Protect Your Invention
Highly qualified, experienced attorney to help secure the patent protection you need.
Curious about patents? Looking for a patent definition? Patents protect inventions that are new and not obvious as compared with the prior art (any evidence that your invention is already known). Since prior art can include your own disclosures, it is very important to keep your invention confidential until a patent application has been filed.
An invention can be a product, a process or an apparatus. Patents can therefore protect a wide range of possible inventions.
A patent for an invention can be used to prevent others from working your invention. Generally speaking, this means that a patent can be used to stop a third party from making, putting on the market, using or importing a patented product or a product obtained directly by a patented process, or using or offering a patented process in a territory in which the patent is granted and in force.
Patents can therefore be an extremely useful commercial tool for protecting your business.
In most countries, a patent has a maximum life of 20 years from the filing date (subject to payment of maintenance fees). The time taken to obtain a granted patent varies by country but typically takes from 3 to 6 years. This is because a patent usually must undergo a thorough examination process to ensure the invention is sufficiently disclosed to enable the invention to be worked and also to ensure the invention has not already been disclosed.
Since patents are territorial rights i.e. are only effective against infringements in the territory in which the patent is granted, it is important to consider obtaining patent protection in territories that are, or are likely to become, important markets. Typically, this will include territories in which your products are manufactured (or may be manufactured by your competitors) and countries in which you sell, or intend to sell, your products or services.
Evolution has a network of contacts throughout the world to help secure patent protection wherever needed. If you are wondering how to patent your invention and are looking for patent assistance, please contact us to find out more.
Three types of patent are available in Hong Kong, namely standard patents (R), standard patents (O), and short term patents. Each type of patent has its advantages and disadvantages and the choice will likely depend on the country of incorporation/domicile, commercial requirements and the nature of the invention.
Both standard patents have a full 20 year term whereas a short-term patent has a maximum term of 8 years. A standard patent (R) and short-term patent undergo a formality examination only. A standard patent (O), on the other hand, is substantively examined by the Hong Kong Intellectual Property Department.
Standard Patent (R)
A standard patent (R) is obtained via a two stage re-registration process.
In the first stage, a request to record a “designated patent application” is filed at the Hong Kong Intellectual Property Office within 6 months after the date of publication of the designated patent application. A designated patent application may be a Chinese patent application, European patent application (designating the UK), or a UK patent application.
In the second stage, when the designated patent has been granted, a request for registration and grant is 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.
Provided the above deadlines are met and all formal requirements are completed, the Hong Kong Intellectual Property Department will register the designated patent and grant a standard patent (R) for the invention.
Standard Patent (O)
A standard patent (O) is obtained via a substantive examination procedure carried out directly by the Hong Kong Intellectual Property Department. This newly introduced originating patent system now allows an applicant to directly file a patent application that may become a full 20-year term patent. Accordingly, it is no longer necessary to first obtain patent protection overseas before such patent protection may be secured in Hong Kong.
A patent specification describing the invention in detail must be prepared and filed with with the Hong Kong Intellectual Property Department. Ultimately, a request for substantive examination must then be submitted so that an official search can be prepared and an assessment of the patentability of the invention can be made.
If no objections are raised or if all objections are overcome, the Hong Kong Intellectual Property Department will grant a patent for the invention with a maximum term of 20-years, subject to payment of renewal fees.
A short term patent is obtained via a relatively simple formality based examination procedure.
If first filing in Hong Kong, a patent specification is prepared and filed at the Hong Kong Intellectual Property Department together with a request for grant of a short term patent.
Alternatively, if claiming priority from one or more earlier filed patent applications, the request for grant of the short term patent should include details of the priority application(s).
In relatively rare circumstances, a Hong Kong short term patent application may be filed on the basis of a Chinese utility model which has entered the Chinese national phase from an international patent application. In this case, the request for grant of the Hong Kong short term patent must be sumitted within 6 months after entry of the international patent application into the Chinese national phase.
A search report must then be obtained from an approved patent searching authority and submitted in support of the short term patent application. The approved searching authorities are any of the international searching authorities or the three designated patent offices (of which the Chinese Patent Office and European Patent Office are also international searching authorities).
The Hong Kong IPD checks that all formality requirements are met and that the required official fees have been paid and, upon completion, grants a short term patent for the invention.
Typically, each country has its own patent laws and procedures for obtaining patent protection. For example, if a Chinese patent 中文 is of interest, a patent application must be filed with the China State Intellectual Property Office. Accordingly, if patent protection is desired in a particular country, it is necessary to file a patent application with the intellectual property office of the country or territory of interest.
In some cases, such as Europe, there is a centralised examination procedure whereby a single patent can be obtained at the European Patent Office and ‘validated’ in the European states of interest. This can be a cost effective way to obtain patent protection in multiple jurisdictions without the need for separately filing and prosecuting multiple patent applications.
Since seeking patent protection in multiple jurisdictions is relatively costly, it is possible to file an international patent application under the Patent Co-operation Treaty (PCT) to defer costs for up to 30 months from filing the first patent application for the invention.
Whilst an international patent application will never proceed to grant, it gives applicants time to test the market and seek outside investment before proceeding with relatively costly, multiple overseas filings. An international patent application also provides an international search report and opinion on patentability which can help applicants make an informed decision on proceeding further with patent applications.
If you are interested in seeking patent protection overseas whether in China, the US, Europe, or any other jurisdiction, please contact us to discuss your requirements with our experienced UK qualified attorney to see how we can assist you. Alternatively, if you want to try it yourself, take a look at our patent guide.
Our mission is to enable any business or individual to secure strong intellectual property rights in Hong Kong and overseas as cost-effectively as possible.