaty (PCT) applications filed in English.

The pilot project will be open to a significant number of applications, with 2,500 applications being accepted in the first year, and 3,000 applications being accepted in the second year. The project will apply to PCT applications filed with the CNIPA or with the International Bureau (IB).

Choosing the EPO as the ISA could provide a number of advantages for Chinese applicants, and some of these are outlined below:

  • The applicant will receive a written opinion on the patentability of the invention from a European examiner before entering the European regional phase. This should provide the applicant with a much clearer view of the prospects of successfully reaching grant in Europe.
  • Prosecution of the application will be expedited in Europe, as a supplementary search will not be required after entering the European regional phase.
  • No search fee is payable on entering the European regional phase when the EPO acted as ISA for a PCT application. Furthermore, additional savings are available on entering the European regional phase if the EPO is selected as IPEA.
  • If the CNIPA is the Receiving Office for the PCT application, it is a requirement to file the International application in English when selecting the EPO as ISA. Subsequent publication of the PCT application in English could improve the prospects of backdating damages to the date of publication in English speaking countries.

If you have any questions concerning this or would like any further information, please get in touch with your usual contact at Swindell & Pearson Ltd or Michael Loadman at [email protected].