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06 August 2021
The China National Intellectual Property Administration and the European Patent Office have reached a consensus that from July 1, 2021, there will be no need to submit a copy of the prior application search report made by the CNIPA when a European patent application or a Patent Cooperation Treaty application claiming priority from an earlier application in China filed with the EPO enters the European phase.
“As from July 1, 2021, following the decision of the EPO’s president António Campinos, all applicants claiming the priority of a first filing made in China will be exempted from filing a copy of the search results under Rule 141(1) European Patent Convention. The Official Journal EPO 2021, A38 states that, with regards to Rules 141(1) and (2) and 70b (1) and (2) of the EPC, the EPO shall include in the file of a European patent application a copy of the search results referred to in Rule 141(1) EPC, thus exempting the applicant from filing said copy, where the priority of a first filing made in China is claimed,” says Davide Luigi Petraz, a co-managing partner of GLP Intellectual Property Office in Italy. “This decision will apply to all European patent applications claiming a Chinese priority for which an invitation under Rule 70b(1) EPC has not yet been dispatched.”
According to the CNIPA’s press release, the smooth cooperation between the EPO and it in data exchange over the years has provided an important technical guarantee for the implementation of this policy. It will further simplify the process and improve the efficiency of patent application in Europe. It is another achievement of comprehensive strategic cooperation, following the launch of a two-year pilot project, which enables nationals and residents of China to select the EPO as their International Searching Authority for applications filed in English under the PCT.
The EPO was one of the first patent offices to establish a partnership with the CNIPA. For 36 years, the two offices have maintained friendly and cooperative relations and elevated their cooperation to a comprehensive strategic partnership in 2017. The two offices are committed to providing better services to IP users and have carried out in-depth cooperation in a broad range of areas.
“This initiative obviously improves the efficiency of the applicant’s patent application in Europe - it has further enhanced the enthusiasm and willingness of our clients to apply for European patents,” says Cynthia Tian, a partner at Jadong IP Law Firm in Beijing. “The number of Chinese companies applying for overseas patents has been on an increasing trend. The farther collaboration between the CNIPA and the EPO is undoubtedly a shot in the arm for Chinese companies applying for overseas patents, and better strengthens our confidence in IP protection as practitioners.”
“In particular, for processing our clients’ European patent applications, it is of great significance to reduce our workload and improve our efficiency. Ultimately, it ensures that we will provide better service to our clients,” says Tian.
Daniele Giovanni Petraz, a co-managing partner of GLP Intellectual Property Office agrees that “this new important implementation will further simplify the prosecutions of European patent applications for Chinese applicants, leading also to a reduction of the prosecution costs and hopefully shorter time to grant. Nevertheless, after only one month it is not easy to define the effective impact for European patent owners.”
Johnny Chan
