The Hong Kong Intellectual Property Department (HKIPD) will launch a new patent system in Hong Kong on 19 December 2019, put into effect by the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019, which will also come into force on the same date. Under the new patent system, a direct patent filing route for Hong Kong standard patent protection will be provided in parallel with the existing re-registration patent system. This is a major and essential reform of the Hong Kong patent system, which will modernize the patents regime and better support the Hong Kong innovation sector.

Types of Patents in Hong Kong

Two types of patents are available in Hong Kong, namely standard patents and short-term patents.

1. Standard Patents

A standard patent protects an invention for a maximum term of 20 years. Under the existing patent system, a standard patent can only be obtained by re-registration of a designated patent application filed at any one of three designated patent offices outside Hong Kong.

2. Short-term Patents

A short-term patent can be a more cost effective alternative for obtaining limited patent protection for a maximum term of 8 years. Under the existing system, a short-term patent application can be filed directly at the Hong Kong Patents Registry and is only subject to formality examination.

Major Amendments in this Reform

The most notable amendment in the Patents (Amendment) Ordinance 2016 is the introduction of an original grant patent (OGP) system for obtaining a standard patent in Hong Kong. An applicant will be allowed to file a standard patent application directly with the Hong Kong Patents Registry on or after 19 December 2019. The specification for the standard patent application may be drafted in English or Chinese. A request for a substantive examination of the patent application must be filed within 3 years from the filing date or the earliest priority date of the standard patent application. The current re-registration route for acquiring a standard patent will still be maintained.

The HKIPD will outsource aspects of the substantive examination of Hong Kong standard patent applications to the China National Intellectual Property Administration (CNIPA), as an interim arrangement. The examiners from the CNIPA will provide technical opinions relevant to the novelty and inventive step of the claimed invention, while the Patents Registry in Hong Kong will prepare the office action (examination notice) in view of CNIPA’s technical opinion and based on the Patents Ordinance in Hong Kong.

Under the Patents (Amendment) Ordinance 2016, the HKIPD will also introduce refinements to the existing short-term patent system. The new system will increase the number of independent claims allowed in a short-term patent application from one, under the current system, to two independent claims, provided that the two independent claims are related to one single invention.

Further, short-term patents will be subject to post-grant substantive examination by the Patents Registrar under the following circumstances (1) at the request of the short-term patent proprietor or any third party with a legitimate concern about the validity of the short-term patent; or (2) as a prerequisite to enforcement of an unexamined short-term patent by the short-term patent proprietor.

Upon receipt of a request for substantive examination, the short-term patent will be examined by the Patent Registrar to determine whether it satisfies examination requirements. If it is determined that the short-term patent in question does not satisfy examination requirements, the Patent Registrar will raise one or more objections, and the short-term patent proprietor will be given the opportunity to submit remarks and/or amendments to the short-term patent to address the Patent Registrar’s objections.

After undergoing substantive examination, if the Patent Registrar determines the short-term patent satisfies all substantive requirements, a certificate of the substantive examination will be issued confirming the validity of the short-term patent. If the short-term patent is found not to satisfy all substantive requirements, it will be revoked.

The commencement of the Patent (Amendments) Ordinance and Patents (General)(Amendment) will see the introduction of new and revised official fees.

The filing fee for an original grant standard patent (o) application is HK$345 for an e-filing and HK$480 for a paper filing. The fee to request for substantive examination of a standard patent (o) application is HK$4,000.

The filing fee for short-term patent applications will see a reduction from HK$755 to HK$545 for e-filings. Fees for paper filings remain unchanged at HK$755, as well as the existing advertisement fee of HK$68.

The fee to request to record a designated patent application and request for registration of a designated patent will also be reduced from HK$380 to HK$275 for e-filing. Fees for paper filings remain unchanged at HK$380, as well as the existing advertisement fee of HK$68.

Comment

With the introduction of the OGP system, standard patent applications can be filed locally without first seeking patent protection in one of the three designated patent offices outside Hong Kong. Consequently, both the cost and time required to obtain standard patent protection in Hong Kong are expected to decrease. The changes under the new patent system are predicted to increase the number of applications for standard patent protection in Hong Kong, especially from small and medium-sized enterprises and Hong Kong based entities, and advance the Hong Kong’s government’s goal of developing Hong Kong into a regional innovation hub.