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Hong Kong Launches New Original Grant Patent System

Hong Kong will be launching a new patent system on December 19, 2019 that includes key changes, most notably the introduction of an original grant patent system. This new patent system includes both the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019.

Currently, there are two types of patent applications available in Hong Kong – standard patent application (re-registration) and short-term patent application. The most noticeable change in the new patent system is the introduction of an original grant patent (OGP) system to provide an alternative route to those seeking standard (20-year) patent protection in Hong Kong. Under the new system, patent applicants will have the option to directly file standard patent applications in Hong Kong. Therefore, there is no need to first file the application with a designated patent office outside Hong Kong.

Apart from introduction of the OGP system, the new patent system also refines the existing short-term patent (STP) system to enhance its integrity while keeping the overall cost-effectiveness of the system.

Key Reforms      

As part of this new patent system, the Hong Kong IPD has hired six full-time examiners in Hong Kong to oversee the original patent grant examination. These new examiners have many years of patent experience in Hong Kong, and have obtained training from the Chinese National Intellectual Property Administation (CNIPA). In addition, some technical assistants from the CNIPA will be assisting as part of an interim arrangement.

Currently, the Hong Kong patent examiners have expertise in life science, chemistry, electrical and mechanical engineering. The IPD will monitor the nature of the OGP patent applications that are filed and will adjust and build expertise in other core areas over time.

Moreover, the IPD also announced that the Final Phase of the New Integrated IT System (NIS) will launch on 19 December 2019, which is also the commencement date of the new patent system. Applicants can e-filing under the new patent system using NIS. The filing fee for an original grant patent application will be reduced to HKD 345 for an e-filing compared to HKD 480 for a paper filing. The filing fee for short-term patent application will be reduced to HKD 545 for an e-filing compared to HKD 755 for a paper filing.

Three Patent Application Types

Standard patent (O) application

This is an original grant patent (OGP) application and will launch on 19 Dec 2019. This new patent application can be directly filed with the Hong Kong patent office and does not require a prior filed application at one of the designated patent offices outside Hong Kong. There will be formality examination followed by substantive examination on the application.

The examination of the standard patent (O) application comprises the following stages:

  • examination for according a date of filing to the application;
  • examination on the formal requirements of the application;
  • publication of the application;
  • substantive examination of the application;
  • outcome of the application: grant and publication of the patent or final refusal of the patent grant.

The substantive examination for the OGP application will done in accordance with Hong Kong’s Patents Ordinance (which is virtually identical to UK Patent Law). However, the Hong Kong patent examiners may rely on technical opinions from the CNIPA (e.g., with regards to novelty and inventive step), and may use such technical opinions to help evaluate the patent applications under the legal standards of the Patents Ordinance.

Standard patent (R) application

 This is the standard patent application (re-registration) that has been operating in Hong Kong for many years. The filing of an application for grant of a standard patent (R) with the Registrar must be based on an earlier corresponding patent application (“designated patent application”) which has been filed with one of the three designated patent offices outside Hong Kong, namely:

  • the China National Intellectual Property Administration;
  • the European Patent Office (in respect of a patent designating the United Kingdom); or
  • the United Kingdom Intellectual Property Office.

A standard patent (R) application is made in two stages by filing:

  • a request to record a designated patent application (Stage 1); and then
  • a request for registration of a designated patent and grant of a standard patent (R) (Stage 2).

Short-term patent application

This is the same short-term patent application that already exists in the current Hong Kong patent system. Examination of a short-term patent application comprises the following stages:

  • examination for according a date of filing to the application
  • examination on the formal requirements of the application
  • grant and publication of the patent

One big change in the new patent system is that a short-term patent owner or any person having reasonable grounds or legitimate business interests may request the Registrar to conduct substantive examination of the patent for determining validity of the grant.

In addition, under the new system, the number of independent claims allowed in the application has changed from one to two, provided that the two independent claims are related to one single invention.

Summary of the New Patent System

Concluding Thoughts

The new original patent grant system is a great new option for applicants who do not wish to incur the costs of obtaining a Chinese or UK/European patent in order to obtain patent rights in Hong Kong. It also provides applicants a third patent office in which to try prosecuting their patent applications, providing more options for potentially different (and possibly broader) claim scopes from different examiners in different jurisdictions.

Finally, we welcome this new development for Hong Kong, as it will strengthen and develop the overall knowledge and career opportunities in this area for those in Hong Kong.

About the Authors

Joon Hyuk Imm is a US patent agent at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

eip@eipgroup.asia

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

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