According to news.gov.hk, a news network launched by the Government of the Hong Kong Special Administrative Region, an original grant patent (OGP) system will be introduced to Hong Kong, providing an alternative route to the patentees for seeking standard patent protection in Hong Kong.
Under the new system, the patentees can file standard patent applications directly in Hong Kong, thereby no longer being restricted to prior filing the corresponding applications with a designated patent office outside Hong Kong as required by the existing “re-registration” system.
The new system will also refine the short-term patent system, and prohibit the use of certain misleading or confusing titles or descriptions relating to the patent practice.
According to the Commerce and Economic Development Bureau, the launch of the new patent system marks a milestone in the development process of Hong Kong’s patent systems, facilitating to build Hong Kong into an innovation and IP trade hub.
1. Invention Patents
2. Inventions that are new, involve an inventive step and are industrially applicable are patentable in Hong Kong if they do not belong to the excluded classes.
3. There are two types of patents: standard patents and short-term patents, with a maximum term of protection of 20 years and 8 years respectively.
Existing Patent System
1. Standard Patents
A standard patent application for an invention must be timely filed in Hong Kong based on a corresponding patent application for the same invention in Mainland China, the United Kingdom or the European Patent Office (for patent applications designating the United Kingdom)[the “re-registration” route]
2. Short-term Patents
A short-term patent application for an invention can be directly filed in Hong Kong. Only one independent claim is allowed for each application.
Both types of patent applications are only subject to formality examination by the Patent Registry.
Features of the new patent system
Introduction of an original grant patent (OGP) system which provides a direct filing route for seeking standard patent protection in Hong Kong
1. Applications filed under the OGP route are subject to substantive examination by the Patents Registry for determining the patentability for their underlying inventions.
2. Applications may choose to file their standard patent applications through the OGP route for the existing re-registration route based on their protection strategies.
Refinement to the existing short-term patent system
1. Each application may contain up to two independent claims.
2. Short-term patents may be subject to post-grant substantive examination by the Patents Registry (upon request by its proprietor or a third party having reasonable grounds/legitimate business interests) for determining its validity.
3. The proprietor of a short-term patent must file a request for substantive examination of the patent with the Patents Registry before commencing legal proceedings to enforce the patent.
4. The proprietor of a short-term patent who threatens another person with infringement proceedings relating to an unexamined short-term patent must, upon request by the alleged infringer provide him/her with adequate information to identify the patent.
Regulation of titles/descriptions relating to patent practice
1. The use of confusing or misleading titles/descriptions including “registered/certified patent agent” and “registered/certified patent attorney” is prohibited.
2. Use of titles/descriptions of any qualifications lawfully obtained for patent practice elsewhere is permitted as long as the jurisdiction where the qualification was obtained is clearly indicated.
Major benefits of the new patent system
1. The new OGP system helps to reduce the patenting costs and time for obtaining standard patents.
2. Refinement to the short-term patent system safeguards against potential abuse of the system thereby enhancing its integrity while maintaining the overall cost-effectiveness of seeking short-term patent protection in Hong Kong.
3. The regulatory measure concerning titles or descriptions relating to patent practice paves the way for Hong Kong to introduce a full-fledged regime on regulating local patent practitioners in the long term.
4. The new patent system forms an important building block to the local patent protection regime which facilitates the development of Hong Kong into a regional innovation and technology hub. Parties shall seek independent professional advice on any patent-related matters. (New Patent System Leaflet from www.ipd.gov.hk)