In most jurisdictions, renewal fees are relatively straightforward. A fee is usually due on the anniversary of the filing date (or at end of the filing date month) for each year it is desired to keep the patent in force. However, the rules for when renewal fees must be paid can vary significantly by jurisdiction.
Unfortunately, the Hong Kong patent is one of the most complicated of all when it comes to determining renewal fee due dates, not least because there are three different types of Hong Kong patents, namely the standard patent (R), the standard patent (O), and the short-term patent. It is particularly complicated for the standard patent (R) because fees are eventually payable whilst the standard patent (R) application is pending and after the patent is granted, and also because of the way the first fee at each stage is calculated.
At the time of writing, the Hong Kong patent renewal fee for maintaining an application for a standard patent (R) is HK$270 (about US$35) for each year after the expiry of the 5th year. The fees for renewing both a standard patent (R) and a standard patent (O) for a further year after the expiry of the 3rd year following grant are HK$450 (about US$70) for the 4th to 10th year of the 20-year term, HK$620 (about US$80) for the 11th to 15th year of the 20-year term, and HK$850 (about US$109) for the 16th to 20th year. As for the short-term patent, the Hong Kong patent renewal fee is HK$1,080 (about US$140), although only one renewal fee is ever payable.
Evolution charges a flat fee of US$100 for maintenance of an application for a Hong Kong standard patent (R) or granted standard patent (R) or standard patent (O). If you require assistance with maintaining your or your client’s Hong Kong standard patent portfolio, please email us at email@evolution.hk.
Hong Kong Standard Patent (R) Renewal Fee Date Calculator
To help determine the initial 5th year and 3rd year Hong Kong patent renewal fee due dates for a standard patent (R), we’ve put together the following Hong Kong patent renewal fee calculators:
Please note that these calculated dates should be used for guidance only. If you are unsure of the renewal fee due date for a particular Hong Kong standard patent (R) application or granted standard patent (R), please confirm the date with your Hong Kong based patent attorney.
If you want to know how to calculate the renewal fee due dates, read on to find out more.
Hong Kong Standard Patent (R)
Maintenance Fees
As set out in Section 33 of the Hong Kong Patents Ordinance, maintenance fees first become payable in respect of a pending Hong Kong standard patent (R) application before the expiry of the 5th year from the anniversary of the date of filing the corresponding designated patent application first occurring after the date of publishing the request to record. A maintenance fee must then be paid on the anniversary for each subsequent year to keep the request to record pending.
Understanding how to calculate the first maintenance fee is better explained with a working example.
Let’s look at a real-life example and calculate the first maintenance fee in respect of Hong Kong standard patent (R) application number 02101234.2 which is based on designated European patent application EP1175659 (this is one of the example cases on the IPD’s search facility). The relevant filing details are as follow:
Standard Patent (R) Application
Filing date: 20.02.2002
Priority claimed: 05.03.1999
Publication No.: HK1039992
Date of first publication: 17.05.2002
Designated Patent Application
Publication No.: EP1175659
Application Filing Date: 06.03.2000
In this example, we can see that the request to record the designated patent application was published on 17 May 2002. Accordingly, firstly, we need to determine the first anniversary of the date of filing of the designated patent application to occur after this publication date. In this case, it’s 6 March 2003.
We can now determine that the first maintenance fee will fall due on 6 March 2008 i.e. 6 March 2003 + 5 years. Let’s see that represented graphically for ease of reference and understanding:
A maintenance fee must then be paid on the anniversary for each subsequent year to keep the request to record pending until the designated patent is granted and a request for registration and grant can be filed.
Note, though, that the designated patent application must also be pending to validly pay a maintenance fee or, if granted, must have been granted within 6 months of the maintenance fee due date. Accordingly, declarations as to the status of the designated patent application must be made when paying a maintenance fee.
If the designated patent is granted within 6 months of a maintenance fee due date, though, a neat trick for avoiding paying that next maintenance fee is to file a request for registration and grant before the maintenance fee due date.
But you don’t quite escape because an annual renewal fee eventually becomes payable in respect of the granted standard patent, which brings us nicely to the next section…
Renewal Fees
Under Section 39 of the Hong Kong Patents Ordinance, a standard patent (R) can be kept in force until the end of the period of 20 years beginning with the deemed date of filing of the application for the patent i.e. the filing date of the designated patent application.
To keep the patent in force beyond the first 3 years following grant, an annual Hong Kong patent renewal fee must be paid each year on the anniversary of the filing date of the designated patent.
The first renewal fee is due 3 years from the anniversary of the deemed date of filing of the standard patent first occurring after the date of grant of the patent.
Again, this is better explained and understood with a working example. Let’s use HK1200000 (first number that came into my head). The relevant details are as follows:
Standard Patent (R)
Patent grant date: 22.06.2018
Designated Patent
Application Filing Date: 16.05.2014
So, here the Hong Kong standard patent was granted on 22 June 2018. Therefore, our starting date for the calculation of the first Hong Kong patent renewal fee due date is 16 May 2019 which is the first anniversary of the filing date of the designated patent to occur following grant of the standard patent.
From this, we can determine that the first Hong Kong patent renewal fee will fall due on 16 May 2022 i.e. 16 May 2019 + 3 years. Again, let’s see this represented on a timeline for ease of understanding (here we’ve also shown the 3 month payment window and 6 month grace period dates as explained further below):
A Hong Kong patent renewal fee must then be paid on the anniversary of the filing date for each subsequent year to keep the standard patent (R) in force.
Now, if you’re really switched on, you may wonder what happens if the first Hong Kong patent renewal fee falls due after the maximum 20-year term of the patent. In this case, no Hong Kong patent renewal fee will ever be due in respect of the standard patent (R) after grant. It’s rare but does happen!
When Can the Maintenance Fee or Renewal Fee Be Paid?
The earliest a maintenance fee or renewal fee can be paid is 3 months before that expiry of the current patent year.
Therefore, in the above maintenance fee example with an expiry date of 6 March 2008, the earliest date on which the maintenance fee can be paid is 6 December 2007, as depicted below.
Likewise, in the above renewal fee example in which the next renewal fee is due by the deadline of 16 May 2022, the earliest date on which the renewal fee can be paid is 16 February 2022.
Is There a Grace Period for Late Payment?
Thankfully, yes. Both the maintenance fee and the renewal fee can be paid late within 6 months after the end of the missed maintenance or renewal fee deadline. So, in the above maintenance fee example, the 6 month grace period deadline would be 6 September 2008:
This 6 month grace period is fairly typical in the patent industry and allows an applicant or proprietor to claw their rights back in the event of a missed payment (whether or not intentional). The only downside is that you’ll have to pay an additional penalty in addition to the required fee.
As at the time of writing, the late payment fees are HK$95 (approximately US$12) for a missed maintenance fee and HK$270 (approximately US$35) so it shouldn’t break the bank. Notably, the late payment penalty fee is the same regardless of the month in which the maintenance or renewal fee is paid late. In other words, the late payment penalty fee will be the same whether it is paid one month late or six months late.
Hong Kong Standard Patent (O)
Unlike the standard patent (R), there is no 2-stage re-registration procedure for a standard patent (O) so there is no requirement for payment of an annual Hong Kong renewal fee until after grant of the standard patent (O). Nevertheless, the calculation for payment of the renewal fee after grant is the same as that for a standard patent (R), namely the 3rd year following grant. The only difference is that the renewal fee falls due on the anniversary of the filing date of the standard patent (O) rather than the deemed date of filing which is linked to the filing date of a designated patent application.
So, if we take an example of a standard patent (O) application filed on 19 December 2019 and granted on 1 November 2023, the 1st anniversary of the date of filing following grant is 19 December 2023. Accordingly, the first Hong Kong patent renewal fee falls due on 19 December 2026 i.e. 19 December 2023 + 3 years. These dates (including the 3 month payment window and 6 month grace period) are represented in the below timeline for ease of understanding.
Hong Kong Short-Term Patent
An ultimate guide on Hong Kong patent renewal fees would not be complete without a look at the Hong Kong short-term patent. Fortunately, this is far simpler than the standard patent (R).
Only a single renewal fee is required to maintain a short-term patent for the full 8-year term. This Hong Kong patent renewal fee is due at the expiry of the 4th year from the date of filing. As with a standard patent, the earliest date on which this Hong Kong patent renewal fee can be paid is 3 months before the expiry of the 4th year.
In the unusual circumstances in which a short-term patent is granted after the expiry of the 4th year from the date of filing, the Hong Kong patent renewal fee may be paid at any time before the expiry of 3 months beginning from the date of grant. In this case, the short-term patent shall remain in force for the balance of the second 4 year period.If the renewal fee payment is missed, do not fret because a six month grace period is also available for late payment of the missed renewal fee. As at the time of writing, the late payment fee is HK$270 (~US$35) so, again, not too exorbitant!
