If you’ve read our article on Hong Kong patents, you will know that a Hong Kong standard patent (R) is obtained by re-registering a ‘designated patent’ obtained in China, Europe, or the UK.
When filing a patent application in a particular jurisdiction, it’s usually a requirement to include the specification in one of the official languages of that jurisdiction.
After all, it would be unfair to expect third parties to know whether they infringe a patent if it’s not even in their own language!
So, what’s the situation in Hong Kong?
Hong Kong Official Languages
Hong Kong has two official languages, namely, English and Chinese. English because of its British colonial past, and Chinese because of its status as a Special Administrative Region of the People’s Republic of China.
Accordingly, a Hong Kong patent application can be filed in either English or Chinese. Simple! But what if the designated patent application is published in a different language?
Hong Kong Standard Patent (R)
Language of Proceedings
Either Chinese or English may be chosen as the language of proceedings, that is the language in which all documents, unless exempted, must be submitted or translated into. The language of proceedings is the language in which an application for a patent is filed. In other words, the language in which the form is completed.
Accordingly, if the application form is completed in Chinese, that will be the language of the proceedings. Likewise, if the application form is completed in English, the language of proceedings will be English.
Note that, in accordance with Section 104(3) of the Hong Kong Patents Ordinance, if the designated patent application is in one of the official languages (i.e. English or Chinese), that does not compel an applicant to file an application for a standard patent (R) in the same official language. Consequently, if the designated patent application is in the Chinese language, the applicant could choose to file an application for a standard patent (R) in English, and vice versa.
Applicant and Inventor Names
If not in the Roman alphabet or in Chinese characters, the names of the applicant and inventor must be provided with a transliteration in the Roman alphabet.
Title and Abstract
The language requirements here are quite straightforward. Both the title and the abstract must be provided in Chinese and English. Therefore, if the title is in English, a translation into Chinese must also be submitted. The same goes for the abstract.
And if the title or abstract is not in either language, a translation into both Chinese and English must be provided.
Designated Patent Application
As mentioned, there are three possible designated patent applications on which a Hong Kong standard patent application (R) can be based:
- Chinese Patent Application
- European Patent Application (Designating the UK)
- UK Patent Application
A Chinese patent application will be in Chinese, so the patent specification is already in one of the official languages of Hong Kong. But what if the language of the proceedings is chosen to be English. Is a translation of the Chinese patent specification into English required?
And what about European and UK patent applications?
The official languages of the European Patent Office are English, French, and German. Accordingly, a European patent application may be published in any one of these languages. If a European patent application is published in French or German, must a translation into Chinese or English (or both) be submitted in support of a corresponding Hong Kong standard patent (R) application?
And UK patent applications? You may be surprised to see such this included in the discussion. Surely a UK patent application is published in English!? Not necessarily. A UK patent application may alternatively be filed in Welsh. Having said that, as of January 2018, no UK patent application had been filed in Welsh so it’s not exactly common!
But, again, what if the designated patent application is not published in Chinese or English? The need to file a translation could add significantly to the overall cost of seeking standard patent protection in Hong Kong.
Fear not, Rule 56 of the Hong Kong Patents (General) Rules is here to save the day! Specifically, subsections (4) and (5), which state:
(4) A translation into the language of the proceedings or into one of the official languages of the designated patent application as referred to in section 15(2)(a) of the Ordinance will not be required.
(5) A translation into the language of the proceedings or into one of the official languages of the published specification of the designated patent as referred to in section 23(3)(a) of the Ordinance will not be required.
Consequently, if a designated patent application is already in one of the official languages, a translation into the other official language is not required, even if the language of the designated patent application is different from the language of the proceedings.
Furthermore, if a designated patent application, and the resulting designated patent, is in French, German, or Welsh, it is not necessary to submit a translation into either English or Chinese.
The translation requirements for a Hong Kong standard patent (R) are quite lenient.
The language of the proceedings must be English or Chinese whilst the title and abstract must each be provided in English and Chinese.
If not in Chinese or English, a transliteration of the applicant and inventor names in the Roman alphabet must also be provided.
As for the specification of the designated patent application, no translation is required. This may be particularly useful for prospective applicants that file their European patent applications in French or German, as opposed to English.
If you’re interested in seeking standard patent protection in Hong Kong and would like assistance, please do not hesitate to contact us.