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Hong Kong Patent – Protect Your Inventions

At the time of publication, there are currently two types of Hong Kong patent, namely, a short-term patent and a standard patent. In addition, a third type of Hong Kong patent known as an originating grant patent (OGP) will shortly be introduced although the precise date is currently unknown.

A short-term Hong Kong patent is, as the name suggests, a relatively short-lived patent which has a maximum term of 8 years.

Similar patents are available in other countries and are often known as ‘petty patents’, ‘utility model patents’ (not to be confused with utility patents in the US), and ‘innovation patents.’

It’s important to note, however, that the inventive step threshold for a short-term patent is the same as that of a standard patent. This contrasts with utility model patents and petty patents in other countries which often have a lower inventive step threshold than those countries’ corresponding normal ‘invention patents.’

A standard Hong Kong patent has a maximum term of 20 years and is, therefore, akin to a substantively examined ‘invention patent’ or ‘utility patent’ available in other jurisdictions such as China, Europe and the US.

In fact, as explained in detail below, a standard Hong Kong patent is obtained by registering a patent that has already been granted in China, Europe or the UK, and, hence, has indirectly undergone a strict substantive examination.

Our UK qualified patent attorney at Evolution takes a closer look at each type of Hong Kong patent and how they are obtained:

Short-Term Hong Kong Patents

An application for grant of a short-term Hong Kong patent is filed directly with the Hong Kong Intellectual Property Department (IPD) using official form P6.

The application must include:

  1. a request for the grant of a short-term patent;
  2. the name(s) and address(es) of the applicant(s);
  3. if the applicant(s) is/are not the inventor(s), a statement indicating the applicant’s entitlement to exercise his or their right to the short-term patent;
  4. the name(s) and address(es) of the inventor(s);
  5. a specification which provides on the face of it for—
    • a description of the invention to which the application relates;
    • one or more claims but not exceeding one independent claim;
    • any drawings referred to in the description or the claim or claims;
  6. an abstract (English and Chinese);
  7. title of the invention (English and Chinese);
  8. a search report in relation to the invention;
  9. if priority is claimed, a statement of priority and priority documents; and
  10. an address in Hong Kong for service of documents.

A filing fee and an advertisement fee (currently HK$823) must also be paid within 1 month after the earliest filing with the Registrar of any part of the application, otherwise the application may ultimately be deemed to be withdrawn.

Search Report

The IPD will accept a search report from a “prescribed searching authority” or an International Searching Authority appointed under Article 16 of the Patent Cooperation Treaty.

The prescribed searching authorities are the State Intellectual Property Office, People’s Republic of China; the European Patent Office; and the United Kingdom Patent Office.

At the time of writing, there are 22 International Searching Authorities, including the US Patent and Trademark Office, Japanese Patent Office, Korean Intellectual Property Office, and the Intellectual Property Office of Singapore. Accordingly, a search report issued by any of the ISAs will be accepted by the IPD in support of a Hong Kong short-term patent application.

Date of Filing of a Short-Term Hong Kong Patent

Whilst the above identified information must eventually be provided to complete the formality requirements of a short-term Hong Kong patent, a date of filing can be secured by submitting the following minimum required information to the IPD:

  • an indication that a short-term patent is sought;
  • information identifying the applicant;
  • a part which on the face of it appears to be a description of an invention.

If any of these items is submitted late, the filing date will be the date on which all minimum required information has been received by the IPD.

Omitting one or more of these items when filing a short-term Hong Kong patent application could be very detrimental to the validity of a subsequent patent that might be obtained, particularly if the applicant is imminently disclosing the invention to the public or claiming priority from an earlier filed patent application within the 12-month priority window.

Accordingly, it’s vitally important to include at least the above three items of information when filing a short-term Hong Kong patent application.

Deferred Grant

Since a short-term Hong Kong patent application undergoes a simple formality examination, it may be granted very quickly relative to a substantively examined patent, sometimes in as little as 6 months from filing.

Consequently, the invention may be disclosed to the public earlier than an applicant would like. Normally, patent applications are published after 18 months from filing which allows applicants time to further develop their inventions and file subsequent patent applications without an existing patent application becoming prior art.

The potentially early publication of a short-term Hong Kong patent application can be particularly problematic for applicants that initiate their patent filing strategy for an invention in Hong Kong with a short-term patent application.

Fortunately, Hong Kong Patent law has anticipated this issue and allows applicants the option to defer grant and, hence, publication of a short-term Hong Kong patent by up to 12 months from filing.

Therefore, if an applicant wishes to keep their invention secret for as long as possible or needs more time to obtain the required search report, a request for deferral of grant can be included in the request form.

The International Route

Whilst a short-term Hong Kong patent application is usually filed directly with the IPD, with or without a claim to priority, it’s also possible to seek short-term Hong Kong patent protection via a Chinese utility model that is derived from an international patent application filed under the PCT.

In the event an applicant files a Chinese utility model patent application from an international patent application, a corresponding short-term Hong Kong patent application may be filed within six months after the international application has entered its national phase in China, or within six months after the State Intellectual Property Office of China issues a national application notification.

If filing via the international route, the following information must be submitted to the IPD in place of the specification, abstract, and search report:

  • a copy of the international application as published by the International Bureau;
  • a copy of the international search report (whether contained in the international application as published or separately published);
  • the date of entry of the international application into the national phase in China;
  • a copy of the translation of the international application (if any) published by the State Intellectual Property Office, People’s Republic of China;
  • a copy of any information published by the State Intellectual Property Office, People’s Republic of China concerning the international application;
  • if the short-term patent application is made within six months after the State Intellectual Property Office, People’s Republic of China issues the national application notification, a copy of the national application notification and the date of issue of the notification; and

The application number of the Chinese patent application (if known) should also be stated in the official form.

When granted, a short-term Hong Kong patent obtained via the international route will have as its date of filing the filing date of the international patent application.

Examination and Grant

After the application is given a filing date, the IPD will carry out its examination to determine whether the formality requirements have been met. If everything is in order, or if any deficiencies are resolved by the applicant, the IPD will grant a short-term patent for the invention.

The IPD will then publish details of the short-term Hong Kong patent, issue a certificate of grant, and advertise the fact in the official journal.

Standard Hong Kong Patents

A standard Hong Kong patent is obtained via a two-stage process in which a patent obtained in China, Europe, or the UK is registered in Hong Kong.

Stage 1

In the first stage, a request to record the designated patent application is filed at the Hong Kong Patent Office within 6 months after the date of publication of the designated patent application. A designated patent application may be a Chinese patent application, a European patent application (which designates the UK), or a UK patent application.

To initiate stage 1, official form P4 must be completed with details of the designated patent application to be registered in Hong Kong and filed with the IPD.

The data that must be included in the P4 form depends on whether the designated patent application was filed directly with the designated patent office or was entered into the national/regional phase of the designated patent office via an international patent application filed under the Patent Cooperation Treaty (PCT).

Directly Filed Designated Patent Application

If the stage 1 request is based on a designated patent application that was filed directly with the designated patent office, the following information must be submitted to the IPD in accordance with Section 15 of the Hong Kong Patents Ordinance (Cap. 514) and Rule 8 of the Hong Kong Patents (General) Rules:

  1. the date of filing of the designated patent application;
  2. the title of the invention (English and Chinese);
  3. the application number of the designated patent application;
  4. the publication number of the designated patent application (if any);
  5. the publication date of the designated patent application (if any);
  6. where the designated patent application does not contain the names of the inventors, a statement identifying the person or persons whom the applicant believes to be the inventor or inventors;
  7. the name and address of the applicant(s);
  8. where the applicant(s) is a person other than the person named as applicant in the designated patent application, a statement explaining his entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement;
  9. where priority is claimed (based on the priority claim of the designated patent application):
    • the date(s) of priority claimed;
    • the country in which the earlier priority application(s) was filed;
  10. an address in Hong Kong for service of documents; and
  11. a photocopy of the designated patent application as published (including any description, claims, drawings, search report or abstract published together with the designated patent application).

Designated Patent Application Based on International Application

If the stage 1 request is based on a designated patent application derived from an international patent application filed under the PCT, the following information must be submitted to the IPD in accordance with Section 16 of the Hong Kong Patents Ordinance and Rule 8 of the Hong Kong Patents (General) Rules:

In addition to items 1 to 10 above:

  1. the application number of the international application;
  2. the filing date of the international application;
  3. the date of publication of the international application by the International Bureau and its publication number;
  4. the date of publication of the international application in the designated patent office indicating that the application has validly entered its national phase; and
  5. in the case of an international application designating the State Intellectual Property Office as published by the International Bureau in the Chinese language, the date of the issuance (發文日) of the National Application Notification (國家申請號通知書) by the State Intellectual Property Office.

And, in place of item 11 above:

  1. a photocopy of the international application as published by the International Bureau;
  2. a photocopy of any translation of the international application published by the designated patent office; and
  3. a photocopy of any publication of information in the designated patent office concerning the international application.

For determining the six-month deadline for filing the request, the date of publication of the designated patent application from which the calculation is made is either:

  • the date of publication in the designated patent office as serves to indicate that the international application has validly entered its national phase in the designated patent office; or
  • such other date as may be prescribed in rules, being a date not earlier than the date on which the international application has validly entered its national phase in the designated patent office.

Other Required Information

In either case, the abstract must be provided in the two official languages of Hong Kong, namely, English and Chinese.

A filing fee and an advertisement fee (currently HK$448) is also payable within 1 month after the earliest filing with the Registrar of any part of the request to record, otherwise the standard Hong Kong patent application may be deemed to be withdrawn.

Date of Filing of Request to Record

It is worth nothing that not all the above information is required to secure a filing date for the request to record the designated patent application. To secure a filing date, the following minimum requirements must be provided to the IPD:

  • an indication that a request is made to record a designated patent application;
  • information identifying the applicant; and
  • a reference to the designated patent application, including—
    • the application number assigned to it by the designated patent office; and
    • the publication number (if any) assigned to it by the designated patent office, and the date (if any) of its publication by the designated patent office.

The date of filing of the request to record is the earliest date on which each of the above required information is submitted to the IPD.

Accordingly, if any of this information is not provided, a filing date for the request to record will not be given. If one or more missing items are submitted later, the filing date will be the later date by which all minimum required information has been submitted.

The filing date of the request to record is used to determine whether the request has been timely submitted within the six-month filing deadline. This deadline is very strict and cannot be extended unless in extraordinary circumstances. Therefore, it is essential that all information required to secure a filing date is submitted within the six-month deadline.

Entitlement to Apply

In respect of the applicant to be named in the request to record, according to section 12 of the Hong Kong Patents Ordinance (Cap. 514), the person that may apply for the grant of a standard patent for an invention in Hong Kong is the person named as applicant in the designated patent application for a patent for the invention, or his successor in title to the rights under the designated patent application in Hong Kong; or, in preference to that person, the person entitled to the property in the invention in Hong Kong.

Accordingly, if the designated patent application has been assigned to a different entity but the transfer has not been recorded with the designated patent office, if the new owner is named as the applicant in the request to record, a statement explaining the new owner’s entitlement to file the request must be provided together with a copy of any evidence such as an assignment document.

Publication of Request to Record

The IPD will examine the standard Hong Kong patent application and, if the request is found to satisfy the requirements of the Hong Kong Patents Ordinance and corresponding Hong Kong Patent Rules, will publish the request to record and advertise the fact in the official journal.

Stage 2

When the designated patent has been granted (usually a few years later), a request for registration of the designated patent and grant of a Hong Kong patent must be filed within 6 months after the date of grant of the designated patent or of publication of the request to record, whichever is the later.

To initiate stage 2, official form P5 is completed with details of the granted designated patent and is again submitted to the IPD for processing. It goes without saying that a request to record the designated patent (stage 1) must have been filed and the request must still be pending.

The following information must be submitted to the IPD in accordance with Section 23 of the Hong Kong Patents Ordinance and Rule 19 of the Hong Kong Patents (General) Rules:

  1. the publication number, application number and date of publication of the request to record;
  2. the title of the invention (English and Chinese);
  3. the date of grant and publication number of the designated patent;
  4. a list of the documents comprising the request to register and an indication of the number of sheets of each such document.
  5. if the applicant named in the request is a person other than the person named as applicant in the standard patent application, a statement explaining the first-mentioned person’s entitlement to apply for the grant of a standard patent for the invention and prescribed documents supporting that statement e.g. assignment document; and
  6. a verified copy of the published specification of the designated patent, including the description, the claims and any drawings published by the designated patent office.

It is important to note that if the designated patent is a European patent, it must designate the UK. Accordingly, care should be taken not to withdraw the UK designation before grant of the European patent (perhaps in an attempt to avoid double patenting in the UK), otherwise the standard Hong Kong patent application will not be allowed to proceed to grant.

Other Required Information

A filing fee and an advertisement fee (currently HK$448) is again payable within 1 month after the earliest filing with the Registrar of a part of the request for registration and grant. Otherwise, the application for a patent may be deemed to be withdrawn.

Date of Filing Request for Registration and Grant

As with a request to record (stage 1), it’s not necessary to submit all the above required information to secure a date of filing of the request for registration and grant. To secure a filing date, at least the following information must be submitted to the IPD:

  • an indication that a request is made for the registration of a designated patent and the grant of a standard patent;
  • information identifying the applicant;
  • the publication number assigned to the designated patent by the designated patent office, and the date of its publication; and
  • the publication number of the Hong Kong standard patent application.

If any of these items are provided after the 6-month deadline, the standard Hong Kong patent application shall be deemed to be withdrawn.

Again, the 6-month deadline is strictly non-extendible unless in extraordinary circumstances, so it’s essential at least the above 4 items are submitted to the IPD within the applicable deadline.

Registration of Designated Patent and Grant of Hong Kong Patent

The IPD will examine whether all requirements of the request for registration and grant are met and, provided the examination does not reveal any deficiencies, proceed to grant a standard Hong Kong patent. Following grant, the IPD will publish the specification of the patent, the names of the proprietor and, if different, the inventor; send a certificate to the proprietor; and advertise the fact of such grant by notice in the official journal.

The Takeaway

So, there you have it. Hong Kong has two different types of patent that each serve different purposes.

If you have an invention that you believe will have a relatively short commercial lifespan, a short-term Hong Kong patent may be adequate for your needs.

If, on the other hand, you have a complex invention that will be very important to your business for more than 8 years, you might consider the more arduous process of obtaining a standard Hong Kong patent.

Of course, you could also seek to obtain both types of patent for your invention. This filing strategy would afford you some quick, short term patent protection for your invention whilst your application for longer term protection undergoes its more involved substantive examination.

If you have any questions about the above types of Hong Kong patent, or would like to discuss your own requirements to determine how best to proceed, please contact us to find out more.

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