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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The criteria for patentability are novelty, inventiveness and industrial applicability.

What are the limits on patentability?

There is no limit on patentability per se. Limits on patentability are in the form of excluded subject matter, including:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games and doing business;
  • computer programs;
  • the presentation of information;
  • therapeutic or surgical methods of treatment for humans or animals and diagnostic methods practised on humans or animals;
  • inventions whose publication or use is contrary to public order or morality; and
  • plant or animal varieties or essentially biological processes for the production of plants or animals.

To what extent can inventions covering software be patented?

Software in the form of computer programs per se is expressly excluded from patentability. However, software embedded in a method, process or product that meets the patentability requirements is patentable.

To what extent can inventions covering business methods be patented?

Methods for doing business per se are expressly excluded. However, methods or processes that meet the patentability requirements and are not expressly limited to doing business are patentable.

To what extent can inventions relating to stem cells be patented?

Stem cells per se are not excluded from patentability. Therefore, stem cells that meet the patentability requirements and are not excluded as an animal variety are patentable. In practice, this means that stem cells are patentable if they are in a purified, extracted or other artificial form.

Are there restrictions on any other kinds of invention?

The following inventions are excluded from patentability:

  • surgical or therapeutic methods of treatment for humans or animals and diagnostic methods practised on humans or animals; however, products – in particular, substances and compositions – used in any such methods are patentable;
  • inventions whose publication or use is contrary to public order or morality; however, the use of an invention is not contrary merely because it is prohibited by Hong Kong law; and
  • plant or animal varieties and essentially biological processes for the production of plants or animals; however, microbiological processes and the products of these processes are patentable. 

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A grace period of six months exists. Any disclosure that takes place within the grace period and before the date of filing is not considered when assessing novelty if:

  • there was an evident abuse in relation to the applicant or any proprietor of the invention; or
  • the applicant or any proprietor of the invention displayed the invention at a prescribed exhibition or meeting.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Hong Kong has no patent opposition procedure. Patent invalidations can be sought by way of post-grant revocation through the courts on the following grounds:

  • The invention is not patentable.
  • The patent was granted to a person that was not entitled to be granted the patent.
  • The specification of the patent does not disclose the invention clearly or completely enough for it to be performed by a person skilled in the art.   

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

For standard patents (obtained through recordal of a designated patent), a party may seek opposition or revocation of the designated patent at the designated patent office. Following successful opposition or revocation of the designated patent, the party can then apply to the registrar of the patent registry or request the court to revoke the patent.

A party may apply directly to the court to revoke standard patents and Hong Kong short term patents.

How can patent office decisions be appealed in your jurisdiction?

Patent Office decisions can be appealed to the Court of First Instance.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

A Hong Kong short-term patent (with an eight-year term) is typically issued within three to six months of all registration formalities being met. The total cost of filing an application for a Hong Kong short-term patent (when a suitably prepared specification is provided) and obtaining a registration certificate is between US$1,500 and US$2,000.

A Hong Kong standard patent (with a 20-year term) is typically issued within three to four months of all registration formalities being met, although registration formalities cannot be validly filed until the corresponding designated patent has been issued.

An application for a Hong Kong standard patent involves two stages. The first is the filing of an application for recordal of the published corresponding designated patent application within six months of publication. The second is the completion of registration by recordal of the corresponding designated patent within six months of grant and publication.

The cost of the two stages is between US$1,500 and US$2,000.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The most effective way for a patent owner to enforce its patent is by seeking an interlocutory or interim injunction against the infringer.

What scope is there for forum selection?

There is no scope for forum selection. The Court of First Instance hears all patent infringement cases at first instance.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

A plaintiff commences patent litigation by issuing a writ of summons. After issuance, the parties exchange pleadings (eg, statements of claim, defence, counterclaims and replies). Discovery, case management conferences and other interlocutory processes follow the exchange of pleadings. The parties will agree to a timetable leading up to the full trial. If no agreement can be reached, the plaintiff must file for a case management summons in order to seek case management direction from the court.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Defendants typically delay proceedings by seeking extensions for filing defences and by making multiple interlocutory applications. Plaintiffs may counter these delay tactics by seeking an interlocutory injunction at an early stage. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A party may challenge the validity of a patent by filing a request for revocation in anticipation of a patent infringement suit. 

At trial
What level of expertise can a patent owner expect from the courts?

There is no specialised patent court; the courts are assisted by the parties, which are assisted by skilled litigators with relevant expertise.

Are cases decided by one judge, a panel of judges or a jury?

A single judge decides cases.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Patent cases are not put to juries.

What role can and do expert witnesses play in proceedings?

Expert witnesses can play the role of a person skilled in the art in order to help the court to understand what skills and knowledge a person skilled in the art at the priority date would have possessed and whether the invention would have been obvious to a person skilled in the art at the priority date.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The courts apply the doctrine of ‘purposive construction’ to interpret the scope of claims. The doctrine of equivalents is not applied.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Interlocutory injunctions are available where there is actual infringement or threat of infringement, subject to the established requirements for granting interlocutory injunctions.

How are issues around infringement and validity treated in your jurisdiction?

The courts rule on infringement and validity when handling patent litigation.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Hong Kong adopts common law jurisprudence. Decisions from other jurisdictions involving similar issues – particularly from common law jurisdictions – will be considered if the parties submit them to the courts.

Damages and remedies
Can the successful party obtain costs from the losing party?

The successful party can usually obtain all reasonable legal costs from the losing party.

What are the typical remedies granted to a successful plaintiff?

Typical remedies in patent litigation include:

  • injunctions restraining the defendant from infringement;
  • delivery up or destruction of any patented products in relation to the infringed patent;
  • damages;
  • account of profits derived by the defendant from infringement; and
  • a declaration that the patent is valid and has been infringed by the defendant.

How are damages awards calculated? Are punitive damages available?

Damages are assessed on the basis of actual loss suffered by the plaintiff or profits made by the infringer. Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The courts commonly grant permanent injunctions on finding that infringement has occurred.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Typically, it takes 12 to 18 months to obtain a first-instance decision in cases where the parties do not seek extraneous extensions or delays. An application for summary judgment is possible in order to expedite the process where the defendant has no arguable defence.

How much should a litigant plan to pay to take a case through to a first-instance decision?

In uncontested patent cases, the total cost of obtaining summary judgment or default judgment is between HK$150,000 and HK$350,000.

Where a case is not concluded by summary or default judgment, legal costs (from the close of the pleadings to the beginning of trial) are between HK$400,000 and HK$2 million, depending on the extent of discovery, the number of expert witnesses required and the number and complexity of issues remaining in dispute.

When a full trial is necessary, further costs are typically between HK$1.5 million and KS$2.5 million, or more if senior counsel is appointed.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Parties may appeal trial decisions. The length of an appeal depends on its nature and subject matter, but is usually between six and eight months.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties may agree to participate in arbitration in order to resolve a patent dispute. In any event, parties must participate in mediation to avoid a full trial.