When seeking international patent protection, applicants can file an international patent application to protect their technology in over 150 territories. International patent applications are subject to an international search to identify any prior public disclosures which may prejudice the patentability of the technology. The search results are then returned to the applicant so that the applicant can make an informed decision on whether the technology may be patentable before committing to the expense of national and regional patent applications, such as a European patent application. The intellectual property office (IPO) which is competent to perform this international search depends on the residency and nationality of the applicant, and for residents and nationals of the UK, the competent international search authority (ISA) is the EPO, whereas for residents and nationals of China, the competent ISA is the China National Intellectual Property Administration (CNIPA).
However, on 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
It is thought this may be especially interesting for Chinese applicants who are looking to protect their technology in Europe. Since the EPO performs international searches to exactly the same high-quality standard as a search associated with a European patent application, international applications already searched by the EPO do not have to undergo a supplementary European search upon entry into the European regional phase. In practice, this means that, by choosing the EPO as ISA, Chinese applicants can accelerate the prosecution of the European application by up to 12 months and benefit financially, because there is no need to pay any supplementary European search fee.
Having an international search report established by the EPO as ISA also means that Chinese applicants have the option of requesting international examination if needed to overcome objections raised in the initial opinion accompanying the search results. This optional procedure includes an opportunity to talk to the examiner in a telephone consultation and the possibility of obtaining a second patentability opinion if any claim amendments are filed. Furthermore, if the EPO has established an international examination report, and a European regional application is subsequently filed on that basis, the associated examination fee payable in connection with the European patent application will be reduced by 75%, which amounts to a considerable saving on top of the saving already made on a European supplementary search.
The pilot is expected to run for 2 years, with 5500 international applications being accepted onto the pilot programme on a first come first served basis, and with 2500 being available in the first 12 months and 3000 being available in the second 12 months.
Dr Elliott Davies, Patent Attorney and Partner