Patent Protection in Hong Kong
Standard and short-term patents
There are two types of patents in Hong Kong: standard andl short-terml The period of protection of a standard patent can be renewed annually after the end of the third year, up to maximum term of 20 years. Protection under a short-term patent is renewable after the end of the fourth year, up to a maximum term of eight years.
Applying for a standard patent
The grant of a standard patent in Hong Kong is based on the registration of a patent granted by one of three patent offices, called “designated patent offices”: the State Intellectual Property Office, People's Republic of China,l the European Patent Office, in respect of a patent designating the United Kingdom,l the United Kingdom Patent Office.l A standard patent application is made in two stages by filing a request to record and a request for registration and grant. The applicant should file in Hong Kong: a request to record within six months after the date of publication of the patentl application (“designated patent application”) in the designated patent office; and a request for registration and grant within 6 months after the date of grant of the patent (“designated patent”) by the designated patent office or publication of the request to record by the Registry of the IPD of the HKSAR Government, whichever is the later
Applying for a short-term patent
The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of three designated patent offices. A short-term patent application in Hong Kong is made by filing a request for grant of short-term patent supported by the documents and information required.
What happens to an application for registration of a patent after it is filed with the Registry?
The process of examining an application for a patent is divided into the following stages:
(1) examination of the filing date,
(2) formality examination,
(3) publication of the patent application or grant of patent, and issue of certificate of grantl of patent (only applicable to request for registration and grant of standard patent and application for short-term patent).
Standard patent application – request to record
If there is no deficiency in your application and all requirements are met, the whole process may take within three months from the date of receipt of the request to record to its publication by the Registry.
Standard patent application – request for registration and grant
If there is no deficiency in your application and all requirements are met, the whole process may take within three months from the date of receipt of the request for registration and grant to the issue of the certificate of grant of patent by the Registry.
Short-term patent application
If there is no deficiency in your application and all requirements are met, the whole process may take within three months from the date of receipt of the short-term patent application to the issue of the certificate of grant of patent by the Registry.
The first stage – examination of the filing date
Shortly after receiving the application, the Registry will send a notice to the applicant, giving the filing date of the application.
Standard patent application – request to record: filing date
The Registry will accord a filing date to the request to record provided that the request states the name of the applicant, specifies the designated patent application and includes the designated patent application number, its publication number and date of publication. Patents.doc 4
Standard patent application – request for registration and grant: filing date
The Registry will accord a filing date to the request for registration and grant provided that the request identifies the applicant, specifies the designated patent and includes the publication number of the request to record, the publication number of the designated patent and its date of publication.
Short-term patent application: filing date
The Registry will accord the short-term patent application a filing date provided that it states the name of the applicant and a description of the invention is provided.
The second stage – formality examination
After giving the filing date to the applicant, the Registry will examine the formalities of the application. The formalities are the information required in the application form and the supporting documents. There is no substantive examination of the application (e.g. the novelty and inventiveness of the invention) and the Registry does not search records of prior registered patents.
If the application is not in order, the Registry will give notice to the applicant to correct the deficiencies within two months. Failure to correct deficiencies may result in the application being deemed withdrawn.
The third stage – publication and grant
If an application is in order, the Registry will publish the patent application or grant a patent, publish the patent application or advertise the grant by notice in the Hong Kong Intellectual Property Journal (http://www.ipd.gov.hk/eng/ip_journal.htm) and issue a certificate of grant of patent (only applicable to requests for registration and grant of standard patent and application for short-term patent). Usually a certificate of grant of patent can be issued within three months after an application is filed (only applicable to request for registration and grant and application for short-term patent). The proprietor of a patent can bring civil proceedings against infringements committed after the certificate of grant of patent is issued.
Recommendation - What strategies should you adopt to protect your patent in Hong Kong and separately in Mainland China?
You may consider adopting the following strategies to protect your patent:
1. Only the proprietor of a patent is entitled to register a patent for an invention. A person may obtain ownership of a patent and become its proprietor by commissioning the creation of an invention, employing somebody under a contract to create an invention or assignment of a patent, etc.
2. Only new inventions are registrable. You need to keep your invention confidential until you file your corresponding designated patent application and short-term application. Using your invention in manufacturing or publishing or disclosing it (for example publishing it in a catalogue or placing an order to manufacture the invented product) before filing you patent application may mean that even if you are granted a patent for your invention, the registration may become invalid because your invention was not considered new on the date of filing the application date.
3. It is only in limited circumstances that disclosure does not destroy the novelty of anl invention. Sections 95 and 109 of the Patents Ordinance of Hong Kong provide for the specific circumstances of and requirements for non-prejudicial disclosure. If you need to disclose details of your invention before filing an application, you should take professional advice to ensure that the novelty of your invention would not be destroyed upon disclosure.
4. You should register your patent separately in the two places in Hong Kong and in thel Mainland, as there are separate systems of registration and protection. Registering your patent in the Mainland does not automatically give you protection in Hong Kong.
5. You should apply for a patent for your invention as soon as possible to ensure that it isl available for use in your business and that you can take immediate action against any infringement.
6. You may consider taking legal action under the Patents Ordinance of Hong Kong in case of any infringement of your patent rights in Hong Kong. Patents.doc 6
7. Most importantly, you should seek professional advice from an intellectual property lawyer or agent with regard to all aspects of your intellectual property rights, including trademark, copyright, registered design or patent.
Online search
The IPD provides a free online search service at esearch.ipd.gov.hk, through which you may check information on registered patents, published patent applications and proprietors of patents.
