A standard patent in Hong Kong, China can be obtained based on grant of a designated patent in a corresponding designated patent office without substantial examination. To obtain grant of the standard patent, two requests should be filed respectively in two stages within respective statutory time limits. However, in case of missing either of the statutory time limits, what kind of remedies can we take?
- Introduction of Standard Patent
The grant of a standard patent in Hong Kong is based on the registration of a patent granted by one of three patent offices, called 'designated patent offices':
- the State Intellectual Property Office, People's Republic of China
- the European Patent Office, in respect of a patent designating the United Kingdom
- the United Kingdom Patent Office.
A standard patent application in Hong Kong is made in two stages by filing two requests within respective two statutory time limits:
- Stage 1: A request to record should be filed within six months after the publication of the designated patent application in the designated patent office.
- Stage 2: A request for registration and grant should be filed at the latest within six months after publication of the request to record in Hong Kong, China, or the grant of the designated patent by the designated patent office.
It should be noted that we have no chance to request restoration or an extension of time in case of missing either of the above two time limits.
- Remedies for the Missing of the Time Limits
Click here to vew figure.
As shown in the above figure, there are two ways of remediation if the deadline for filing the request to record in Stage 1 is missed. When the condition for adopting Method 1 cannot be satisfied, the applicant still has a chance to adopt Method 2 to do remediation if he is willing to spend more in order to maintain a divisional application for the purpose of continuing the patent prosecution for his case in Hong Kong. However, in case of missing the deadline for filing the request for registration and grant in Stage 2, it is hard to do remediation, and only a few cases’ patent prosecution in Hong Kong can be successfully continued.
Specifically, when the designated patent 1 is claimed as the priority of a PCT application which has entered the national phase of CN, EP or UK, since the publication of the designated patent 1’s corresponding PCT application in its national phase is usually three years after the filing date of the designated patent 1, it is possible that the PCT application, claiming the priority of the designated patent 1 and entering the national phase of CN, EP or UK, has not been published in its corresponding national patent office for more than six months in the situation that the designated patent 1 has been issued for more than six months. In such a case, this PCT application can be regarded as the designated patent application 2.
In addition, in case of missing the deadline in Stage 2, it is very hard to make remediation, moreover, the official fees and patent attorney’s service fees that have been spent on filing the request to record in Stage 1 will go to waste. Therefore, during the prosecution of the standard patent in Hong Kong, the applicants or the agents should pay great attention to the time limit for filing the request for registration and grant in Stage 2 and conduct intensive monitoring on this time limit, in order to obtain the grant of the standard patent in Hong Kong successfully.