Section 22 of the Hong Kong Patents Ordinance deals with the filing of a request to record a so-called divisional designated patent application. It’s one of the more confusing sections of the Ordinance and requires some clarification. Therefore, we’ve put together the following guide to the Hong Kong divisional patent and how it works.
Two Stage Process
Firstly, let’s briefly recap how to obtain a Hong Kong standard patent (R) under normal circumstances.
If you’ve read the patents page of our website, or are already familiar with Hong Kong patents, you’ll know that a standard patent (R) is obtained by registering a “designated” patent via a 2 stage process.
Ordinarily, at the first stage, a request to record a designated patent application (a Chinese, European(UK), or UK patent application) is submitted to the Hong Kong Intellectual Property Department (IPD) under section 15 of the Hong Kong Patents Ordinance within 6 months of publication of the designated patent application.
At the second stage, when the designated patent application has been granted, a request for registration of the designated patent and grant of a Hong Kong standard patent (R) is submitted to the IPD within 6 months of publication of grant of the designated patent or 6 months of publication of the request to record (whichever is the later).
But what about in the case of a divisional designated patent application? Is the process any different?
In short, it depends on the circumstances and the wishes of the applicant…
This is where section 22 may come into play.
Section 22 – Hong Kong Divisional Patent
Let’s suppose Big Pharma Inc. is the owner of a pending European patent application (we’ll call this the “parent” designated patent application) and decides to file a European divisional application to pursue an alternative scope of protection in Europe (we’ll call this the “divisional” designated patent application).
Now let’s suppose Big Pharma Inc. wants to file a corresponding Hong Kong standard patent (R) application based on the divisional designated patent application.
In these circumstances, a request to record a divisional designated patent application can be filed with the IPD under section 22 provided the following conditions are met:
- a request to record has already been filed and published in respect of the parent designated patent application*;
- this “parent” request to record has not been refused, withdrawn or deemed to be withdrawn; and
- the divisional designated patent application:
- is in respect of the same subject-matter and does not extend beyond the contents of the parent designated patent application as filed in the designated patent office;
- has as its date of filing the date of filing of the parent designated patent application; and
- enjoys the same benefit of any right of priority as the parent designated patent application.
*This condition will not be satisfied if the request to record has been accepted for grant and the current date is after the date on which preparations for publication of the specification of a standard patent (R) to be granted in pursuance of the application have been completed.
So, in the above example, if Big Pharma Inc. has filed a request to record in Hong Kong in respect of the parent designated patent application, the existing request to record has been published and is still pending, and the divisional designated patent application is in respect of the same subject-matter as the parent designated patent application, and has the same filing date and priority details, a request to record the divisional designated patent application may be filed under section 22 in order to obtain a Hong Kong divisional patent.
Now you may be thinking…
I Don’t Meet the Conditions of Section 22!
Don’t panic just yet! Let’s say a request to record the parent designated patent application was never filed in Hong Kong, or the request to record has already been refused and is no longer pending, or that the request to record has now matured into a standard patent (R).
In these circumstances, it’s still possible to file a request to record a divisional designated patent application under section 15 (the normal route) within 6 months after publication of the divisional designated patent application. Such an application will result in grant of a normal Hong Kong standard patent (R) rather than a Hong Kong divisional patent.
Which brings us to the next question.
Do I Even Have to Request under Section 22?
What if the conditions for filing a divisional designated patent application under section 22 are met but the applicant does not want to request divisional status? Is it compulsory to submit a request under section 22?
In short, no. Provided you’re within 6 months of publication of the divisional designated patent application, the applicant may choose to file either a straightforward request to record under section 15 (without divisional status), or to file a request to record a divisional designated patent application under section 22.
The only real difference for the resulting standard patent (R) application is that a request under section 15 will not include details of the earlier application, whereas the request under section 22 will.
However, there is one relatively rare scenario in which you may have to file a request under section 22 rather than section 15. This will depend on where the respective deadlines fall and whether you’re outside one and inside the other…
What’s the Section 22 Deadline?
If the conditions of section 22 are met, an applicant may file a request to record a divisional designated patent application within the later of 6 months after the date of publication of the divisional designated patent application or publication of the parent request to record.
Let’s take a look at two different examples to see this in action:
Example 1
Big Pharma Inc.’s divisional European patent application was published by the European Patent Office (EPO) on 1 March 2018.
Big Pharma Inc.’s earlier request to record the corresponding “parent” designated patent application was published by the IPD on 1 February 2018.
In this case, the deadline for filing a request to record the divisional designated patent application under section 22 would be 1 September 2018 (subject to non-working days) i.e. 1 March 2018 + 6m.
Example 2
Big Pharma Inc.’s divisional European patent application was published by the European Patent Office (EPO) on 1 March 2018.
Big Pharma Inc.’s request to record the corresponding “parent” designated patent application was published by the IPD on 1 April 2018.
In this case, the deadline for filing a request to record the divisional designated patent application under section 22 would be 1 October 2018 (subject to non-working days) i.e. 1 April 2018 + 6m.
In practice, example 2 is likely to be quite a rare scenario but, as you can see, it can extend the filing deadline beyond that of a standard request under section 15.
Having said that, if possible, we think it’s always safer to work toward the deadline of 6 months from publication of the divisional designated patent application. Working to this deadline affords the applicant an opportunity to switch to a request to record under section 15 in the event the IPD finds one or more of the conditions of section 22 are not met. Otherwise, the applicant may find itself with a refused request to record and no easy solution!
You can imagine the sense of dread for the applicant (moreso for its agent!) if, in Example 2 above, a request to record was timely submitted on 1 October 2018 only to be informed by the IPD that the parent request to record was no longer pending and that the request to record under section 22 must be refused. Since the request was submitted more than 6 months after publication of the designated patent application, there would be no way to revert to a standard section 15 request! Game over…
I Have the Option, Why Choose Section 22?
You may be wondering why you should opt for a section 22 request rather than a section 15 request. And you’d be quite right to wonder!
If we take a closer look at the Patents Ordinace, section 22(2)(a) states:
Subject to section 103(1) (added matter), where a request to record a divisional designated patent application is filed under this section-
(a) it shall be deemed to have been filed on the date of filing of the earlier request to record and the application for a standard patent (R) shall have the benefit of any right of priority
https://www.elegislation.gov.hk/hk/cap514?xpid=ID_1438403303625_001
This sounds great. However, consider that a request to record a divisional designated patent application filed under section 15 (i.e. without requesting divisional status) shall have the benefit of any right of priority of the divisional designated patent application (which is the same as that of the parent designated patent application).
Furthermore, the deemed date of filing of the Hong Kong standard patent (R) (for the purposes of calculating the term of the standard patent (R)) will be the date of filing of the divisional designated patent application (which again is the same as that of the parent designated patent application).
So when all’s said and done, the priority date(s) and deemed date of filing of a standard patent (R) resulting from a request under section 15 will be exactly the same as those of a standard patent (R) resulting from a request under section 22.
The only difference is in the date of filing assigned to the request by the IPD and this has no affect on the determination of validity or calculation of the maximum term of the resulting standard patent (R)…
We put the following questions to IPD to seek their clarification:
- What is the benefit of a divisional request to record being deemed to have been filed on the same date as the filing date of the parent request to record?
- Are there any consequences for filing a new request to record without a declaration under section 22 (where a request with section 22 possible)?
We received this in response:
Section 22 recognizes the international patent practice on divisional application and provides an option for the applicant of a standard patent application to make a claim on an earlier application in Hong Kong in view of such a practice. If a claim under section 22 is made in the request to record for the divisional designated patent application, the details of the earlier application in Hong Kong will be entered in the register, providing to the public the benefit of knowing that the current application is related to an earlier application in Hong Kong.
If the request to record does not claim an earlier application in the form P4, the standard patent application will be treated as filed under section 15 of the Patents Ordinance. The applicant may choose to add a claim on the earlier application after filing the request to record if it so wishes.
So it seems section 22 was bolted onto the Patents Ordinance to align it with international patent practice but with no real thought given to how it would sit alongside section 15!
Nevertheless, and as you may have determined for yourself, there’re at least two scenarios in which divisional status might be useful or even desirable:
- The applicant wants third parties to be aware that a request to record is linked to an earlier request to record. This could make it more difficult for an alleged infringer of a divisional standard patent (R) to deny knowledge of its existence (and hence try to claim innocence in litigation proceedings) if it was already aware of the parent standard patent (R).
- More than 6 months has passed since publication of a divisional designated patent application but less than 6 months has passed since publication of the earlier “parent” request to record. In this relatively rare scenario, and as discussed in detail above, a request to record a divisional designated patent application could still be validly filed under section 22 despite having missed the section 15 deadline.
In the majority of cases, though, it’s simply a matter of choice rather than necessity.
Takeaway
Provided the conditions of section 22 are met and you’re within the deadlines, you have the option to file a request to record a divisional designated patent application in Hong Kong with divisional status.
Whether to include a request for divisional status may depend on whether you want the public to know that a given standard patent (R) application is linked to an earlier standard patent (R) application. It may also depend on whether a request for divisional status under section 22 is needed to allow timely filing.
Ultimately, it will depend on the circumstances of the case and the wishes of the applicant.
If you’re considering filing a Hong Kong divisional patent application or would like to know more about standard patents in Hong Kong, please contact us for advice.
