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CNIPA-EPO will give nationals or residents of the P.R. China the option to select the EPO as International Searching Authority
From 1 December 2020 the CNIPA-EPO pilot (which will run for two years) will give nationals or residents of the P.R. China the option to select the EPO as their International Searching Authority (ISA) and as their International Preliminary Examining Authority (IPEA), when filing international patent applications under the PCT for which either the CNIPA or the International Bureau (IB) of WIPO acts as receiving Office.
This option will be very attractive for Chinese Applicants interested in protecting their inventions in Europe.
Indeed, by choosing the EPO as ISA, the international search report issued by the EPO will provide Applicants with a sound basis for taking an informed decision on whether or not to enter the European phase, allowing to save time and money.
Moreover, applications already searched by the EPO during the international phase do not have to undergo a supplementary European search upon entry into the European phase. Applicants can thus accelerate the patent grant proceedings by up to 12 months (and even more in the case of early entry into the European phase) and benefit financially because there is no need to pay any supplementary European search fee.
Further, under the PCT Patent Prosecution Highway scheme, Applicants can also use any PCT work products from the EPO to accelerate the processing of the application before the patent offices of Australia, Canada, P.R. China, Colombia, Israel, Japan, Republic of Korea, Malaysia, Mexico, the Philippines, the Russian Federation, Singapore, the USA, the Eurasian Patent Office and Peru.
Having an international search report established by the EPO as ISA also means that Applicants will have the option of making a demand for international preliminary examination if needed to overcome objections raised in the first written opinion. This optional procedure includes a top-up search prior to examination to check for any intermediate prior art that might have become available since the international search report was established, an opportunity to talk to the examiner in a telephone consultation and the possibility of obtaining a second written opinion if you file amendments to your claims. Furthermore, if the EPO as IPEA has established an international preliminary examination report, and Applicants decide to enter the European phase on that basis, the European examination fee payable in that phase will be reduced by 75%, which amounts to a considerable saving on top of the saving already made on a European supplementary search.
If you decide to select EPO as ISA, our suggestion is to appoint a European Patent Attorney to specifically represent Applicants in the proceedings before the EPO in its capacity as ISA.
More information is available at: EPO - CNIPA-EPO pilot for ISA files
We remain at your disposal for any further clarifications.
De Simone & Partners