There are two types of patent in Hong Kong Special Administrative Region (HKSAR): the standard patent and the short-term patent. Intellectual Property Department of the HKSAR is responsible for registration of the patents. Although “Patents Ordinance” of the HKSAR prescribes granting requirements of a patent such as novelty and inventiveness and etc., the Intellectual Property Department does not substantially examine the novelty and the inventiveness of an invention and only checks whether there are any formality deficiencies in a request form for the invention before it is granted a patent right.
Thus, someone may question whether such patent granted without substantial examinations can be effectively enforced in case of infringement or validity challenge.
The grant of a standard patent in the HKSAR is based on the registration of a designated patent granted by one of three designated patent offices: the State Intellectual Property Office (SIPO) in People's Republic of China (PRC); the European Patent Office, in respect of a patent designating the United Kingdom; and the United Kingdom Patent Office. For example, once a patent is granted by the SIPO in PRC, Applicant can obtain a corresponding standard patent granted in the HKSAR through filing a registration request to Patents Registry of the Intellectual Property Department of the HKSAR. Thus, the standard patent has the same patent protection scope as the corresponding designated patent granted by the designated patent office.
Someone may wonder whether the standard patent can still be valid in the HKSAR when the corresponding designated patent has been totally or partially revoked in an opposition or revocation proceeding in the designated patent office.
Theoretically, patent protections of the HKSAR stand alone and are not affected by post-grant actions relating to the corresponding designated patents. That is, when a designated patent is revoked in another country, the corresponding standard patent can be kept valid in the HKSAR. However, considering revocation of the designated patent, it can be concluded that the corresponding standard patent may probably fail to satisfy the granting requirements such as novelty, inventiveness or the like that are prescribed in the “Patents Ordinance” of the HKSAR. In addition, there may emerge a new prior art that can be used to challenge the novelty/inventiveness of the standard patent. That is, although there is no substantial examination for a standard patent before its grant, the validity of the standard patent will be questioned in post-grant proceedings such as infringement or revocation proceedings.
The revocation proceedings mainly refer to two cases:
- Upon a corresponding designated patent in respect of a standard patent being revoked in an opposition/revocation proceeding in the designated patent office, any person can file to Registrar of Patents Registry of the Intellectual Property Department of the HKSAR or to the court a revocation application for the standard patent with related documentation, the Registrar may make an order for revocation of the standard patent, and he may alternatively transfer the revocation application to the court to make the order; and
- At any time after grant of a standard patent, any person can file a revocation application to the court and provide related documentation, and the court will make an order for revocation of the standard patent.
Meanwhile, the proprietor of a standard patent also has chances to submit post-grant amendments which mainly refer to three cases:
- If the specification of the corresponding designated patent in respect of a standard patent has been amended in the designated patent office following prescribed opposition or revocation proceedings, the proprietor of the standard patent can file a corresponding amendment of the standard patent to Registrar of Patents Registry of the Intellectual Property Department of the HKSAR within a prescribed period, the Registrar will decide whether to accept the amendments;
- At any time after grant of a standard patent, the proprietor of the standard patent can file an amendment of the standard patent to the court, and the court will make an order whether or not this amendment is accepted ; and
- In any proceedings before the court in which the validity of a standard patent is put in issue, the proprietor of the standard patent is given a chance to amend the specification of the standard patent.
In view of the above, the proprietor of a standard patent has many chances to make appropriate post-grant amendments to the specification of the standard patent according to changing of the protection scope of the corresponding designated patent, new prior art learnt recently or new demands of patent protection. For example, when the specification of the corresponding designated patent is amended in an opposition/revocation proceeding, the proprietor can file corresponding amendments for the standard patent, and he can also file amendments for the standard patent when he has just found an article that can affect the novelty/inventiveness of the standard patent or thinks that the current protection scope of the standard patent is improper according to the current protection demands. In this way, the patent right of the standard patent can be more stable and can be enforced more effectively facing the infringement and revocation proceedings.