What is the PCT International Search Unit Pilot Project?

According to the joint communique of the State Intellectual Property Office of China (SIPO) and the European Patent Office (EPO) on the pilot project of international searchers under the Patent Cooperation Treaty (PCT), the SIPO and the European Patent Office (EPO) will launch a two-year pilot project on December 1, 2020. Under the project, nationals and residents of the People's Republic of China can choose the European Patent Office as the International Search Unit (ISA) for international applications filed in English under the Patent Cooperation Treaty (PCT).

To submit to the China state intellectual property office and choose the European Patent Office as the international retrieval unit of the international application, the European Patent Office will provide the applicant with the international search report and written opinion, patentability of the invention are clear assessment of whether judgment in a timely manner to the applicant based on PCT treaty has entered into the phase of each country/region phase (especially in Europe) provides the basis.

In addition, Chinese applicants who hold an international search report and written opinion issued by the European Patent Office (hereinafter referred to as "EPO") and wish to speed up the application process can request early examination and advance to the European regional stage without the need for a supplementary European search. In other words, by choosing the EPO as the International Search Unit, the review process for applications entering the European Area Phase (Euro-PCT applications) through the PCT pathway can be automatically shortened.

Why speed up European patent applications?

In recent decades, China-EU economic and trade relations have been developing steadily.

As of 2019, the EU has been China's largest trading partner for 16 consecutive years, while China has been the EU's second largest trading partner for 15 consecutive years. · In 2020, China will surpass the United States to become the largest trading partner of the European Union for the first time, while the European Union will become the second largest trading partner of China after ASEAN. · By the end of 2020, negotiations on the China-EU Comprehensive Investment Agreement (CECAI) were completed as scheduled, and China-EU economic and trade cooperation is expected to continue to be strengthened and deepened.

Europe is the birthplace of the intellectual property system. The intellectual property laws and systems of European countries and European regional organizations are relatively complete. For Chinese enterprises facing the European market, it is of great significance to carry out patent layout in Europe. EPO data in recent years shows that the number of patent applications filed by China to the EPO is growing rapidly, and since 2017, China has entered the top five countries in the EPO's patent filing list. However, due to the large number of cases filed by EPO and the large backlog of cases, the period from application to authorization of European patents is relatively long, which often takes 3-7 years, and some even takes more than 10 years.

There are a number of measures that can be taken to speed up the review process during the European patent application process. After the launch of the PCT International Search Unit Pilot Project, applicants can take advantage of this project to start with the international phase of the PCT!

Why do Chinese applicants receive the Supplementary European Search Report (SESR) for their Euro-PCT applications?

The applicant can apply for a patent in EPO through the Paris Convention or the PCT, and the application in the European stage through the PCT is called the Euro-PCT application.

According to the relevant provisions of the European Patent Law, if EPO is selected as the International Search Unit (ISA) or Supplementary International Search Unit (SISA) in the international stage, EPO will not issue the Supplementary European Search Report (SESR) for the Euro-PCT application. If the EPO is not selected as either an International Search Unit (ISA) or a Supplementary International Search Unit (SISA) at the international stage, the EPO must issue a Supplementary European Search Report (SESR) for the Euro-PCT application.

For Chinese applicants Euro - PCT application, according to the bureau of central Europe two PCT retrieval unit pilot project before starting the provisions of the international stage, the main retrieval unit can only be the Chinese Patent Office, and the Chinese applicants in practice generally do not request additional international retrieval, as a result, the Chinese applicant should submit to the EPO Euro - PCT application, need a retrieval request and the request for substantial examination, and pay the search fee, examination and fees, and EPO must for the Euro - PCT application issue a supplementary European search report (SESR).

It is usually at least two months before the applicant receives the Supplementary European Search Report (SESR) and the EPO's preliminary opinion on the patentability of the application, and the applicant must respond to this opinion. The time limit for response is usually six months.

It can be seen that for Euro-PCT applications, Chinese applicants often spend more than one month or even more than one year to obtain and reply to the Supplementary European Search Report (SESR).

How can the PCT International Search Unit Pilot Project be used to accelerate patent applications in Europe?

Chinese applicants may choose the European Patent Office (EPO) as the International Search Unit (ISA) during the International Phase of PCT, according to the pilot project of PCT International Search Unit (PCT).

In the international phase, if the Chinese applicants to choose the European Patent Office (ISA) as the international retrieval unit to do international retrieval, then the applicant submitted in Euro - Europe patents based on PCT application, simply requests examination as to substance, as well as pay examination and specified fee, without the need for retrieving the request and pay the fee, also need not spend time to get reply and supplement the retrieval report on the European (SESR).

It can be seen that for Chinese applicants who enter Europe through PCT, choosing EPO for international search in the international stage of PCT is equivalent to pre-setting the Supplementary European Search Report (SESR) for Euro-PCT application.

The advantages of this search front are obvious. On the one hand, it helps the applicant decide on the following application strategy. For example, if an international search issued by the EPO shows that there is little prospect of licensing the invention, the applicant may choose to keep the PCT out of Europe, or choose to apply for a utility model patent in some European countries. On the other hand, if the applicant decides to enter Europe according to the international search results issued by the EPO, the corresponding Euro-PCT application can be exempted from the SESR procedure and enter the review procedure as soon as possible. The applicant can also modify the claims according to the international search results while submitting the Euro-PCT application, so that the substantive review of EPO can be carried out on the modified text, thus further speeding up the review process of the Euro-PCT application.

Based on the current charge standard, select EPO to PCT retrieval for the overseas students is 1775 euro, by contrast, if you choose the Chinese Patent Office as retrieval unit, retrieve the fee is 2100 RMB), cost is high, but in view of the European Patent Office retrieval ability in the industry enjoyed a high evaluation, obtain a copy of the European Patent Office of the international search report, is worth to the applicant. Moreover, PCT applications that have requested EPO to conduct international search can be entered into EPO without paying the search official fee (1350 euros) and the domestic and foreign legal fees required to receive and respond to the Supplementary European Search Report (SESR) (usually costing hundreds or even thousands of euros). Therefore, from the cost point of view, it is advantageous to the applicant.

It is important to note that if a Chinese applicant intends to take advantage of the PCT International Search Unit Pilot Program, the PCT international application must be submitted in English.

Conclusion

For the applicant, the importance of high quality patent application and quick authorization is self-evident. If Chinese applicants want to gain a foothold in the European patent landscape, the services offered by the PCT International Search Unit pilot project are worth watching and trying!

Source：Huajin Intellectual Property Official Account      Date：March 18, 2021