Intellectual Property – Hong Kong – Patents

Hong Kong – PATENTS

 

Patent protect your new technology by giving you a legal right to prevent others from manufacturing, using, selling or importing your patented invention.

Applying for a patent elsewhere in the world or in other regions of China does not automatically give you patent protection in Hong Kong.

You need patent protection in Hong Kong to stop unauthorized manufacture, use, sales, or imports of your invention in Hong Kong. You will need a patent in Hong Kong if you intend to license someone else to manufacture, use, sell, or import your invention in Hong Kong.

There are two types of patent in the Hong Kong

– standard and

– short-term

Protection under standard patent is renewable annually for a maximum term of 20 years.

Protection under short-term patent is renewable after four years from filing, for a maximum term of eight years.

In the Patents Registry, they examine your patent application to ensure that it meets the formal requirements for filing. They do not conduct substantive search and examination of the novelty or inventiveness of your invention.

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Applying for a 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, China (formerly Chinese Patent Office)

– 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

– a request to record the designated patent application, that is the Chinese, EP(UK) or UK published patent application (stage 1)

– a request for registration and grant in Hong Kong of the Chinese, EP(UK) or UK granted patent (stage 2)

 

Applying for a short-term patent

The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of the three designated patent offices.

A short-term patent application in Hong Kong is made by filing a request for grant supported by relevant documents.

 

Standard patent application – first stage

You need to file a request to record in Hong Kong within six months after the publication of the designated patent application in the designated patent office

 

Standard patent application – second stage

You need to file a request for registration and grant in Hong Kong at the latest within six months after publication of the request to record in Hong Kong, or the grant of the designated patent by the designated patent office.

 

Short-term patent application

In general, there is no time limit for filing a short-term patent application in Hong Kong.

But if you wish to claim priority from a first application in a Paris Convention country or World Trade Organization member territory you should file your short-term patent application in Hong Kong within 12 months of filing the first application.

If your invention has been disclosed and you claim that the disclosure does not prejudice your invention’s novelty (Patents Ordinance section 109) you should file your short-term patent application within six months of the disclosure.

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International application under the Patent Cooperation Treaty (PCT)

If you make an international application designating China, you can also seek standard or short-term patent protection in Hong Kong. You can file the international application either with the State Intellectual Property Office, china or the International Bureau. After the international application has entered its national phase in China, you can file an application for a standard or short-term patent in Hong Kong. Applying for the grant of a patent based on international application designating China is explained below.

If your international application is to protect a utility model you can nevertheless apply for short-term patent protection in Hong Kong. Note, however, that in Hong Kong the criteria for novelty and inventive step are the same for both a standard and a short-term patent and registered design. Short-term patent failing the criteria may subsequently be challenged in the Courts.

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You should patent your invention before publishing details

You need to keep your invention confidential until you file a patent application. Disclosure of your invention before filing may mean that you cannot get a patent because your invention is no longer considered new.

You may also want protection for your invention outside Hong Kong, so you need to ensure that any disclosure in Hong Kong, even after filing, does not prejudice your patent application in another country.

 

Legal Basis

Section 93(1) of Patents Ordinance states that : –

“An invention is patentable if it is susceptible of industrial application, is new and involves an inventive step.”

By section 94 : –

“(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise of everything made available to the public (whether in Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way –

(a) before the deemed date of filing of an application for a standard patent for the invention or , if priority was claimed, before the date of priority; or

(b) before the date of filing of an application for a short-term patent for the invention or, if priority was claimed, before the date of priority,

whichever is earlier.”

 

For the purpose of this case, attention should be drawn to section 94(3)(c) which specifically defined the state of the art to be comprised of the content of : –

“any application for a short-term patent –

(i) of which the date of filing or, if priority was claimed, the date of priority is before the date referred to in subsection (2); and

(ii) pursuant to which a short-term patent was published under this Ordinance on or after the date referred to in subsection (2).

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What constitutes “made available to the public”

Once the product has become patented, the product is effectually put into the public domain by the publication of the patent. Merrell Dow Pharmaceuticals Inc. and anor. v H.N. Norton & Co. Ltd. [1995] PRC 233. The Court of Appeal was of the view that : –

“the disclosure of a process makes available to the public, for the purposes of that process, everything which inevitably takes place as part of the process, whether appreciated or not. That is what is meant by the process becoming available to the public.”

Therefore if a utility model register in Beijing for a product no right of priority would be given if the application in Hong Kong is made 12 months after the date of filing of the PRC patent.

The existence of the PRC patent would become an obstacle for patent registration in Hong Kong as the product has already been made available to the public by the information disclosed in the patent application in PRC. Once the product has been disclosed to the general public, it would become part of the state of the art at present and therefore lack novelty.

So, if the product is part of the state of the art at the time of the application in Hong Kong, the invention could not be considered to be NEW and thus NOT PATENTABLE.

 

Warning

It all boil down to one thing – if you register a patent right especially utility made in China or elsewhere, apply it in Hong Kong before publication of the grant, and do not wait more than 12 months from the date of the registration.

In patent registration, strategy is important. Protect your interest, consult us on international, especially China – Hong Kong Patent Registration.