Hong Kong is looking at reforming its current system for granting patents which involves re-registering UK, European or Chinese patents. Although this is a simple and cost effective system, some are arguing that Hong Kong should start granting its own original patents.
On 4 October 2011, the Hong Kong Government issued a consultation paper seeking views from interested parties on a review of the patent system in Hong Kong. The current system has been in place from the time of the handover of Hong Kong's sovereignty by the United Kingdom to China in 1997 and over the last 10 years only limited changes have been made to Hong Kong patent law (which is largely based on UK patent law). In a number of important areas, such as allowing second medical use claims, amendment of patents and updating the court rules for litigating patents, changes are needed. The possibility of introducing Supplementary Protection Certificates for pharmaceuticals has also been raised. However, it is changing the system of granting patents which has attracted most debate in Hong Kong recently.
Briefly, Hong Kong currently has two types of patents: standard patents and short-term patents which have terms of 20 years and 8 years, respectively. It is not possible to file the original application for a standard patent in Hong Kong. Instead, Hong Kong standard patents are obtained by re-registering patents granted by one of three designated patent offices: the State Intellectual Property Office of the People's Republic of China (SIPO), the UK Intellectual Property Office and the European Patent Office for patents designating the UK.
The Hong Kong Patents Registry only carries out a formalities examination and charges a fee of about US$120 for registering a standard patent. In 2010, around 65% of the standard patents granted in Hong Kong were based on patents granted by SIPO. This re-registration system is cost efficient and has been easy to implement, but some have recently questioned whether the absence of an original grant patent (OGP) system discourages investment in innovation and Hong Kong inventors from filing patent applications.
In contrast, original applications for short-term patents can be filed locally, without having to file first in a designated patent office. Short-term patent may have only one independent claim and are intended to protect simple inventions with a short commercial life. The patentability requirements are the same as for standard patents (novelty, inventive step, susceptibility to industrial application) and the applicant must file a search report. However, applications for short-term patents do not undergo any substantive examination prior to grant. The benefits of short term patents (known in some countries as utility models or petty patents) are that they offer fast, inexpensive means of protecting simpler inventions. However, it is accepted that without substantive examinations, there is a greater risk of invalid patents being granted and, as a consequence, the potential for abuse.
The Hong Kong Government consultation paper sets out various options for reform. The main issue concerning standard patents is whether Hong Kong should have its own OGP system and if so, the extent to which substantive examinations should be undertaken locally or outsourced to larger, foreign patent offices (as occurs in Singapore). The other main issue is whether the current "re-registration" system should be maintained (possibly in parallel to an OGP system, giving patentees the option of using re-registration and saving costs) and, if so, whether the system should be expanded to recognise patents granted by jurisdictions other than the three current designated patent offices.
Concerning short-term patents, the main issues are whether the short-term patent system should be retained, and if so, what measures should be introduced to encourage greater use and enhance the efficacy of the system. Possible changes include lowering the patentability requirements, increasing the maximum term from 8 years, allowing more than one independent claim and requiring substantive examinations at some point, either before or after grant (for example, before infringement proceedings can be started.)
A further issue under consideration is whether the patent agency profession in Hong Kong should be regulated, and, if so, what form the regulatory system should take. Greater regulation is more likely if Hong Kong decides to introduce an OGP system.
The Hong Kong Government is encouraging users of the Hong Kong patent system to submit their comments on or before 31 December 2011.