Hong Kong to amend its patent law

June 08, 2016

Intellectual Property Alert

Author(s): Kenneth Choy

Hong Kong’s Legislative Council recently passed a bill that will allow Hong Kong to issue its own original grant patents, strengthen its short-term patents and regulate patent professionals in Hong Kong. This alert discusses what businesses and individuals need to know.

At the third reading of the Patents (Amendment) Bill 2015 on June 2, 2016, Hong Kong’s Legislative Council overwhelmingly passed a bill that will have a big impact on Hong Kong’s patent law. The bill now awaits the signature of Hong Kong’s Chief Executive and publication in the official Gazette before it becomes law.

The new law focuses on three main areas of change. It will allow Hong Kong to issue its own original grant patents, strengthen its short-term patents and take the first step in regulating patent professionals in Hong Kong. There are also other technical and other changes in the amended law. The important changes are discussed below.

Original grant patent

The most significant change is the introduction of the original grant patent (“OGP”) to Hong Kong. Currently, Hong Kong has a re-registration system whereby to obtain a Hong Kong standard patent, an applicant must first file a patent application with one of three designated patent offices, record the application with the Hong Kong Patent Registry and, upon granting of the designated patent, request the Registrar to grant a Hong Kong 20-year standard patent based on the designated patent grant. Under the amended law, while maintaining the re-registration system, an applicant now has the option to seek an OGP directly without having to file in a separate jurisdiction.

To obtain an OGP standard patent, an application has to undergo substantive, as well as formal, examination. Initially, the examination will be outsourced to the Chinese State Intellectual Property Office (“SIPO”). SIPO has also agreed to train Hong Kong examiners so that they will eventually have the capability of conducting substantive examination. It is expected that the process will take several years after implementation of the amended law.

Following formal examination for filing deficiencies, an application will be published. The new system allows any person within a prescribed time to file written notice with the Patent Registrar setting out observations regarding patentability of the application and grounds for such observations. When carrying out substantive examination, the Registrar must consider such third-party observations. However, the person filing the observations is not a party to any proceedings in the prosecution of the application simply on the basis of having filed observations.

Short-term patents

Another feature of the amended law relates to Hong Kong’s short-term patents. A short-term patent is a patent with one independent claim. It has a term of four years, renewable one time for a total term of eight years. A short-term patent is based on a search report from an approved search authority and is granted on formal examination for filing deficiencies but without substantive examination.

Under the new system, a short-term patent may have two independent claims but is still granted based on formal examination alone. However, within the prescribed time after the granting of the short-term patent, any person may file written notice of observations on the patentability of the invention setting out the observations and grounds for the observations. The Registrar must send a copy of the observations to the proprietor.

After granting, the proprietor may request substantive examination of the short-term patent. In addition, any other person may request the Registrar to carry out substantive examination if the person satisfies the Registrar that there are reasonable grounds to suspect that the invention is not patentable or “because of the person’s legitimate business interests, it would be reasonable for the examination to be carried out.” Where observations have been filed against the short-term patent, the Registrar must consider such observations filed by third parties. Once filed, a request for substantive examination may not be withdrawn.

If the Registrar finds that the short-term patent is deficient, written notice setting out each noncompliance with examination requirement will be given to the proprietor and the proprietor may respond by amending specifications to enable the patent to comply with requirements.

Where the proprietor is unable to comply, the Registrar must revoke the short-term patent. Where the Registrar is of the view that the patent complies with requirements, the Registrar shall issue a “certificate of substantive examination” to the proprietor.

A proprietor cannot commence enforcement proceedings before a court unless a certificate of substantive examination has been issued. This requirement effectively means that a short-term patent must successfully undergo substantive examination before it can be enforced. As a practical matter, a potential licensee may have reasonable and “legitimate business interests” in insisting that a short-term patent is issued a certificate of substantive examination before entering into any licensing arrangement.

Patent practitioners

A third are of change relates to patent practitioners. Currently, there is no regulatory framework overseeing patent agents in Hong Kong. Thus, anyone, regardless of qualification, may use the title of “patent agent” or “patent attorney” in Hong Kong. The new law takes the first step in regulating the patenting industry. Use of certain titles and descriptions is prohibited and it will be an offence to knowingly use or permit the use of the title or description of certified patent agent, registered patent agent, certified patent attorney, registered patent attorney or a title that gives the impression that a person holds a qualification recognized by law or endorsed by the Hong Kong government for providing patent agency services in Hong Kong. However, a person holding such qualification in another jurisdiction may use such title or description so long as the jurisdiction of qualification is clearly stated. Qualified legal professionals such as solicitors, barristers or registered foreign lawyers may provide patent agency services under their title as qualified legal professionals.

Although the patenting profession is disappointed that the new law does not provide a framework for certifying and regulating patent professionals, it does prohibit non-qualified persons from using titles claiming they hold certification while allowing those qualified in other jurisdictions to continue to show such foreign qualifications. The patenting profession hopes that this prohibition is just a first step in developing a Hong Kong-recognized certification process for such professionals.

The Patents (Amendments) Bill 2015 is expected to be signed by the Chief Executive but there are still implementation procedures to be specified. It is not expected to be promulgated into law until 2017 at the earliest. The passage of this long-awaited bill is expected to help Hong Kong modernize its antiquated patent system as Hong Kong seeks to become an innovation hub.

The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.

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