Hong Kong introduces an “original grant” patent system



December 09, 2019

Intellectual Property Alert

Author(s): Henry J. H. Wheare, Minnie Au

Hong Kong has up to now granted two types of patents, namely, a standard patent derived from an invention patent granted overseas; and an unexamined short-term patent. A new milestone for intellectual property protection in Hong Kong will be reached on 19 December 2019, when the territory will for the first time also have its own domestically examined patent system.

Hong Kong has up to now granted two types of patents, namely, a standard patent derived from an invention patent granted overseas; and an unexamined short-term patent (“STP”). A new milestone for intellectual property protection in Hong Kong will be reached on 19 December 2019, when the territory will for the first time also have its own domestically examined patent system.

Following implementation of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019, the “original grant patent” (OGP) system will offer an alternative route for seeking standard patent protection in Hong Kong for a maximum term of 20 years. The existing re-registration system of UK, European (UK), and Chinese patents will continue in parallel, as will the existing short-term patent system, but with important refinements.

The current system

The current patent system of Hong Kong grants two types of patents, namely standard patents and short-term patents (“STP”).

The process of acquiring a standard patent in Hong Kong is by re-registration of a patent obtained in one of the three “designated patent offices,” namely the State Intellectual Property Office in Mainland China (“SIPO”), the United Kingdom (“UK”) Patent Office, and the European Patent Office for patents designating the UK. After an application has been submitted to the Hong Kong Patents Registry (“Patents Registry”), it only conducts “formality examination” on documents submitted with no substantive examination as to whether the patentability requirements under the law have been fulfilled (because the underlying patent has already been examined). The period of protection for a standard patent may last for a maximum term of 20 years from the filing date of the corresponding designated patent.

On the other hand, the grant of a short-term patent provides a quicker and cheaper way to protect inventions with a shorter commercial life cycle. However, only one independent claim is allowed and a search report from WIPO, SIPO, UK PO, or EPO must also be filed with the application. As with standard patents, the Patents Registry only conducts a formality examination with no substantive examination of the underlying invention. The maximum term of protection for an STP is only eight years.

The new system

The new OGP system will run in parallel with the existing re-registration system. An application filed under the existing system will be called a standard patent (R) application and the Patents Registry will continue to grant a standard patent (R) where a prior grant has been obtained in one of the above three designated patent offices. There is no plan to expand the system to patents granted by other patent offices, to ensure continuity of the existing patent system and avoid possible discrepancies between different patent systems. The major changes to the system for obtaining patents are summarized as follows:

Introducing the OGP system

The introduction of the OGP system will offer an alternative route for seeking standard patent protection in Hong Kong for a maximum term of 20 years from the date of filing in Hong Kong.

Under the OGP system, an application for a standard patent (O) can be filed directly with the Patents Registry in English or Chinese, claiming priority from any corresponding filing if required. The Patents Registry will conduct a formality examination to ensure that the application fulfils the minimum filing requirements and satisfies other formal requirements before publication of the application after around 18 months from the application or priority date. Upon the applicant’s request within three years from the application date (or earliest priority date), the Patents Registry will proceed with substantive examination to determine whether the OGP application has satisfied the examination requirements of novelty, inventiveness, and utility (“susceptible of industrial application”). Unlike under the present system, third-party observations and amendments will be possible. If the application is found to have satisfied all the examination requirements, the Registrar will grant and publish the patent accordingly.

Until in-house substantive examination capacity has been built up, the Patents Registry will outsource the technical aspects of examination to SIPO examiners, but the substantive examination report will be prepared by Hong Kong examiners and under Hong Kong patent law (which broadly follows UK and European patent law). It remains to be seen how clear this distinction will be achieved in practice.

Amending the short-term patent system

Four major amendments will be introduced under the amended short-term patent regime.

  • First, up to two independent claims will be allowed.
  • Secondly, while the filing of a search report with the application will still be required, a post-grant substantive examination will be introduced to allow anyone with a legitimate concern on the validity of an STP to request the Patents Registry to conduct substantive examination under which the STP may be confirmed or revoked.
  • Thirdly, to prevent potential abuse, the owner of an unexamined STP has to provide certain patent information within 14 days (basically the patent number and any unpublished amendment) in response to a request from an alleged infringer or it will be deemed to have made an “unjustified threat” and subject to action by the infringer. (NB: “letters before action” must be carefully worded, or in some cases not sent, in Hong Kong to avoid such threats actions in patent, design, and trade mark cases).
  • Finally, request for substantive examination will become a prerequisite to commencing legal proceedings to enforce an STP.

Patent practitioners

Under the current system, any person, with or without the relevant technical and/or legal expertise may claim to be and practice as a patent practitioner. Under the amendments, interim measures are being adopted to prohibit the use of certain titles and descriptions, such as “certified” or “registered” patent agent or patent attorney, or any that might reasonably cause someone to believe that the person holds a specifically granted and legally recognized or government endorsed qualification to provide patent agency services in Hong Kong. Only practitioners with titles relating to their qualification for lawfully providing “patent agency services” in a jurisdiction outside Hong Kong and clearly indicating that jurisdiction will be allowed to use those specific titles. Any unlawful use of prohibited titles may be liable on conviction to a fine up to HK$500,000.

Conclusion

In conclusion, the new patent system is more robust and allows a less expensive patent option to applicants who only seek the grant of a standard patent in Hong Kong. We have yet to see the response for a cost-effective OGP system in view of the small market size in Hong Kong. In any case, cooperation with patent offices in other jurisdictions on mutual arrangements for expediting examination of patent application will improve the attractiveness of the OGP system and be beneficial to patent owners in Hong Kong.

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.

Back to top