The Patent (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rule 2019 will come into effect on 19 December 2019. It marks the history of Hong Kong that she will have her originally granted patent registration for the first time.
Highlights of Reform of Patent system in Hong Kong
The existing patent system, namely, standard patent and short term patent, will be retained with some refinement of short term patent.
The new feature of the reform patent system is the introduction of the original grant patent system and some other issues relating to the existing patent system.
1. Standard patent by original grant (“Standard Patent (O)”)
It is an entire new patent system in Hong Kong. The applicant can file their standard patent (O) application directly in Hong Kong without first filing the patent application in designated patent office.
(1) Direct filing of the patent application with or without priority claim.
(2) Apart from checking minimum requirement on formality, the applicant will need to request for substantive examination within 3 years from the application date or priority date.
(3) The patent will be substantively examined as to its patentability, namely, novelty, inventive step and industrial applicability by examiner in Hong Kong.
(4) If the examiner considers that the patent lacks of novelty and/or inventive step, he will issue examination notice (and/or further examination notice), and the applicant has to deal with the official objection. The application will be granted if the applicant can overcome all the objection or it may be provisionally refused if the application does not fulfil the formal requirement.
(5) If the applicant cannot overcome the official objection after examination, provisional refusal will be issued, which is subject to review requested by the applicant.
(6) Applicant may request for review on provisional refusal notice, and the examiner will issue review opinion (or one or more further review opinion), and the applicant has to overcome the objection. If the objection can be overcome, patent will be granted. Otherwise, the examiner will issue final refusal notice, subject to appeal to High Court.
2. Standard patent by re-registration (“Standard Patent (R)”)
Standard Patent (R) application in Hong Kong is retained. The procedure is the same as the existing system, i.e. the application must be based on a designated patent application filed in China, U.K. or Europe designating U.K. It may simply regard this system as a re-registration system. The substantive examination of the Standard Patent (R) is conducted by the designated patent office.
The application process is divided into two stages, i.e. 1st Stage – Request to Record must be filed in Hong Kong within 6 months after the date of publication of the designated patent and 2nd Stage – Request for Registration and Grant must be filed in Hong Kong within 6 months after the publication of the request to record in HK; OR, the date of grant of the designated patent, whichever is later. No grace period is allowed for 1st Stage or 2nd Stage filing.
3. Short term patent (“STP”)
Under the current system, STP application can be filed directly in Hong Kong, subject to examination on the formalities and submission of a search report issued by competent patent registry, e.g. China National Intellectual Property Administration (“CNIPA”). Proprietor to establish the validity of the patent in enforcement proceedings before the court. The STP is retained with refinement as follows:
(1) The application can include 2 independent claims instead of 1 independent claim.
(2) Proprietor or interested party can request for post-grant substantive examination of the short term patent. If the proprietor wishes to commence enforcement action of an unexamined patent, it is a pre-requisite to have certificate of substantive examination.
(3) If the proprietor cannot overcome the objection raised in the examination notice issued against the short term patent, the examiner will issue provisional revocation notice of the patent, subject to appeal to High Court.
(4) When making a threat of infringement proceedings against a person, the proprietor should furnish with that person the basic patent information. Otherwise, the threat may be regarded as groundless and a party aggrieved by the threat may be entitled to seek relief.
Filing Tips under the New Patent System
|Missing priority deadline||– Possible restoration of priority right if a subsequent standard patent (O) or short-term patent application is filed within 2 months after the expiry of the 12-month priority period|
|– Statement of priority and supporting documents may be filed with the Registrar within 16 months from the earliest priority date claimed|
|Reference to an earlier specified application||– An alternative for filing something that appears to be a description of an invention (one of the minimum requirements for obtaining a filing date)|
|– Applicant can file a reference to an earlier specified application together with a statement indicating that a description and the drawings (if any) of the invention are completely contained in the specified application|
|Missing parts of descriptions or drawings||– applicant can take its own initiative to file missing parts of description or drawing within 2 months from date of filing OR file the same within 2 months (extendable) from the date of notice|
|– If filed within the prescribed period but later than the accorded date of filing, the accorded date of filing may be changed to the date on which the missing parts of the description or missing drawings were filed|
|Voluntary amendment||– may be filed any time before publication; OR|
|– at the time of filing request for substantive examination|
4. Other Remarks
i. Regulating certain title or descriptions of Patent Practitioners
Under Patents (Amendment) Ordinance 2016, use of certain titles or descriptions is prohibited:
- certified patent agent/attorney
- registered patent agent/attorney
- a title/description reasonably causing a belief that a person using such title/description holds a qualification that is –
(i) granted for approving that person to provide patent agency services in Hong Kong; and
(ii) recognized by law or endorsed by the Government.
- Exception: titles/descriptions that solely relate to a person’s qualification for providing patent agency services in jurisdictions outside Hong Kong with clear indication of such jurisdictions is allowed.
ii. Revised official fee for patent filing
- Concession official fee for e-filing over paper filing, applicable to Standard Patent (O) and STP
- Inclusion of official fee for request for substantive examination Standard Patent (O) application/STP and request to review Registrar’s opinion on provisional refusal of Standard Patent (O) application or provisional revocation of STP
- Revision of renewal fee of a standard patent on progressive scale, 1st level for 3rd to 10th year; 2nd level for 11th to 14 year and 3rd level for 15th to 19th year.
iii. New set of patent forms
- New set of official forms for patent filing will be introduced, e.g. for filing Standard Patent (O), request for substantive examination. Certain existing official forms are also revised to accommodate the new patent system.
iv. PCT patent
- Though Hong Kong is not a PCT patent application receiving office, the applicant can claim priority within 12 months from their PCT patent application for the Hong Kong patent application.