Draft regulations on patent firms advertising, deadline 31 October 2023 (!) This was announced today (26 October 2023) by the All China Patent Attorney Association, by email. I have its English translation and the original Chinese document. Deadline to comment is 31 October 2023. I understand that my comment is not wanted.

After a brief look at the draft, the regulations seem reasonable, including allowance to advertise through media including radio and TV, no smearing, no solicitation, no fabrication and exaggeration, and the like. Some interesting prohibition include the following (which means someone have done or are doing these):

  • Article 9 - prohibition on expression or implication on a special relationship with judicial agencies, administrative agencies, social groups and their staffs
  • Article 11
    1. Contact clients of other patent agencies regarding specific case
    2. Making improper promises on case results by including authorization, bragging about exaggerated capabilities, promising authorization rates, promising case handling results, etc., or by promising to pay fees after the patent application is granted
    3. Maliciously lowering the price of patent agency services through low-price competition, low-price bidding, free agency (No more cut-throat price? Hm......)
    4. Maliciously hyping up cases, or using cases that have not been concluded or whose judgment results have not been made public (so I am not allowed to report CN cases anymore?)
    5. Soliciting business through illegal commissions, kickbacks, referral fees and other improper methods (Oops)

For PCT application filed with CNIPA as the RO, using EPO as ISA This in fact has happened a while (at least since last year 2022, which I was told at the EPO). This pilot program has now been extended to 30 November 2026, with a cap of 3000 applications in one year. See https://lnkd.in/dbksVZRD

This could be done as below:

  1. The CNIPA is the Receiving Office of the PCT application.
  2. The PCT application is filed electronically.
  3. The PCT application is filed with an English specification.
  4. While PCT file fees are paid to the CNIPA, if the EPO is chosen as the ISA, the search fees of EUR1775 have to be paid to the EPO directly.

As most Chinese applicants file in Chinese, 3) would be an obstacle. 4) is also a barrier, but is still doable by opening an account at the EPO.

Apparently, when entering the EP national phase, for such PCT applications, EP search fees should be waived (that is what I was told by the EPO during my visit in Oct 2022).

I may do this for a few PCT applications that I am going to file in the future, in English specification of course. I will provide update on my experience if the client is going with this.

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