Contact

If you have questions about the CNIPA-EPO pilot please contact the EPO at support@epo.org and/or CNIPA at PCTaffair@cnipa.gov.cn, by mentioning CNIPA-ISA Pilot in the title of your query.
 

FAQ - CNIPA-EPO pilot for ISA files

General

What is the CNIPA-EPO pilot?

The CNIPA-EPO pilot aims to give nationals or residents of the P.R. China the option of selecting 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.

How long will the pilot last?

The CNIPA-EPO pilot will start on 1 December 2020 and run for two years.

Why might I be interested in participating in the CNIPA-EPO pilot?

If you are a national or resident of P.R. China, selecting the EPO as your ISA may be especially interesting for you if you are looking to protect your invention in Europe and will therefore need to enter the European phase under the PCT later on in order to obtain a European patent granted by the EPO. A European patent can be validated not only in all of the EPO's 38 member states but also in six other states (Bosnia and Herzegovina, Montenegro, Cambodia, Republic of Moldova, Morocco and Tunisia).

If you choose the EPO as your ISA, the international search report it issues will provide you with a sound basis for taking an informed decision on whether or not to enter the European phase and subsequent national phases, and save you time and money if you do. Since the EPO performs international searches as ISA to exactly the same high-quality standard as a European search, 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. In practice, this means that, by choosing the EPO as ISA, you can 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.

Having an international search report established by the EPO as ISA also means you 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 you 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.

Conditions for participating in the CNIPA-EPO pilot

Who can participate in the pilot?

The CNIPA-EPO pilot is open to nationals and residents of P.R. China. If you fall into one of these two categories, participating in the pilot may be of interest to you if you intend to seek patent protection in Europe.

What language must I use when filing an international application if I want to participate in the pilot?

Your international application must be filed in English. The CNIPA or the International Bureau (IB) of WIPO acting as receiving Office will not accept international applications filed in Chinese for the pilot, even if the applicant files a translation in one of the EPO's official languages. Applicants filing applications in Chinese can select the CNIPA as their ISA instead.

Where do I file my international application if I want to participate in the pilot?

To participate in the pilot, you must file your international application with either the CNIPA or the IB acting as receiving Office.

The EPO is not a competent receiving Office for international applications filed by nationals or residents of P.R. China.

Is there a limit on how many files will be accepted for the pilot?

An overall total of 5 500 international applications will be accepted for the pilot. However, this total will be divided over two 12-month phases. The caps set for each phase are:

  • First 12 months: 2 500 files
  • Second 12 months: 3 000 files.

Provided that all the conditions for participation are fulfilled, the CNIPA and the IB as receiving Offices will accept international applications for the pilot on a first-come-first-served basis.

What fees do I have to pay to participate in the pilot?

There is no special, additional fee for participating in the pilot. You simply have to pay the fees normally due on filing of an international application, i.e.:

  • a transmittal fee (for applications filed with the IB acting as receiving Office).
  • the international filing fee, collected by the receiving Office on behalf of the IB. The international filing fee is currently 1 300 Swiss francs (CHF).
  • the international search fee. Please read the dedicated section below for more information about the international search fee due to the EPO acting as ISA.

If you later file a demand for international preliminary examination, you will additionally have to pay a preliminary examination fee and a handling fee. If you have selected the EPO as your ISA upon filing, please note that the EPO is the only competent International Preliminary Examining Authority.

For more information on the various fee amounts, please see PCT Fee Table.

The EPO as International Searching Authority (ISA) in the CNIPA-EPO pilot

How do I select the EPO as ISA in order to participate in the pilot?

If you are a national or resident of P.R China, you can select the EPO as ISA by indicating the EPO in Box No. VII of the PCT request form (PCT/RO/101) you use to file your international application with the CNIPA or the International Bureau (IB) of WIPO acting as receiving Office. You can only select one ISA for your international application. If the receiving Office determines that the application complies with Article 11(1) PCT and your application has been filed in English, the receiving Office will treat the application as a pilot file, unless the cap on the number of applications that can be accepted under the pilot has already been reached. Applications will be accepted for the pilot on a first-come-first-served basis.

Can I accelerate the grant proceedings by choosing the EPO as ISA?

Yes. Choosing the EPO as ISA dispenses with the need to carry out a European search upon entry into the European phase, which can save you up to 12 months in the this phase. You can save even more time if you request early processing under Article 23(2) or Article 40(2) PCT and enter the European phase before the end of the maximum available period of 31 months from the priority date. You can also opt to waive your right to a communication under Rules 161 and 162 EPC and so reduce the duration of the proceedings in the European phase by a further six months.

Lastly, under the PCT Patent Prosecution Highway scheme, you can also use any PCT work products from the EPO to accelerate the processing of your 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.

When can I expect the international search report (ISR) if I select the EPO as ISA?

For international applications claiming priority, the EPO acting as ISA usually issues the ISR and a written opinion within three months from its receipt of the search copy. However, if you choose the CNIPA as your receiving Office, the international search cannot start until you have paid the search fee directly to the EPO as the payment of the international search fee is a requirement for the transmission of the international application (search copy) to the EPO acting as ISA.

How are the international search report (ISR) and the written opinion (WO/ISA) made available to me if I select the EPO as ISA?

ISRs and WO/ISA are made available to applicants electronically via the EPO Mailbox service if the applicant is registered. You can consult the dedicated FAQ on the EPO website for more information on the EPO Mailbox service. Otherwise, the EPO will send the ISR (including the cited documents) and WO/ISA by default via postal mail, in which case applicants can get an electronic copy of the ISR (without the cited documents) and WO/ISA via WIPO’s ePCT service if they have an account. With ePCT, applicants can request access rights to an international application after filing (claim eOwnership of their files to access file wrapper data including EPO’s search report).

Who can represent me before the EPO as ISA?

In proceedings before the EPO as ISA, you can be represented by the agent you appointed for the international phase. Thus, as a national or resident of P.R China, you can be represented by your usual patent attorney entitled to practise before the CNIPA or the International Bureau of WIPO acting as receiving Office. However, once their application enters the European phase, natural or legal persons not having their residence or principal place of business in a contracting state to the EPC must appoint a professional representative entitled to practise before the EPO.

Given that requirement, you may already wish to appoint a different agent specifically to represent you in the proceedings before the EPO in its capacity as ISA. Similarly, under Rule 90.1(d) PCT, the agent you appointed for the international phase may appoint a sub-agent to perform this task. If you choose to appoint an agent or sub-agent specifically for the procedure before the EPO as ISA, that agent or sub-agent must be entitled to practise before the EPO. All communications issued by the EPO as ISA will be sent to your specifically appointed agent or sub-agent.

Where can I find out more about the procedure before the EPO as ISA?

Details of the procedure before the EPO as ISA can be found in Chapter 3 of the Guide for applicants: PCT procedure before the EPO (Euro-PCT Guide). It includes important information on, for example:

  • how the EPO deals with applications with multiple independent claims
  • how the EPO deals with lack of unity of invention
  • the protest procedure
  • using a written opinion established by the EPO as ISA in the Patent Prosecution Highway (PPH) procedure.

The international search fee

How much is the international search fee?

The international search fee payable to the EPO acting as ISA is currently 1 775 euros (EUR).

To which Office should I pay the international search fee?

If you file your application with the CNIPA as receiving Office: until further notice, you must pay the international search fee directly to the EPO in euros (EUR). You can pay the international search fee by credit card (Visa, Mastercard, Amex), using the EPO credit card fee payment service. For more information on paying fees online by credit card, please consult the dedicated FAQ page.

If you have a smart card and a deposit account with the EPO, you can also pay the international search fee from this deposit account via the EPO's Online Filing (OLF) tool using PCT-SFD (Subsequently filed documents) or via its new online filing (CMS) tool using Form 1038, selecting the following entries as shown in the screenshots below:

  • Filing Office: EP (European Patent Office)
  • Capacity: International Search Authority (ISA).

Screenshot for PCT-SFD in Online Filing

Screenshot for Form 1038 in new online filing (CMS)

If you are using Online Filing, please then proceed as follows in the Fees tab:

  1. Tick the box for indicating that you wish to pay fees for lack of unity of invention;
  2. Enter "1" (one) in the No. of independent inventions box. A fee amount of EUR 1 775 will then be displayed.

If you are using CMS, select 003 Fee for an international search:

Enter "1" (one) in the Number of search fees box:

Unfortunately, due to technical restrictions, the Online Fee Payment (OFP) tool cannot be used to pay the first international search fee. However, it can be used to pay any non unity search fees and the fees due for any international preliminary examination. Please note that it will not be possible to pay the international search fee by bank transfer during the pilot.

If you file your application with the International Bureau (IB) of WIPO as receiving Office, you can pay the search fee directly to the IB in euros (EUR), Swiss francs (CHF) or US dollar (USD). The equivalent amounts in each of those currencies are indicated in the PCT Fee Table, published monthly by the IB in the PCT Newsletter.

 

When do I have to pay the fees for my international application?

Pursuant to Rules 14.1(c), 15.3 and 16.1(f) PCT, all fees must be paid within one month from the date of receipt of the international application at the receiving Office.

What happens if I do not pay the fees due for my international application?

If you have not paid the fees for your international application, or not paid them in full, by expiry of the one-month time limit from the date on which the receiving Office received your application, the receiving Office will invite you to pay the amount required to cover those fees within a time limit of one month from the date of the invitation and may also require the payment, for its own benefit, of a late payment fee in accordance with Rule 16bis.2 PCT (see Form PCT/RO/133).

If you have still not paid the fees when this additional time limit expires, the receiving Office will declare your international application withdrawn under Article 14(3) PCT and notify you accordingly (see Form PCT/RO/117).

If your application has been declared withdrawn by the CNIPA acting as receiving Office but you have already paid the international search fee to the EPO, you can claim a refund directly from the EPO. For more information, please consult the EPO's dedicated FAQ on the procedure for claiming refunds online.

What happens if I have already paid the international search fee when the application is declared withdrawn by the CNIPA as receiving Office?

If your application has been declared withdrawn by the CNIPA acting as receiving Office but you have already paid the international search fee to the EPO, the EPO will refund the search fee in accordance with Rule 16.2 PCT. For further information on the EPO's refund procedures, see the related notice.

The EPO as International Preliminary Examining Authority (IPEA) in the CNIPA-EPO pilot

Can I select the EPO as IPEA?

Yes, but only if you selected the EPO as International Searching Authority (ISA) in the first place.

If the international search report and written opinion issued by the EPO show that you need to reduce the scope of your invention, you can amend your application and file a demand for international preliminary examination directly with the EPO. The EPO will then perform a top-up search to check whether any relevant citations have emerged since the international search and you can enter into a dialogue with the examiner.

When does it make sense to file a demand for international preliminary examination?

Generally speaking, it makes sense to file a demand for international preliminary examination under PCT Chapter II only if you received a "negative" international search report (ISR) and written opinion (WO-ISA) but you believe you can file amendments and/or arguments during the proceedings which could lead to a "positive" international preliminary examination report. In other words, an international preliminary examination gives you the opportunity to respond to any negative finding of the EPO acting as ISA while you are still in the centralised international phase under the PCT, which saves you from later having to draft and file multiple responses with the national/regional offices upon entry into their national/regional phases.

In addition, you will benefit from a 75% reduction in the examination fee in the European phase if the EPO has already acted as IPEA.

However, if the EPO acting as ISA has issued you with a declaration under Article 17(2) PCT that no ISR has been established ("declaration of no search"), filing a demand is not recommended, since the EPO as IPEA will not examine claims for which no ISR has been established.

How and where do I file a demand for international preliminary examination?

To file a demand for international preliminary examination, use the prescribed form (PCT/IPEA/401) and submit it, together with any further document relating to this PCT Chapter II procedure (e.g. amendments and/or arguments filed under Article 34 PCT), directly to the EPO as IPEA. The EPO as IPEA will indicate the date of receipt on the demand and promptly notify you of that date. You can file the demand with the EPO as IPEA direct (i.e. by hand), by post, by fax or online (see also points 2.2.003-2.2.033 of the Euro-PCT Guide). You can also use the ePCT service for online filing of a demand under PCT Chapter II directly with the EPO as IPEA, and also for indicating the payment of fees related to the demand.

When should I file the demand for international preliminary examination with the EPO?

Pursuant to Rule 54bis PCT, you can validly submit a demand at any time prior to the expiry of whichever of the following periods expires later:

  • three months from the date the ISR and WO-ISA was transmitted to you by the ISA, or
  • 22 months from the (earliest) priority date.

This time limit guarantees that you have at least three months from the date of mailing of the ISR to decide on the basis of the results of the international search set out in the ISR and the WO-ISA whether you want to file a demand with amendments and/or arguments. If you submit your demand after this time limit, it will be treated as if it had not been submitted.

How can I pay the fees due for the international preliminary examination?

The handling fee (EUR 183) and the preliminary examination fee (EUR 1 830) have to be paid directly to the EPO in EUR by bank transfer, from a deposit account held at the EPO or by credit card (Mastercard, Visa and Amex). You can find more information about how to pay fees to the EPO at epo.org/applying/fees/payment.html.

The EPO will require a late payment fee if you do not pay the fees in time (Rule 58bis.2 PCT). For how the EPO determines the date to be considered as the date on which payment is made, please see Article 7 RFees.

Who can represent me before the EPO as IPEA?

In proceedings before the EPO as IPEA, you can be represented by the agent you appointed on filing the international application and having the right to practise before the receiving Office, i.e. your agent for the international phase. However, it is strongly recommended that applicants who do not have their residence or place of business in one of the EPC contracting states, such as nationals or residents of P.R. China, appoint an agent entitled to practise before the EPO to represent them in proceedings before the EPO as IPEA. It is therefore open to you to appoint a different agent specifically to represent you before the EPO as IPEA. Similarly, your agent for the international phase may appoint a sub-agent to perform this task. Please bear in mind that any agent or sub‑agent appointed specifically to represent you before the EPO as IPEA must be entitled to practise before the EPO. For more information, please consult the Euro-PCT Guide (points 4.1.047 to 4.1.051).

Where can I find out more about the procedure before the EPO as IPEA?

You can find detailed information on the procedure before the EPO acting as IPEA in Chapter 4 of the Euro-PCT Guide.

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