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.
The CNIPA-EPO pilot will start on 1 December 2020 and run for two years.
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.
The CNIPA-EPO pilot is open to nationals and residents of P.R. China.
In order to be able to file your international application with the CNIPA as receiving Office (RO/CN), it suffices that at least one of the applicants is a national of or has a place of residence in P.R. China. Where that is the case, your application will be considered a pilot application if you select the EPO as ISA and the other requirements for participation are also fulfilled (English as language of filing; payment of the international search fee to the EPO; limit of 2 500 applications in the first 12 months of the pilot not yet reached).
For applications filed with the International Bureau as receiving Office (RO/IB), the competent ISAs are the same as those which would have been competent if the application had been filed with a competent national/regional patent Office (see Rule 35.3 PCT). Since the EPO has universal competence as an ISA, most applicants were already able – independently of the pilot – to select the EPO when filing with RO/IB. Applications filed with RO/IB will therefore be accepted for the pilot only if:
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.
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.
All application documents (request, description, claims, any drawings and abstract) must be filed with the receiving Office (the CNIPA or the IB). If the CNIPA is the receiving Office, the documents should be filed via the CNIPA's CE-PCT system. If the IB is the receiving Office, they can be filed using WIPO's ePCT filing tool.
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:
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.
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.:
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.
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.
No. Once you have filed your application and selected the CNIPA as your ISA, it is no longer possible to change. Furthermore, in order to be able to select the EPO as ISA under the pilot, your international application must be filed in English. Applications filed in Chinese will not be accepted for the pilot.
However, if you have selected the CNIPA as your ISA, you may submit a request for a supplementary international search (SIS), choosing the EPO as Supplementary International Searching Authority (SISA). A SIS request must be filed with the International Bureau within 22 months from the priority date. If your application was filed in Chinese, you must also file a English, French or German translation of it with your request. The EPO will establish the Supplementary International Search Report (SISR) within 28 months from the priority date.
You can submit subsequently filed documents (SFDs) to the EPO as ISA (e.g. rectification of obvious mistakes in the description, claims or drawings under Rule 91 PCT) by post or fax, or via the EPO's online filing tools (Web-Form Filing, Online Filing (OLF) or new online filing (CMS)).
Alternatively, you are encouraged to use WIPO's ePCT service to file SFDs or any PCT Chapter II demand. The ePCT service can also be used for indicating the payment of fees related to the demand (see OJ EPO 2016, A78).
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.
For international applications claiming priority from an earlier application (national or international), 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.
If your international application does not claim priority from an earlier application, the EPO acting as ISA will usually issue the ISR and written opinion within eight months from the priority date, in accordance with Rule 42 PCT. The EPO observes this eight month period for quality reasons as it ensures that all the relevant prior art has been classified and so can be found and considered by the examiner when performing the international search.
The ISR and WO-ISA will be made available electronically via the EPO Mailbox service if you have a representative who is eligible and registered to use it (e.g. a European representative, but not an international agent). You can consult the dedicated FAQ on the EPO website for more information on the EPO Mailbox service.
Otherwise, by default, the EPO will send you the ISR (including the cited documents) and WO-ISA by post, in which case you can get an electronic copy of the ISR (without the cited documents) and WO-ISA via WIPO's ePCT service if you have an account. With ePCT, you can request access rights to an international application after filing (i.e. claim eOwnership of your files to access file wrapper data, including the EPO's search report).
It is not possible for you to receive the notifications relating to the international search performed by the EPO via the CNIPA's CE-PCT system.
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/IPEA. Being represented by a European representative in the international phase is recommended, especially for drafting amendments under Article 34 PCT for the purposes of a Chapter II demand for international preliminary examination. 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.
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:
The international search fee payable to the EPO acting as ISA is currently 1 775 euros (EUR).
If the search carried out for your international application is based entirely or partly on an earlier search report already prepared by the EPO on an application whose priority is validly claimed (Box No. VI of the PCT request form), you may be entitled to obtain a refund of the international search fee. The EPO acting as ISA decides whether the requirements are met and, if so, refunds the applicable amount.
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:
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:
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.
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.
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.
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.
If you have an EPO deposit account, the EPO will make the refund directly to that account. Otherwise, you can claim it via the EPO's online refund claim service. Please note that the EPO cannot make refunds to credit cards. For further information on the EPO's refund procedures, see the related notice.
Yes. If you participate in the pilot, you may file a demand for international preliminary examination with the EPO acting as IPEA.
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.
It is not possible for applicants to select the EPO as ISA and after file a demand for international preliminary examination with the CNIPA acting as IPEA. This is because the latter is competent only if it has carried out the international search (see ISA/IPEA Agreement – CN/IB).
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.
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.
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:
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.
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.
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).
You can find detailed information on the procedure before the EPO acting as IPEA in Chapter 4 of the Euro-PCT Guide.
Entry into the European phase consists of a series of steps that need to be taken within 31 months from the priority date or, if no priority is claimed, within 31 months from the international filing date (Rule 159(1) EPC). Which ones need to be taken depends to a certain extent on the "history" of the international application, e.g. what language it was published in and which office acted as International Searching Authority. The steps that applicants participating in the CNIPA-EPO pilot will need to take to enter the European phase are:
You are advised to use EPO Form 1200 to file your request for entry into the European phase. It is available in the EPO's online filing tools (Online Filing or new online filing (CMS)) or as a paper form. In both cases, you will be guided through all the requirements to be fulfilled.
As a pilot participant, you will have the following three advantages:
Firstly, since only international applications filed in English can be processed under the CNIPA-EPO pilot and English is anyway one of the EPO's official languages, you will not need to file a translation of your international application on entry into the European phase.
Secondly, where the EPO has already drawn up the international search report, the supplementary European search report (Article 153(7) EPC) is dispensed with in the European phase and so you will not need to pay a European search fee on entry into this phase.
Thirdly, if you chose to file a demand for international preliminary examination under PCT Chapter II, with the EPO acting as IPEA, the examination fee payable on entry into the European phase will be reduced by 75%.
Details of the steps to take to enter the European phase, including those relating to representation, and of the subsequent procedure before the EPO as designated or elected Office can be found in Chapter 5 of the Guide for applicants: PCT procedure before the EPO (Euro-PCT Guide).
By choosing the EPO as ISA you already automatically shorten the proceedings before the EPO as designated or elected Office by up to 12 months. This is because the supplementary European search report, which can take six months to establish, is dispensed with, and so you also do not need to file a reply to the EPO's accompanying search opinion (ESOP) (Rules 70(2) and 70a(2) EPC), which saves you another six months.
Additionally, three further options are available which you can use to make the prosecution of your application in the European phase even faster:
All these options are free of charge and can be selected in combination.
The EPO as designated/elected Office will normally not process an international application before expiry of the 31-month time limit from the date of filing or, if priority has been claimed, from the priority date (Articles 22(3) or 39(1)(b) PCT, Rule 159(1) EPC). However, you can ask it to start the processing of your application earlier by filing an explicit request for early processing (Article 23(2) or 40(2) PCT). A request for early processing can be filed at any time before expiry of the 31-time limit under Rule 159(1) EPC. You can file it directly in EPO Form 1200 ("Entry into the European phase") by simply selecting the checkbox provided in the EPO's online filing tools (Online Filing or new online filing (CMS)) or in the paper form (section 12.1).
The request for early processing is effective only if you comply with the requirements of Rule 159(1) EPC as if the 31-month time limit expired on the date you filed it. For further details on requesting early processing, see the Guidelines for Examination in the EPO, Part E‑IX, 2.8.
The application is considered pending before the EPO as designated or elected Office as from the date the request for early processing is effectively filed. However, the EPO will only start processing it once the international search report (ISR) is available. Only then can it issue the communication under Rule 161(1) EPC because a mandatory reply to the written opinion of the ISA ("WO-ISA") is required under this rule if the ISA raised any objections. The results of the ISR and the WO-ISA will enable you to file any required amendments together with your request for early processing or to validly waive your right to receive the communication under Rules 161 and 162 EPC directly on entry into the European phase. It is therefore recommended that you do not file a request for early processing until you have received the ISR and the WO-ISA.
If you selected the EPO as ISA, the ISR will be established about four to six months after the date of filing. If you file a request for early processing straight after receiving the ISR, you can shorten the international phase by up to 15 months. The EPO has direct access to the search results in its own files. This saves the administrative work involved in obtaining the documents via the International Bureau.
As soon as your international application has validly entered the European phase, the EPO will issue a communication under Rules 161(1) and 162(2) EPC. In this communication, it will invite you to amend your Euro-PCT application as required to correct any deficiencies in the international application identified in the written opinion of the ISA ("WOISA") or, if no such deficiencies were identified in the WOISA, provide you with a further opportunity to file any voluntary amendments (Rule 161(1) EPC). It will also invite you to pay any claims fees for claims over 15 which have not yet been paid (Rule 162(2) EPC). You will then have six months to reply to the communication. The EPO will only continue processing your application once this time limit has expired.
However, if you want to expedite the proceedings, you can waive your right to this communication. You can do this directly in EPO Form 1200 ("Entry into the European phase") by simply selecting the checkbox provided in the EPO's online filing tools (Online Filing or new online filing (CMS)) or in the paper form (section 12.2, first checkbox).
A waiver of the right to a communication under Rules 161(1) and 162(2) EPC will be effective only if you have also fulfilled all the requirements of Rules 161 and 162 EPC on entry into the European phase (i.e. you have paid any claims fees due and, where required, submitted a response to the WOISA under Rule 161(1) EPC).
If you omitted to file a waiver or if you did not fulfil the further requirements for the waiver, the communication under Rules 161(1) and 162(2) EPC will be issued. However, you can still shorten the subsequent six-month period by filing an early response to the communication and explicitly stating that you do not wish to use the remainder of the period.
Further information on the communication under Rules 161 and 162 EPC and the waiver option can be found in the Guidelines for Examination in the EPO, Part E-IX, 3.2, and in the notice from the EPO dated 30 November 2015 concerning ways to expedite the European grant procedure.
To ensure the proceedings continue to move quickly, you should not wait until the grant stage to file any voluntary amendments but should file them as soon as possible too, e.g. already on entry into the European phase. If you wish to file amendments, you should bear in mind that they may not go beyond the content of the application as originally filed (Article 123(2) EPC).
Where a request to participate in the programme for accelerated prosecution of European patent applications ("PACE") is on file, the examining division will aim to issue its next official communication within three months from receipt of the applicant's latest action.
The request can be filed only once during the examination stage and is free of charge. If you want fast processing of your Euro-PCT application right from the outset, you should already file the PACE request on entry into the European phase.
You must file your PACE request online using EPO Form 1005, which contains a preformulated request for accelerated examination. It is not included in the public part of the file so the public will not be informed of your wish to accelerate examination.
In order for your application to remain in the PACE programme, you must take care not to delay the proceedings. In particular:
A PACE request does not shorten the six-month period for replying to a communication under Rules 161(1) and 162(2) EPC. Unless you have waived your right to the communication altogether, this period can only be shortened by filing an early reply in which you explicitly state that you will not use the remainder of the period to file further amendments.
No. A PACE request does not result in early processing of the file under Article 23(2) or 40(2) PCT. Nor does an effective request for early processing mean that the application is automatically part of the PACE programme. Instead, each request must be filed separately.
To ensure that the prosecution of your Euro-PCT application before the EPO as designated or elected Office will be accelerated, it is recommended that you: