From 1 December 2020, Chinese PCT applicants will be given the option to select the EPO as their International Searching Authority (ISA). According to the joint communiqué published on the EPO website, this scheme will be implemented as a two-year pilot programme.
It is envisioned that this programme will enable Chinese applicants to optimise their international patent strategy, especially when considering protection in Europe.
Before 1 December, the CNIPA is the only competent ISA for international (PCT) patent applications that are filed at the CNIPA as Receiving Office.
Under the new pilot programme, nationals and residents of the People’s Republic of China filing international patent applications in English with CNIPA as the Receiving Office will be able to select the EPO, in addition to CNIPA, as the competent ISA.
Advantages of choosing the EPO over the CNIPA as ISA
Chinese applicants opting the EPO as ISA would receive a search report and written opinion issued by an EPO examiner during the international phase of the PCT application. This information would prove useful for the applicants in deciding whether to enter the European regional phase as well as managing their expectations in terms of the likelihood of allowance at the EPO. Furthermore, by choosing the EPO as ISA, the application can be accelerated by directly proceeding to examination on entry into the European regional phase without requiring a supplementary search to be performed, thus gaining up to one year by entering into the European phase earlier.
Advantages of filing a PCT application at the CNIPA in English rather than Chinese
In order for an applicant to be able to select the EPO as ISA, it appears necessary to file their international patent application at the CNIPA as the Receiving Office in English.
Although filing in English may not be a particularly appealing option for Chinese applicants, especially for those who already file and prosecute international applications at the CNIPA in Chinese, this option may be beneficial for patent applications that are intended to be enforced in English speaking jurisdictions due to the relevant language requirements with regard to publication. This is due to the fact that in a number of jurisdictions (such as the UK), certain rights are conferred on the publication of a patent application in a national language. For example, it would be possible to seek damages dating back to the earliest date of publication of the patent application for a granted UK patent, given that the earliest publication of the patent application was in English. As this also applies to granted UK patents that are derived from international patent applications that were published in English, applicants may want to ensure that the international patent applications were filed and published in English so that any rights conferred on publication in English-speaking countries are available from the earliest date possible.
In cases where the international patent application claims priority from an earlier filed Chinese national patent application, both the Chinese national patent application and the international patent application would be published around the same time respectively in Chinese and English, provided that the earlier filed Chinese national application is pursued concurrently with the international application. Thus, there may also be additional benefits in that relevant rights are conferred at an early stage of the application process for both languages.
How can non-Chinese applicants benefit from the programme
Under Chinese patent law, inventions that are made in China are subject to a confidentiality examination before filing any foreign applications. To fulfill such requirements, applicants could request a confidentiality examination by filing a Chinese national patent application in Chinese, or submit a description of the invention to the CNIPA in Chinese prior to the foreign filing. However, the language requirements associated with these options may seem restrictive or undesirable, especially for non-Chinese applicants whose main operations are unlikely to be conducted in Chinese. Also, for the latter option, the preparation of the Chinese description and the confidentiality examination could cause unwanted delays in terms of foreign filings.
Another option to satisfy the confidentiality requirements is to file an international patent application at the CNIPA as Receiving Office, as this would be deemed to include a request for the confidentiality examination. Since the new programme would make it possible for applicants to file an international patent application in English at the CNIPA office as Receiving Office, non-Chinese applicants who have collaborated with China-based inventors on inventions that are made in China could also benefit from the new scheme, thereby avoiding having to compromise in terms of language restrictions and filing timeframe. It is important to note that in order for the CNIPA to be a competent Receiving Office, it is mandatory to name at least one Chinese applicant on the international patent application for at least one PCT member state. Where the CNIPA is not a competent Receiving Office, the application is forwarded to the international bureau where no confidentiality examination will be performed.