I recently read an article by a prominent entrepreneur and inventor called Stephen Kay who writes for Forbes about how to use intellectual property rights to make money. The article was Before You Begin The Patenting Process, Read This and featured a useful section on how to get the most out of the patenting process. One of the key takeaways from the article was how to work with your patent attorney. If you’re based in Hong Kong, it occurred to me that it would be useful for inventors and companies to know how to get the most out of your Hong Kong based patent attorney (from a patent attorney’s perspective).
Hong Kong Based Patent Attorney
First things first though, you need to understand that there’s no such thing as a ‘Hong Kong Patent Attorney.’
Currently, Hong Kong does not have any qualification recognised by law or endorsed by the Government, for providing patent agency services in Hong Kong. Consequently, you need to be very careful when choosing your patent attorney.
So, if there’s no qualification for a Hong Kong patent attorney, who are the patent attorneys in Hong Kong?
In short, patent attorneys that are qualified in other jurisdictions. I, myself, am a qualified UK patent attorney and European patent attorney. This means that I’ve spent several years learning the patent laws of the UK and Europe and passed all required qualifying exams to earn the right to call myself a UK or European patent attorney.
You may find other similarly qualified patent attorneys in Hong Kong, including Australian patent attorneys, US patent attorneys, and Chinese patent agents.
Accordingly, whilst none of these patent attorneys are ‘Hong Kong patent attorneys’, you may trust that the work of a patent attorney qualified to practice in major jurisdictions overseas is of a high standard. Of course, the quality will vary even amongst qualified patent attorneys but then it becomes a question of experience and qualifications in the area of your invention.
We might refer to such patent attorneys as Hong Kong based patent attorneys and this is the term I’ll use for the purposes of this article.
So, how can you get the most out of your Hong Kong based patent attorney? Here are five tips for the top:
- Equip yourself with a basic understanding of patents
- Do some patent searching
- Arrange a free consultation
- Provide as much information as possible
- Engage with your Hong Kong based patent attorney
1. Equip Yourself with a Basic Understanding of Patents
As with anything, if you have some knowledge of the field in which you’re seeking advice or assistance, you’ll be able to have much more involved and productive conversations with your Hong Kong based patent attorney.
If you don’t know what prior art is or how to understand a claim, or have never even read a patent, your discussions with your Hong Kong based patent attorney will be very one-sided. This could mean that you don’t get the protection you want or that the patenting process takes longer or is costlier than it needs to be.
Whilst a Hong Kong based patent attorney should do his/her best to explain the situation to you in simple terms, you will be far more equipped to convey your requirements and concerns if you have a deeper understanding of patents.
If you haven’t already, you can start by reading our ultimate patent guide which explains the patenting process in detail.
2. Do Some Patent Searching
Before contacting your Hong Kong based patent attorney, you might try to do some of your own patent searching. Whilst patent searching can be a fine art and quite challenging at times, even a rough patent search could be useful.
A patent search may reveal earlier patents that already describe your idea and, therefore, indicate your invention is not new and might not be patentable. If you find anything that discloses something similar to your invention, it might help you to further develop your invention and more clearly distinguish your invention from the prior art.
Any patent results could also be useful for your Hong Kong based patent attorney who may be able to more quickly assess the patentability of your invention and prospects of obtaining a patent at your initial meeting.
Which brings us to the next step…
3. Arrange a Free Consultation
Many entrepreneurs or SMEs may be reluctant to approach a patent attorney to seek some initial advice. It might be that they’re worried of being ‘on the clock’ and incurring a huge invoice. Some may have heard horror stories of people being charged ridiculous fees for uninstructed work.
But fear not, most Hong Kong based patent attorneys will be happy to offer a free initial consultation to discuss your idea or requirements. After all, it would be pretty bad for business if no one ever came to see you for fear of being stung for a hefty bill! If a Hong Kong based patent attorney is trying to charge you for an initial consultation, it may be time to look elsewhere.
We at Evolution offer a free one-hour consultation! That’s generous within the industry and should be enough time to discuss your idea and the possible next steps. An initial consultation will allow you to have open discussions with your Hong Kong based patent attorney and get a feel for whether you think they have the required knowledge and experience and will be a good fit for your company or enterprise.
Once you’ve arranged an initial consultation, you should come well prepared with as much information as you have on your invention. Why is this important? Read on…
4. Provide as Much Information as Possible
A patent application for your invention can only be as good as the information you provide.
You need to remember that a Hong Kong based patent attorney’s job is not to invent for you. Whilst a good Hong Kong based patent attorney will do his/her best to ‘flesh out’ certain technical aspects of your invention, its up to you as the inventor to provide the detail for the invention to work.
It’s critical, therefore, that you provide as much detail about your invention as possible to your Hong Kong based patent attorney. This is because, once your patent application has been filed, it’s not possible to add any new matter. Accordingly, if there is anything of critical importance to your invention, it should go into your patent application at the point of filing.
Some of you might be reluctant to disclose everything about your invention. After all, a patent application will ultimately be published and open to inspection by your competitors. But, if you don’t disclose all information to your Hong Kong based patent attorney, you will not be able to discuss your concerns and whether or not it is wise, or even possible, to omit certain details.
You’d be pretty upset if a vital piece of information that was left out of your patent application could have been the difference between a granted patent and a refused application.
One last thing… don’t be afraid to disclose your invention to a patent attorney. A Hong Kong based patent attorney that is qualified in a major jurisdiction is usually regulated by an organisation or body. As a UK Chartered patent attorney, I am regulated by the Intellectual Property Regulation Board and bound by the IPReg code of conduct which requires me to keep client affairs confidential. You can therefore rest assured that details of your invention will be kept confidential. It would be very bad for business if a patent attorney disclosed its clients’ inventions to the public so it just isn’t going to happen!
5. Engage With Your Hong Kong Based Patent Attorney
My final bit of advice is to actively engage with your patent attorney. We’re generally a very friendly bunch and more than happy to discuss your invention at any stage of the process. And we’re not all out to relieve you of your hard earned cash!
The patenting process can and will go on for several years and it’s very complicated. It’s therefore important that you build a solid relationship with your Hong Kong based patent attorney and feel confident that you can trust them with your work. Many client-attorney relationships can last many years, even decades! It’s important therefore to not be afraid to pick up the phone and have open discussions with your Hong Kong based patent attorney.
An ongoing relationship will help your patent attorney to understand your requirements and achieve the protection you desire. It’ll also help you to learn and develop a better understanding of the patent process and how it all works. It’s often much easier for a patent attorney to work with a knowledgeable client. It’s really a win-win for both the client and the attorney!