Author of this article: Lv Guofang, China Process and Information Department

On July 1, 2024, the State Intellectual Property Office issued a notice on the amendment of PCT Implementing Regulations, which mainly involves the use of mixed language submission in the specification and/or claims of international applications to protect the interests of applicants. This is a good remedy.

To make it easier to understand this modification, let’s take a look together with a case study.

Case: The client “Shenzhen XXX Company” notified you on the morning of July 3, 2024 to assist in applying for PCT international application, claiming the priority of Chinese patent application A, with a priority date of July 3, 2023, and designating the European Patent Office as the international search unit.

1. It may not be possible to complete the client’s commission, as the European Patent Office is designated as the international search unit and can only be submitted in English (the European Patent Office does not accept Chinese). The legal requirement is to translate the entire application document into English on the same day, which may face some uncertain risks and cause inconvenience to the applicant;

2. The client’s entrustment can be completed, but the client’s requirement of designating the European Patent Office as the international search unit cannot be met, so the patent application can only be submitted in Chinese, and the China National Intellectual Property Administration of China can be used as the search unit.

After the effective date of July 1, 2024, customer needs can be met through a mixed language submission mode. Simply translate one of the instructions or claims into English and submit it to the Chinese acceptance office. We can choose to translate the claims because the content text is less than the instructions. This way, we can fulfill the customer’s commission and also meet the customer’s requirement to designate the European Patent Office as the international search unit;

2. Deadline for submitting supplementary translation:

a) Proactively submit the translation as soon as possible to avoid the examiner issuing a notice requesting the submission of the translation, thus saving process and speeding up the review cycle of the case;

b) If the supplementary translation cannot be completed before the examiner issues the document, and if the examiner issues a notice requesting supplementary translation on August 2, 2024, the applicant should submit the English translation of the specification or claims to the Chinese acceptance office on September 3, 2024;

c) If the application is still not submitted within the deadline of September 3, 2024, it can be completed by October 3, 2024 at the latest. Otherwise, the international application will be considered withdrawn.

1. The amendment to the PCT rules does not involve the abstract or the accompanying drawings, so the abstract and the accompanying drawings still need to be translated into English for submission;

2. The supplementary translation needs to ensure accuracy and consistency with the original application documents.

Of course, what everyone is most concerned about may also be the issue of official fees. I would like to assure you that if the specification or claims involve mixed language submission, there will be no official fees for relief through supplementary translation.

The State Intellectual Property Office has also published answers to questions regarding the provisions of the PCT Implementing Regulations in the Patent Cooperation Treaty column. Attached is a link for your reference and interpretation: https://www.cnipa.gov.cn/art/2024/7/1/art_332_193456.html

Please also attach the latest PCT Patent Cooperation Treaty Implementing Regulations: https://www.wipo.int/pct/zh/texts/index.html