A look at the EPO and CNIPA pilot project

As the joint pilot project between the European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA) is due to commence on December 1st, 2020, we took a look at the various benefits and drawbacks that this program may bring to the table.

 

Patent applications originating in China accounted for 5% of European applications in 2018. The number of Patent Cooperation Treaty (PCT) applications originating in China was seen to grow further in the following years. 

 

The agreement is a development in a strategic partnership between the EPO and CNIPA that began in 2017. The EPO-CNIPA PCT deal will allow PCT applications filed in English — with CNIPA as the Receiving Office — to designate the EPO as their International Search Authority (ISA). 

 

The two-year pilot will be open to applicants filing with either the CNIPA or the World Intellectual Property Organization’s International Bureau (IB) as the Receiving Office. A limit of 2,500 applications is set for the first 12 months and then 3,000 applications for the subsequent 12 months.

 

With an ISR and a WO/ISA from the EPO, applicants from China wishing to accelerate the prosecution of their application can enter the European phase earlier, request early processing, and have their file examined without a supplementary European search.  

 

The cost of designating the EPO as the search authority comes at a higher price. Compared to the 2,100 RMB (US$315) search fee for CNIPA, the search fee for the EPO costs the applicant around 1,775 Euros (US$2,100). Thus, this process may not be suitable for applicants wishing to reduce costs. 

 

However, for applicants that subsequently file a European application based on the international application, designating the EPO as the search authority will almost be cost-neutral in the long term. 

 

The pilot program may be of the most interest to foreign-invested enterprises having innovation occurring in China, particularly those European companies that plan to file at the EPO anyway — since innovations produced in China are required to be applied for as patents in China before extending to other countries.

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Kimberly Uy
Analyst | + posts