China Adds Europe as a Searching Authority for PCT Applications
February 2021
China has recently initiated a new pilot program adding the European Patent Office as a searching authority option for PCT (Patent Cooperation Treating) international applications filed with CNIPA (Chinese National Intellectual Property Administration) as the receiving office (RO). Previously, applicants filing a PCT application in China could only choose CNIPA as the searching authority.
This pilot program began on 1 Dec 2020 and will run until 1 Dec 2022.
Background of the PCT Process
Once a PCT application is filed, an international searching authority (ISA) conducts a prior art search and provides an International Search Report and a Written Opinion on issues of patentability such as novelty, inventive step, and industrial applicability. These reports becomes “attached” to your PCT publication and can be quite influential, as most global patent offices refer to the reports during examination at the national stage.
There are several patent offices around the world who act as ISA. These are typically local examiners who are trained to examine global patent applications in accordance with PCT standards. There are practical differences between the difference offices, and choosing the right one for you depends on many factors.
Which Searching Authority? China versus Europe
A Hong Kong, Macau, or Mainland Chinese applicant can file a PCT application (in English) with CNIPA (RO) and choose either China or Europe as the ISA now. This means that you are choosing whether CNIPA or the EPO (European Patent Office) conducts the prior art search and writes up the International Search Report and the Written Opinion.
Below we have summarized the main considerations to take into account.
Cost
Europe has *much higher* upfront search fees compared to China. However, applicants who use the EPO as their searching authority do not have to pay for a European search later during prosecution in Europe, since the search has essentially already been done. Likewise, those who choose CNIPA as the ISA also save money on search fees during prosecution in China.
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Quality and Nature of the Search
A European search gives the applicant early insight into how the patent application might fare later in Europe during examination. The applicant can continue to work with the EPO (acting as the IPEA or International Preliminary Examining Authority) during the optional initial stages of preliminary examination during the PCT stage, providing the applicant an opportunity to amend aspects of the application in response to the EPO’s comments. It may help the applicant decide whether to even spend the (large amounts) of money to enter Europe during the national stage.
The EPO is recognized globally for providing high quality search results, and some applicants prefer choosing the EPO for that reason alone. However, CNIPA may be able to better identify prior art that is only published in the Chinese language. Accordingly, choosing the right searching authority may depend on the field and area of technology.
Speed
In general choosing the EPO as the ISA will mean that the applicant will receive the International Search Report and Written Opinion sooner. Secondly, because some preliminary examination has already been done by the EPO during the PCT stage, the application will likely proceed through prosecution in Europe much more quickly, thus resulting in a faster grant. In both cases, a granted patent can optionally be used to speed up prosecution in jurisdictions that have partnered with the EPO or CNIPA (as the case may be) through the PCT Patent Prosecution Highway.
Which ISA to Choose?
If you are seriously considering Europe, we highly recommend choosing the EPO as the ISA and paying the upfront higher fees at the PCT stage in order to take advantage of the many benefits. The high quality search report will give you a lot of insight into how global prosecution, especially in English-speaking jurisdictions, may look.
Furthermore, you actually save money on search costs if you ultimately file in Europe during national phase entry.
Finally, a granted European patent is well-respected worldwide and can really facilitate the grant of counterpart patents in many other jurisdictions, such as via the patent prosecution highway.
If you are unsure whether you want to enter Europe and your budget is limited, you may not want to invest so much money up front if you can’t take advantage of the cost savings later. The fees for using China as the ISA are much lower, and a Chinese search will still likely uncover more Chinese language prior art.
As always, there’s no single right answer, and the best decision will depend on the specific facts of each case.
We will keep you updated for further development. Stay tuned for more important updates on IP law in China.
Please contact us with any questions: eip@eipgroup.asia.
Eagle IP are experts in patent law and we offer a one-stop service for your global IP needs.
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.