When a Hong Kong standard patent (R) is granted, is it independent from the corresponding designated patent? That is a question sometimes posed to overseas qualified patent attorneys based in Hong Kong.
The answer to this question is it depends.
If the Hong Kong standard patent (R) is based on a Chinese or UK patent, the Hong Kong standard patent (R) is independent of the Chinese or UK patent. Accordingly, if the designated Chinese or UK patent is revoked or allowed to lapse, this will not affect the corresponding Hong Kong standard patent (R) which may continue to be maintained and enforced. Of course, the revocation of the Chinese or UK patent is unlikely to be good news for the corresponding Hong Kong standard patent (R) which may be vulnerable to revocation on similar grounds.
However, the situation is not so straightforward when the designated patent is a European patent.
In this case, if the designated European patent is amended or revoked following opposition proceedings before the European Patent Office, the proprietor of the corresponding Hong Kong standard patent (R) is required to notify the IPD so that corresponding action can be taken in respect of the Hong Kong standard patent (R).
Thus, a Hong Kong standard patent (R) may be amended or revoked because of the amendment or revocation of the designated European patent, notwithstanding the fact they are separate, granted patents.
What Does the Law Say?
As many of Evolution’s readers will know, a Hong Kong standard patent (R) is obtained via a 2-stage process. As explained in our Hong Kong patent guide, in the first stage, a request to record a designated patent application (Chinese, European (designating UK), or UK patent application) is submitted to the Hong Kong Intellectual Property Department (IPD) within 6 months after publication of the designated patent application. In the second stage, when the designated patent is granted, a request for registration and grant of a Hong Kong standard patent (R) is submitted to the IPD within 6 months after publication of grant of the designated patent.
Obviously, the fate of the Hong Kong standard patent (R) application is dependent on the designated patent application because, without grant of the designated patent, a corresponding Hong Kong standard patent (R) application cannot proceed to grant either.
But what happens after grant of the Hong Kong standard patent (R)? Is its fate still tied to that of the designated patent?
To answer this question, we need to turn to the law and, in this case, sections 43 and 44 of the Hong Kong Patents Ordinance (Cap. 514).
Section 43
Section 43 is concerned with “Amendment of standard patent (R) following opposition or revocation proceedings in the designated patent office”. It states:
(1) If the specification of the corresponding designated patent in respect of a standard patent (R) granted under Part 2 has (whether before or after the grant of the standard patent (R)) been amended in the designated patent office following prescribed opposition or revocation proceedings, the proprietor of the standard patent (R) shall file with the Registrar in the prescribed manner and within the prescribed period a verified copy of the amended specification or the amending order or other prescribed documentation.
(2) The Registrar shall record the amendment to the specification of the designated patent by making an appropriate entry in the register and upon that recording the standard patent (R) shall be treated as having been amended in a like manner.
(3) As soon as practicable after a standard patent (R) has been amended under this section the Registrar shall—
(a) publish the amendment;
(b) advertise the fact of the amendment by notice in the official journal.
(4) Any amendment of the specification of a standard patent (R) under this section shall have effect from the date of grant of the patent.
(5) Any amendment of the specification of a standard patent (R) under this section shall have effect subject to section 103(3).
https://www.elegislation.gov.hk/hk/cap514?xpid=ID_1438403304889_002
Section 44
The possible revocation of the standard patent is dealt with under section 44 which concerns “Revocation of standard patent (R) following opposition or revocation proceedings in the designated patent office”. It states:
(1) This section applies to any standard patent (R) of which the corresponding designated patent has been revoked following prescribed opposition or revocation proceedings in the designated patent office..
(2) The proprietor of a standard patent (R) to which this section applies shall after publication of the revocation by the designated patent office and in the prescribed manner file with the Registrar a verified copy of the order of revocation or other prescribed documentation.
(3) The Registrar shall record any filing under subsection (2) and shall advertise the fact of such filing by notice in the official journal.
(4) A person other than the proprietor of a standard patent (R) to which this section applies may apply to the Registrar in the prescribed manner for an order under this subsection, and where on such an application the Registrar is satisfied that the patent is one to which this section applies he shall, subject to subsection (5), order that the patent be revoked.
(5) The Registrar may, if he thinks fit, refer any application under subsection (4) to the court and the court shall have jurisdiction to make an order for the revocation of the patent.
(6) Upon the Registrar advertising the fact of a filing by the proprietor of a standard patent (R) under subsection (2) in the official journal, or upon the making of an order by the Registrar under subsection (4) or by the court under subsection (5) for the revocation of a standard patent (R), the patent shall be treated as never having had effect.
https://www.elegislation.gov.hk/hk/cap514?xpid=ID_1438403304904_001
Prescribed Opposition or Revocation Proceedings
The key question in relation to sections 43 and 44 is what is meant by prescribed opposition or revocation proceedings? For this definition, we need to refer to the Hong Kong Patents (General) Rules and, specifically, rule 36 which states:
Rule 36. Opposition or revocation proceedings in the designated patent office for the purposes of sections 43 and 44 of the Ordinance
The opposition or revocation proceedings in a designated patent office prescribed for the purposes of sections 43 and 44 of the Ordinance are, if the office is the European Patent Office, any post-grant opposition proceedings under or in accordance with Part V of the European Patent Convention.
https://www.elegislation.gov.hk/hk/cap514C?xpid=ID_1438403308056_003
So how do these sections and rules apply in relation to each type of designated patent?
UK and Chinese Designated Patents
It’s quite clear from rule 36 that amendment of a Hong Kong standard patent (R) under section 43 or revocation under section 44 may only result from post-grant opposition proceedings in relation to a European designated patent.
Thus, sections 43 and 44 do not apply when the Hong Kong standard patent (R) is based on a designated UK or Chinese patent. Accordingly, after grant, a Hong Kong standard patent (R) is independent of a UK or Chinese designated patent.
European Designated Patent
So, that just leaves the situation in which a Hong Kong standard patent (R) is based on a European designated patent. Filing an opposition against a European patent is still very much possible and can result in amendment or revocation.
Therefore, in this case, sections 43 and 44 will apply. Accordingly, if a Hong Kong standard patent (R) is based on a European designated patent, and the designated patent is amended or revoked following opposition proceedings, the proprietor of the Hong Kong standard patent (R) must notify the IPD of the outcome of the opposition proceedings.
In the case of an amendment of the European designated patent, a corresponding amendment will be made to the Hong Kong standard patent (R) under section 43.
In the case of the revocation of the European designated patent, the Hong Kong standard patent (R) will, likewise, be revoked and treated as never having had effect under section 44.
Thus, a Hong Kong standard patent (R) is not independent of a European designated patent until the opposition period (9 months from grant) has expired or any opposition to the European patent has been finally resolved.
What About Central Limitation or Revocation?
If you’re a European Patent Attorney or are familiar with the European Patent Convention (EPC), you will be aware that limitation and revocation procedures before the European Patent Office entered into force on 13 December 2007 under EPC 2000.
These new central limitation and revocation procedures allow the proprietor of a European patent to apply directly to the European Patent Office to amend the patent or apply for the patent to be revoked, thereby obviating the need for separate proceedings in each state in which the European patent is in effect.
Since a Hong Kong standard patent (R) is not entirely independent of a European designated patent, you may be wondering how a central limitation or revocation of a designated European patent might affect a corresponding Hong Kong standard patent (R).
The answer lies in rule 36 which, in relation to a European designated patent, defines prescribed opposition or revocation proceedings as any post-grant opposition proceedings under or in accordance with Part V of the European Patent Convention i.e. Article 99 relating to oppositions. Thus, whilst Articles 105a and 105b relating to central limitation and revocation are found within Part V of the EPC, they are not post-grant opposition proceedings and are not, therefore, covered by rule 36 of the Hong Kong Patents (General) Rules.
Accordingly, if a Hong Kong standard patent (R) is based on a European designated patent, and the European patent is limited or revoked at the request of the proprietor under Articles 105a or 105b, the Hong Kong standard patent (R) need not be limited or revoked under sections 43 or 44.
The Takeaway
After grant, the fate of a Hong Kong standard patent (R) based on a designated European patent is dependent on that of a European designated patent until the European patent opposition period has expired or all oppositions have been finally resolved. This does not, though, apply in the case of a central limitation or revocation of the European patent by the proprietor.
On the other hand, if a Hong Kong standard patent (R) is based on a UK or Chinese designated patent, following grant, the standard patent is independent of the designated patent. Thus, if, for example, a UK or Chinese designated patent is subsequently revoked, the proprietor of the corresponding Hong Kong standard patent (R) is not required to notify the IPD so that the standard patent can be, likewise, revoked.
That said, if a UK or Chinese designated patent is amended following invalidation proceedings, or a European patent is centrally limited at the request of the proprietor, careful consideration should be given to whether the same amendment should be promptly made to the corresponding Hong Kong standard patent (R). Otherwise, the Hong Kong courts may be unwilling to allow any such amendment of the patent during subsequent proceedings in which the patent is enforced or its validity is challenged.
