On May 31, a decision of the President of the European Patent Office (EPO) dated April 8, 2021 was announced exempting applicants claiming the priority of a first filing made in the Peopleʹs Republic of China (PRC) from filing a copy of the search results under Rule 141(1) EPC – utilisation scheme.

The President of the European Patent Office, having regard to Rules 141(1) and (2) and 70b(1) and (2) of the European Patent Convention (EPC), has decided that 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 under Rule 141(2) EPC, where the priority of a first filing made in the PRC is claimed.

This decision shall enter into force on 1 July 2021 and shall apply to European patent applications in respect of which an invitation under Rule 70b(1) EPC has not yet been dispatched by the date of entry into force of this decision.

A two-year pilot between the EPO and the China National Intellectual Property Administration (CNIPA), which started on December 2020, has enabled Chinese nationals and residents to select the EPO as their International Searching Authority (ISA) for applications filed in English under the Patent Cooperation Treaty (PCT). The pilot is open to applicants filing with either the CNIPA or the World Intellectual Property Organization's International Bureau (IB) as receiving Office and limited to a total of 2,500 applications in the first 12 months and 3,000 applications in the second 12 months.

PCT applicants who are nationals or residents of the People's Republic of China and whose international search was performed by the EPO as ISA is able to file a request for international preliminary examination with the EPO. They should pay the corresponding fee directly to the EPO, pursuant to PCT Chapter II.

The EPO establishes international search reports (ISRs) and written opinions (WO/ISAs) which provide an applicant with a clear evaluation of their invention's patentability and so with a solid basis for taking timely and informed decisions as to whether or not to enter the various national/regional phases under the PCT, in particular the European phase. In addition, with an ISR and a WO/ISA from the EPO, Chinese applicants wishing to accelerate the prosecution of their application can enter the European phase earlier, request early processing and have their file examined without a supplementary European search.

@2021 China IP Magazine