Member Article

Did you know?

The Chinese National Intellectual Property Administration (CNIPA) and European Patent Office (EPO) recently announced a pilot-programme, which will be of particular interest to Chinese and multinational companies with R&D in Mainland China and Hong Kong, especially if they wish to file patents in Europe, US or other jurisdictions outside of Mainland China.

The programme concerns the PCT system, which allows an applicant to seek patent protection in up to 153 countries worldwide, but delays the deadline for entry into each country until 30 months from the priority date. All PCT applications are searched by an International Search Authority (ISA) and the applicant can review the results of this prior search before deciding whether to take the expensive step of proceeding in each county of interest.

Until recently, for applicants located in Mainland China and Hong Kong, the only choice was for the prior art search to be carried out by CNIPA. This was the case even if the application was in English and even if the application was filed by a subsidiary of a multinational corporation.

However, thanks to the pilot programme, launched on 1 December 2020, Mainland China applicants may now select the European Patent Office (EPO) to conduct the prior art search. The programme is also open to individuals and companies incorporated in Hong Kong.

Should I make use of the pilot programme?

The EPO search fees are significantly higher than the CNIPA search fees so, if your budget is limited, then CNIPA may be the best choice. However, selecting the EPO as the search authority has the following advantages:

• a prior art search in a broader range of languages, as the searchers are fluent in English, French and German
• quick grant in the European regional phase if the search is positive
• a positive search from the EPO may also help expedite prosecution in other jurisdictions including Brazil and Mexico
  
  

Even if the EPO search is not positive, it may still be possible to expedite the application by filing a Demand for International Preliminary Examination. In this way, amendments and arguments can be submitted for consideration by the European Examiner in the international phase and, if the objections are overcome in the international phase, the application may proceed quickly to grant once it formally enters the European regional phase.

Therefore, the pilot programme is an excellent choice for clients who wish to obtain quicker protection in Europe, or uncover a broader range of prior art at an earlier stage.

Which PCT applications are eligible for the pilot-programme?

The pilot programme is available for English language PCTs filed after 1 December 2020, if at least one applicant is a national, or resident of, Mainland China or Hong Kong. In the first year 2,500 places will be available on the pilot programme and allocated on a first come first served basis.