December 6, 2022

Volume XII, Number 340

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December 05, 2022

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China’s National Intellectual Property Administration and the European Patent Office Extend Pilot Project for International Search Authority in PCT Applications

On September 16, 2022, the European Patent Office (EPO) and China’s National Intellectual Property Administration (CNIPA) issued a joint communiqué extending a pilot program that enables Chinese Patent Cooperation Treaty (PCT) applicants to select the EPO as International Search Authority (ISA).  The pilot program was originally scheduled to end later this year but will be extended for another year until November 30, 2023 for up to a further 3,000 applications.

Per the EPO,

The EPO establishes international search reports (ISRs) and written opinions (WO/ISAs) which provide an applicant with a clear evaluation of their invention’s patentability and so with a solid basis for taking timely and informed decisions as to whether or not to enter the various national/regional phases under the PCT, in particular the European phase. In addition, with an ISR and a WO/ISA from the EPO, Chinese applicants 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.

To participate, applicants must be nationals or residents of China and file the PCT application in English.  Applicants can file the PCT application with CNIPA or the International Bureau (IB) as Receiving Office, but not the EPO.  

It is unclear what the uptake was but apparently there was enough interest to justify extending the pilot. The cost to select the EPO as ISA is currently 1,775 Euros (about $1,774 USD), while the cost to select CNIPA as ISA is only 2,100 RMB (about $300). 

The original announcement is available here (Chinese) and here (English).

© 2022 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume XII, Number 259
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About this Author

Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software,...

408-278-4059
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