What are patents?
A patent owner can protect his legal rights to invention by preventing others
from manufacturing, using, selling or importing his patented invention.
What are standard and short-term patents?
There are two types of patent in the HKSAR
- short-term patent; and
Protection under short-term patents is renewable for a maximum term of eight years after the expiry of the fourth year from the date of filing.Protection under standard patents is renewable per year after the end of the third year for a maximum term of 20 years.
How to apply for a patent?
The applicant should file an application with the Patents Registry of the Intellectual Property Department of the HKSAR. Patent applications made overseas or in China will not automatically give the applicant protection in Hong Kong.
The Registrar of Patents will examine the applicant’s patent application to ensure that it will meet the formal requirements for filing. The Registrar will not conduct substantive search and examination of the novelty or inventiveness of the application.
How to apply 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 the requisite documents and information.
How to apply 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, (“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; and
- the United Kingdom Patent Office.
A standard patent application in Hong Kong is made in two stages by filing:-
- a request to recordthe designated patent application, viz., the Chinese, EP(UK) or UK published patent application (stage 1); and
- arequest for registration and grant in Hong Kong of the Chinese, EP(UK) or UK granted patent (stage 2).
When should a short-term patent application be filed?
There is no time limit for filing a short-term patent application in Hong Kong.However, if the applicant wishes to claim priority from a first application in a Paris Convention country or World Trade Organization member territory, he should file the short-term patent application in Hong Kong within 12 monthsafter the filing of the first application.
Short-term patent application – examination and grant
Aftera filing date of the short-term application has been given, the Registrar of the Patents Registry will examine the applicant’s application and give the latter notice to correct any deficiencies, if any, within two months. If there is no deficiency or the deficiencies are corrected within the prescribed time, the Registrar will grant a short-term patent for the invention and subsequently will publish details of the granted patent followed by causing an advertisement of the grant in the Hong Kong Intellectual Property Journal.
A request to record should be filed with the Patents Registry in Hong Kong within 6 months after the publication of the designated patent application in the designated patent office.
Standard patent application – first stage – filing dateA filing datewill be allotted to the applicant’s request to record after the necessary information such as the identity of the applicant, the designated patent application number, its publication number and the date of publication are provided in the request to record.
Standard patent application – first stage – examination and publicationAfter a filing date has been given, the Registrar of Patent Registry will examine the applicant’s request and give the applicant notice to correct any deficiencies, if any, within two months. If there is no deficiency or the deficiencies are corrected within the prescribed time, the Patent Registry will publish the applicant’s record and advertise it in the Hong Kong Intellectual Property Journal.
Maintaining a standard patent applicationThe applicant may be required to maintain his standard patent application by filing a prescribed form and paying the maintenance fee if he is unable to proceed to the second stage (request for registration and grant) within 5 years after the publication of the request to record. Failure to maintain the application by the applicant will be deemed to have his application withdrawn.
When should a standard patent application – second stage – be filed?A request for registration and grant in Hong Kong shall be filed not later than 6 months after the publication of the request to record in Hong Kong or the grant of the designated patent by the designated patent office.