Advantages of selecting the European Patent Office for PCT applications

The Chinese National Intellectual Property Administration (CNIPA) has established a two-year pilot cooperation with the European Patent Office (EPO) for patent applications filed under the Patent Cooperation Treaty (PCT).

With effect from 1st December 2020, nationals and residents of the People’s Republic of China including its Special Administrative Regions Hong Kong and Macau are allowed to designate EPO, other than CNIPA, as their International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed in English under the PCT. This pilot cooperation is available to 2500 applications in the first 12 months, and 3000 applications in the second 12 months. Although the search fees of using EPO as ISA are significantly higher than that of using CNIPA, the former can provide Chinese applicants with some strategic advantages:

Cost for European Regional Phase

By choosing the EPO to conduct the PCT search, the applicant will not be required to pay the search fees when entering the European regional phase. Therefore, if the Chinese PCT applications will be nationalized in Europe, there is a financial incentive to designate EPO as the ISA.

Smooth Prosecution at the EPO

When a Chinese PCT applicant chooses the EPO as ISA, the applicant will receive an International Search Report and a Written Opinion from a European examiner. This gives an excellent preview of how the application will be examined during the European regional phase. Although the Written Opinion is non-binding in nature and the examiner may find new arts in the national phase, the examination in Europe is more likely to raise the same arguments with substantially the same prior arts. Therefore, the PCT search report can provide the applicant a fair prediction on the prospect of the application when prosecuting in Europe. Furthermore, as a supplementary European search is not required, the patent prosecution is expected to be smoothed and accelerated in the European regional phase. This is particularly desirable as the time for prosecuting a European patent is generally long. Faster processing of the application can potentially save some annuity fees, which would be incurred even when the patent is pending.

Potential search result differences

Both the CNIPA and the EPO conduct a global search for prior arts and are reputable for carrying out quality work in patent search and evaluation on the patentability. However, it is indisputable that the CNIPA due to the databases and keywords used is more likely to discover Chinese language documents as additional relevant prior art, while the EPO is more likely to discover documents from Europe and the US. Such tendency may be a result of the preference of the examiners, which may result in a different aspect of the international search. In the event that the Chinese PCT applicant is not intended to nationalize the application in China, or the applicant is more concerned with the patents filed by the competitors in Europe, it is more favorable to obtain an International Search Report and a Written Opinion prepared by a European examiner instead of a Chinese examiner.

Conclusion

Since CNIPA has been one of the major receiving offices for PCT applications, this pilot cooperation between the CNIPA and the EPO can advantageously offer the Chinese patent applicants more strategic filing options. Chinese businesses and inventors can acquire intellectual property protections in Europe with higher certainties and shorter pendency time. In view thereof, we expect that this cooperation will encourage more Chinese companies to nationalize their inventions in foreign countries.

Authors: Dr. Oliver Lutze, John Chung