- Author: Jessie Gao; Slim Kou
I. Introduction
In Hong Kong, patents protect inventions, being products, substances, or processes which are new and inventive. A patent for an invention gives the patent owner the right to exclude others from using the invention within a particular jurisdiction for a limited period.
Patents in Hong Kong are divided into two main categories: 1) standard patent (with a maximum protection period of 20 years) and 2) short-term patent (with a maximum protection period of 8 years). Among them, Hong Kong standard patents are further classified into two types: a) re-registration standard patent and 2) original grant standard patent. Both types meet different needs and provide a flexible IP protection solution for global innovators.
II. Prosecution
For applicants who have patent applications or patents in China, Europe, or UK, it is possible to extend protection in Hong Kong based on the former patent applications or patents, which can save costs while quickly obtaining protection. Therefore, this article will first focus on the application process of re-registration standard patents to help everyone better understand and utilize this mechanism.
Option 1: Re-registration Standard Patent
A re-registration standard patent refers to a patent registered in the Hong Kong Intellectual Property Department (HKIPD) based on a patent application or a granted patent from one of the following patent offices:
China National Intellectual Property Administration
European Patent Office (for patent applications or patents designating the United Kingdom)
United Kingdom Intellectual Property Office
Under the “re-registration” system, the prerequisite for applying for a re-registration standard patent is that the applicant must have previously submitted an earlier corresponding patent application to one of the three above-mentioned designated patent authorities. The application for a re-registration standard patent only undergoes a formal examination to determine whether the applicant has submitted the required documents and information in accordance with statutory requirements.
The application process can be divided into 2 stages below.
Stage 1 Request to record:
- Request to record
The applicant must file a request to record in the Hong Kong Special Administrative Region (HKSAR) within 6 months after the designated patent application is published by the above-mentioned designated patent offices. The applicant must submit relevant documents and information for the patent application and pay the application fee (HKD 275 for electronic application, HKD 380 for paper application) and publication fee (HKD 68) within 1 month after the application is submitted.
The materials required for submitting a Hong Kong re-registration standard patent application are as follows:
-request to record;
-application text in Chinese or English and sequence listing if any;
-applicant’s and inventor’s names and addresses;
-title and abstract of the invention in Chinese and English;
-certified priority document, if a priority is claimed;
-declaration of inventorship if the applicant is not the inventor;
-If the applicant is not the same applicant as named in the designated patent application, a statement explaining the applicant’s right to apply (for example a copy of an assignment) is required;
-copy of the published designated patent application.
- Examination for Setting the Submission Date of the Record Request
If the application form submitted by the applicant includes information about the applicant’s identity and a statement regarding the corresponding designated patent application, the HKIPD will set the submission date for the applicant’s filing application.
- Formal Examination and Publication
After setting the submission date for the filing record, the HKIPD will conduct a formal examination. If the application does not meet the formal examination requirements, the HKIPD will notify the applicant to make corrections within 2 months.
If there are no deficiencies in the application or the deficiencies have been corrected, the HKIPD will publish the application in the Hong Kong Intellectual Property Gazette.
At the end of 5 years from the filing date of the designated patent application, if the application has not been granted, the applicant must start paying maintenance fees annually after the expiry of the 5th year from the anniversary of the deemed filing date (same as the filing date of the designated patent application) first occurring after the date of publishing the Hong Kong patent application until the application is granted or rejected.
Stage 2 Request for registration and grant:
- Request for registration and grant
The applicant must file a request for registration and grant in Hong Kong within 6 months after the application is published in the Hong Kong Special Administrative Region or the designated patent authority grants the designated patent (whichever is later). The applicant must submit documents and information for the patent application and pay the application fee (HKD 275 for electronic application, HKD 380 for paper application) and publication fee (HKD 68) within 1 month after the application is submitted.
- Examination for Setting the Submission Date of the Registration and Grant Request
If the application form submitted by the applicant includes information about the applicant’s identity, a statement regarding the corresponding patent, and the publication number of the patent application, the HKIPD will set the submission date for the applicant’s registration and authorization request.
- Formal Examination
After setting the submission date for the registration and grant request, the HKIPD will conduct a formal examination. If the application does not meet the formal examination requirements, the HKIPD will notify the applicant to make corrections within 2 months.
- Grant and Publication of Re-registration Standard Patent
If the corrections have been replied to or there are no deficiencies that need to be corrected, the HKIPD will grant the re-registration standard patent and publish it in the Hong Kong Intellectual Property Gazette. The annual fee for the Hong Kong re-registration standard patent starts to be paid 3 years from the anniversary of the deemed filing date (same as the filing date of the designated patent application) first occurring after the patent is granted. The re-registration standard patent has a maximum protection period of up to 20 years from the deemed filing date.
Option 2: Original Grant Standard Patent
For applicants who are unable to apply for a Hong Kong standard patent by extending a prior filing in China, Europe or UK, the application process for an original grant standard patent is provided below for reference.
- Submission of Application
An application for an original grant standard patent can be directly submitted and granted in the Hong Kong Special Administrative Region. There is no time limit for submitting an application for an original grant standard patent in Hong Kong. However, if the applicant claims a priority, the application must be submitted within 12 months from the earliest priority date.
After receiving the application, the HKIPD will issue a receipt and a patent application number to the applicant.
The materials required for submitting an application for an original grant standard patent in Hong Kong are as follows:
-request to grant a patent;
-application text in Chinese or English, and sequence listing if any;
-applicant’s and inventor’s names and addresses;
-title and abstract of the invention in Chinese and English;
-certified priority document, if a priority is claimed;
-declaration of inventorship if the applicant is not the inventor;
-If the applicant is not the same applicant as named in the designated patent application, a statement explaining the applicant’s right to apply (for example a copy of an assignment) is required.
- Formal Examination and Publication
After the patent application is submitted, the HKIPD will conduct a formal examination, mainly checking the format and completeness of the application documents. If the application does not meet the formal examination requirements, the HKIPD will issue a correction notice, requiring the applicant to make corrections within 2 months.
If the formal issues have been corrected, the HKIPD will publish the application as soon as practicable 18 months after the filing date or the earliest priority date.
- Substantive Examination
The applicant must request a substantive examination within three years from the filing date of the original grant standard patent application (or the earliest priority date), otherwise the application will be deemed withdrawn. The applicant is required to pay the substantive examination fee (HKD 4,000) within 1 month after submitting the request for substantive examination. The scope of the substantive examination includes requirements such as novelty, inventiveness, and industrial applicability. At present, the substantive examination is all completed by examiners from the China National Intellectual Property Administration.
If the substantive examination meets the requirements, the HKIPD will grant the patent right. If the application is considered not to meet any examination requirements, the HKIPD will issue a examination notice to the applicant. The applicant needs to respond to the examination notice within four months after the date of the examination notice by filing a written representation and/or a request to amend the application.
The applicant will need to elaborate, revise or clarify his response if required by a further examination notice issued by the Registrar. Such elaboration, revision or clarification must be filed by the applicant within four months after the date(s) of the further examination notice(s). Failure to timely file a response to any examination notice or further examination notice by the applicant will render the application being regarded as being withdrawn. If the Registrar, upon considering the applicant’s response(s) to the examination notice(s) and/or any further examination notice(s), still considers that the application does not comply with the examination requirement(s) concerned, the Registrar will make a provisional decision of rejection. The applicant may file a request to review the provisional decision of refusal within two months after the date of the provisional decision by filing a written representation and/or a request to amend the application.
If the Registrar maintains the view that the application does not comply with the examination requirement(s) in question, he will issue a review opinion to that effect. The applicant could respond by filing a written representation, a request to amend the application, and/or a request for hearing (if the Registrar has offered the applicant an opportunity to be heard) within two months after the date of the review opinion.
If the Registrar remains unconvinced that the relevant requirements are met, he may issue one or more further review opinion(s) to that effect. The applicant will need to respond by providing elaboration, revision or clarification of his earlier response, and/or requesting a hearing (if the Registrar has offered the applicant an opportunity to be heard) within two months after the date of the relevant further review opinion. Failure to respond within the above time limit will result in a final refusal to grant the patent.
- Grant
If the original grant standard patent application passes the substantive examination, the HKIPD will grant the patent right and publish it in the Hong Kong Intellectual Property Gazette. The annual fee for the Hong Kong original grant standard patent starts to be paid 3 years from the anniversary of the filing date first occurring after the patent is granted. The original grant standard patent has a maximum protection period of up to 20 years based on the filing date in Hong Kong.
In other cases, the Registrar will issue a final decision of refusal to grant the patent. The decision of the Registrar is subject to the right of appeal to the Court of First Instance.
Option 3: Short-term Patent
In addition to standard patents, Hong Kong also offers short-term patents for applicants to choose from. The application for a short-term patent in Hong Kong allows a maximum of two independent claims. The application process for a short-term patent is similar to that of an original grant standard patent, with the main difference being that a short-term patent does not require a substantive examination. However, a search report from the China National Intellectual Property Administration’s Intellectual Property Search and Consultation Center (costing CNY 4,000) is required. The positive or negative nature of this search report does not affect the grant of the short-term patent, which has a maximum protection period of only 8 years and requires renewal once before the expiration of the 4th year from the filing date.
III. Remarks
Based on the above three application routes, applicants can make choices according to their own circumstances. If the applicant has already filed applications in China, Europe, or the United Kingdom, then registering a Hong Kong application based on that application will be more cost-effective. However, if the applicant wants to apply for a Hong Kong invention patent separately, it is more suitable to directly submit an original grant standard patent application to the Hong Kong Intellectual Property Department.
A PCT application cannot directly enter Hong Kong. However, if an applicant has filed a PCT application and the application has entered the national phase in China, Europe, or the United Kingdom, then by submitting a request to record and a request for registration and grant in accordance with the Hong Kong re-registration patent procedure at the two stages of national phase patent publication and grant, a Hong Kong re-registration standard patent can be registered.
