22/11/2019
The European Patent office (EPO) and the China National Intellectual Property Administration (CNIPA) have recently announced an agreement to give patent applicants filing an international patent application, in English, at the CNIPA as receiving office, the choice to opt for the EPO as their International Searching Authority (ISA).
It is currently expected that this new option will be introduced sometime in 2020, and be implemented as a two-year pilot programme.
Are there benefits to choosing the EPO as ISA over the CNIPA as ISA?
Choosing the EPO as ISA would provide an applicant with a search report and written opinion from an EPO examiner during the international phase. With this information, an applicant would be better informed of the likelihood of achieving grant at the EPO, before making the decision on whether to enter the European regional phase.
In addition, for applicants wishing to accelerate prosecution of an international patent application in Europe, choosing the EPO as ISA would enable the resulting European patent application to proceed directly to examination on entry into the European regional phase, without the need for a European supplementary search to be performed.
Who could benefit from the new pilot programme?
Chinese nationals and residents filing international patent applications, in English, at the CNIPA as receiving office are set to benefit from the new pilot programme.
At present, the CNIPA is the only competent ISA for international patent applications filed at the CNIPA as receiving office. Under the new pilot programme, it appears that both the EPO and the CNIPA would be deemed as competent ISAs for international patent applications filed at the CNIPA as receiving office, provided that the international patent application is filed in English.
Could non-Chinese applicants also benefit from the new pilot programme?
Non-Chinese applicants who have collaborated with inventors based in China could also be set to benefit from the new pilot programme, in cases where it is possible to file an international patent application naming a Chinese national or resident as a joint applicant on the international patent application for at least one PCT member state.
Why might a non-Chinese applicant consider filing an international patent application at the CNIPA as receiving office? It may already be beneficial for a non-Chinese applicant, who has collaborated with an inventor based in China, to first file a patent application at the CNIPA in order to meet the requirements of Chinese patent law.
Chinese patent law requires that inventions made in China are subject to a confidentiality examination by the CNIPA before a patent application or utility model is filed in a foreign country.
One way to request confidentiality examination at the CNIPA is to file a Chinese national patent application at the CNIPA, in Chinese. This option may not always be desirable for non-Chinese applicants, in particular as it may not be desirable to first file a patent application in the Chinese language.
It is also possible to request confidentiality examination by submitting a description of the invention to the CNIPA, in Chinese, before filing a patent application in a different country. However, this option can delay the filing of a patent application while a Chinese description of the invention is being prepared, and while the CNIPA conduct the confidentiality examination.
Another way to request confidentiality examination is to file an international patent application at the CNIPA as receiving office. It should be noted that for this option it is necessary to name at least one Chinese applicant on the international patent application for at least one PCT member state, in order for the CNIPA to be a competent receiving office. Where the CNIPA is not a competent receiving office, the international patent application is forwarded to the international bureau by the CNIPA, and the confidentiality examination is not carried out.
Since it is possible to file an international patent application at the CNIPA as receiving office in English, filing an international patent application, in English, at the CNIPA as receiving office can be a pragmatic compromise for non-Chinese applicants. This option fulfils the confidentiality examination requirement of Chinese patent law, enables the first filed patent application being filed in English, and need not delay filing of the patent application.
The new pilot programme between the EPO and the CNIPA may make filing international patent applications at the CNIPA as receiving office even more attractive to non-Chinese applicants who have collaborated with inventors based in China, as it would provide the option to choose the EPO as ISA, resulting in a search and written opinion from the EPO during the international phase.
Are there any benefits to filing an international patent application at the CNIPA in English, rather than Chinese?
Under the new pilot programme, it seems that it will be necessary to file international patent applications at the CNIPA as receiving office in English, rather than Chinese, in order for an applicant to be able to choose the EPO as ISA. Filing an international application at the CNIPA in English may not seem particularly attractive to applicants who already file international applications at the CNIPA in Chinese. However, are there any other reasons to file an international patent application at the CNIPA in English, rather than Chinese?
In some countries, certain rights are conferred on the publication of a patent application in a national language. For example, in the UK, after the grant of a UK patent, it is possible to seek damages back to the earliest date of publication of the patent application, provided that the earliest publication of the patent application was in English. This also applies to granted UK patents derived from international patent applications that were published in English, for which it is possible to seek damages back to the date of publication of the international patent application.
As such, for patents that are to be enforced in English speaking countries, it may be beneficial for the patent application to have been filed and published in English, rather than another language, to ensure that any rights conferred on publication are available from the earliest date possible.
In particular, there may be some benefit in filing an international patent application at the CNIPA in English, rather than Chinese, in cases where the international patent application claims priority from an earlier filed Chinese national patent application. In these cases, provided that the earlier filed Chinese national patent application is pursued simultaneously with the international patent application, both the Chinese national patent application and the international patent application should be published at around the same time, resulting in publications in both English and Chinese at an early stage in the application process.
Do you need advice on international patent applications, or are you interested in making use of the pilot programme between the EPO and CNIPA when it becomes available?
We, at Reddie and Grose LLP, have considerable experience filing international patent applications for clients based around the world. If you need advice on international patent applications, or are interested in making use of the pilot programme between the EPO and CNIPA when it becomes available, please get in touch with one of our patent attorneys. We would be happy to help.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
