New China/EU IP Pilot Program

Dan Xu

Dan Xu is a partner and is in charge of the firm’s Intellectual Property & Data Compliance practice. She holds a bachelor’s degree from the Eastern China University of Political Science and Law in Shanghai, and a master’s degree from Leiden University (the Netherlands). Dan passed the China Bar examination in 2012. Prior to joining DaWo Law Firm, Dan worked at the China Desk of a Dutch law firm in Rotterdam and at De Wolf Law Firm Shanghai.

Recently, the Chinese National Intellectual Property Administration (CNIPA) and the European Patent Office (EPO) jointly launched a two-year pilot-program, enabling Chinese nationals and residents to select the EPO as their International Searching Authority (ISA) and as their International Preliminary Examining Authority (IPEA).

The pilot program is an important aspect of the comprehensive strategic partnership between CNIPA and EPO and could be interesting for Chinese and multinational companies with R&D activities in China, and especially for those whose plans include filing patents in jurisdictions outside mainland China.

The pilot programme runs under the Patent Cooperation Treaty (PCT), which allows applicants to seek patent protection in many countries. All PCT applications are searched by an ISA and the applicant can review and analyze the ISA results before deciding whether or not to file for patent protection in each country of interest.

The primary impact of this pilot program will be to address issues encountered by applicants located in China: without the program, their only choice would be to choose CNIPA as their ISA, even if the application is in English or filed by a subsidiary of a multinational.

The pilot programme is available for electronic English applications, filed by a Chinese national or resident under the PCT for which either the CNIPA or the International Bureau of the World Intellectual Property Organization acts as the receiving office. The EPO should now be selected as ISA at the time of filing the PCT application.

The number of applications is limited to 2,500 in the first 12 months and 3,000 in the second 12 months, on a first come first served basis.

Although the EPO search fees are significantly higher than the CNIPA, selecting the EPO as ISA can ultimately save time and money. With a positive EPO International Search Report, applicants may acquire patent protection in countries all over the world with higher certainty and shorter wait times.

The international search report issued by EPO will give the applicant a solid basis for deciding whether or not to enter the European phase and subsequent national phases, as well as some clarification on how to craft an application that is best suited (possibly through appropriate amendments and arguments for consideration by EPO) for a fast grant of a European patent.

Moreover, when entering the European phase, applications already searched by EPO during the international phase do not have to undergo a second European search – the EPO performs its international searches as ISA to the same standard as the European search. This means that companies can accelerate the patent grant proceedings and benefit financially because there is no need to pay any supplementary European search fee.

The pilot programme is an excellent choice for companies, both Chinese and multinational, who want to obtain quicker patent protection, not only in Europe, but around the world.
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