Ronda News: A New Patent System in Hong Kong to Launch on December 19, 2019
(Attachment: Detailed Revision System and Advantages of the New Patent System)
Screenshot of HK Government News
As HK Government News reported, an original grant patent (OGP) system will be introduced to provide to patent applicants an alternative route of seeking standard patent protection in Hong Kong. The Patents (Amendment) Ordinance and the Patents (General) (Amendment) Rules were gazetted on October 11, 2019 and the new patent system would be effected on December 19, 2019.
Under the new patent system, patent applicants will have the option of filing standard patent applications directly in Hong Kong, thereby dispensing with any prior filing of their corresponding applications with a designated patent office outside Hong Kong as required under the existing "re-registration" system.
The new patent system also involves refining short-term patent (STP) system and prohibits the use of certain misleading or confusing titles or descriptions relating to patent practice in Hong Kong
The Commerce and Economic Development Bureau of Hong Kong said, the launch of the new patent system is a milestone in the development of Hong Kong's patent regime. It will greatly facilitate the development of Hong Kong as an innovation and IP trading hub in the long term.
Serena Chen from International Department, Ronda Intellectual Property said, as Asia's trade center and a free port, Hong Kong is famed as a shopping paradise, and it is home to a lot of companies from around the world who are competing fiercely for the market. Under this background, effective intellectual property protection, like patent law, becomes very important. Right upon the 22nd anniversary of Hong Kong's return to motherland, a new set of system concerning OGP and refined STP will be adopted, providing an alternative route of seeking standard patent protection in Hong Kong for patent applicants.
Attachment: Detailed revision system and advantages of the new patent system
ⅠPatent
- Patent protect inventions.
- If the invention is novel, creative and can be used for industrial applications as well as does not belong to any excluded category, it is a patent invention in Hong Kong.
- There are two types of patents: standard patents and short-term patents. They are valid for a maximum term of 20 years and 8 years respectively.
Ⅱ Existing patent system
- Standard patent
A standard patent application for an invention must be timely filed in Hong Kong (“Re-registration Route”) based on a corresponding patent application that has been filed in China National Intellectual Property Administration in mainland, the European Patent Office (designating the United Kingdom) or the United Kingdom Patent Office.
- Short-term patent
A short-term patent application can be filed directly in Hong Kong and only one independent claim is allowed for each application.
Both patent applications are only subject to formality examination of the Patent Registry.
Ⅲ Characteristics of the new patent system
The implementation of an original grant patent system provides a way to seek standard patent protection directly in Hong Kong.
- An application submitted as an original grant standard patent shall undergo a substantive examination by the Patent Registry to determine whether the underlying invention of the application meets the patentability requirements.
- Applicants may choose to submit their standard patent applications through the original grant standard patent approach or the current re-registration approach based on their own patent protection strategy.
Optimize the current short-term patent system
- Each application can contain up to 2 independent claims.
- After a short-term patent is granted, upon the request of its owner or a third party with a reasonable reason/justified commercial interest, the patent registry may conduct a substantive examination to determine the validity of the patent.
- The owner of a short-term patent must request the Patent Registry to conduct a substantive examination of the patent before commencing legal proceedings.
- When the owner of a short-term patent threatens to bring infringement proceedings against another person for an unsubstantiated short-term patent, the former must provide him/her with sufficient information to identify the involved patent at the request of the alleged infringer.
Regulation of titles or descriptions related to patent practice
- Names or descriptions that are confusing or misleading (such as "registered/recognized patent attorney" and "registered/recognized patent attorney") are prohibited from use.
- Qualifications obtained for patent business in jurisdictions other than Hong Kong. The relevant title or description can still be used as long as it clearly indicates in which jurisdiction the qualification is obtained.
Key advantages of the new patent system
- The new original grant standard patent system will help reduce the cost and time of applying for standard patents.
- The optimization measures of the short-term patent system prevent the system from being abused and enhance the credibility of the system, while maintaining the overall cost-effectiveness of seeking short-term patent protection in Hong Kong.
- Measures to regulate the title or description related to the patent industry create suitable conditions for the establishment of a comprehensive patent agency service regulatory system in the long run.
- The new patent system is an important cornerstone of the local patent protection system and promotes Hong Kong's development as a regional innovation and technology hub. The parties should seek independent professional advice on any patent-related matters.
Source: Comprehensive Hong Kong SAR Government News Network for the Intellectual Property Community, Offshore Financial Information
