Patents of Invention

General Information

Kinds of protection: as of June 27, 1997 (last amended December 19, 2019), the Patents Ordinance provides for an independent Hong Kong patent system consisting of three types of patents: (1) a standard patent (R) (twenty years protection) - which is a process of re-registration of a patent issued by the United Kingdom Intellectual Property Office, European Patent Office (with U.K. as one designated country), or the Patent Office of the People's Republic of China; (2) an original grant patent (OGP) - applicants may file their standard patent applications with the Hong Kong Patents Registry directly without following the route based on an earlier corresponding patent application in one of the designated offices. And there will be substantive examination for such OGP applications; (3) a short-term patent (eight years protection) - which provides for patent applications to be filed originally in Hong Kong.

Remark on IP implications of the Brexit: the U.K.'s position as a contracting State of the EPO is not affected by the U.K.'s withdrawal from the EU, and European (U.K.) patents will continue to be obtainable through the EPO route.

Divisions: filing a voluntary divisional application with or without a request by the Examiner is possible. 

Duration: subject to the payment of renewal fees, the term of a standard patent is twenty years, whereas the term of a short-term patent is eight years starting from its filing date in Hong Kong.

Membership in International Conventions: the main international industrial property conventions which have been applied to the Hong Kong SAR by the People’s Republic of China are: the Paris Convention, the Convention establishing the World Intellectual Property Organization (WIPO), the WTO’s TRIPS Agreement and the Patent Cooperation Treaty.

The following highlights the key features of the Patents Ordinance (as amended on December 19, 2019).

Novelty: (a) an invention shall be considered to be new if it does not form part of the state of the art; (b) the state of the art shall be held to comprise 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 before the earliest filing date of the said invention. 

Novelty grace period: a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months before the deemed date of filing of the application or the filing date of a patent application for the invention, and if it was due to, or in consequence of (a) an evident abuse in relation to the applicant or any proprietor of the invention for the time being; or (b) the fact that the applicant or any proprietor of the invention for the time being has displayed the invention at a prescribed exhibition or meeting, which the fact has been stated at the time of filing the designated patent application.

Standard Patent (R)

FILING

For a standard patent application (R), the Patents Ordinance sets forth a two-stage registration system. Prescribed documents must be filed and necessary fees must be paid by all applicants to the Hong Kong Patents Registry.

Stage 1 – Request to record a patent application (called a designated patent application) – pre-requisite: the designated patent application must be published in its designated Patent Office. The designated Patent Offices consist of: the Chinese Patent Office, the United Kingdom Patent Office and the European Patent Office.

Filing requirements: within six months after the publication of the application in a designated Patent Office, filing of the following is required:
1. A Request to Record, stating name, address, country of incorporation of applicant(s) and name of inventor(s). If the name(s) of the applicant/inventor is/are not in Roman alphabet, a transliteration into Roman alphabet should be made. The name(s) should also be provided in Chinese (if applicable);
2. Photocopy of the designated patent application as published;
3. If designated patent application is based on PCT international application: a copy of international application as published; a translation of the international application published by the designated Patent Office; and, if applicable, date of issuance of Notice on the National Application Number by the Chinese Patent Office;
4. Payment of the filing and publication fees.

Minimum requirements to obtain a filing date: (1) a request to record is filed within the time limit; (2) an indication that a request is made to record a designated patent application; (3) information identifying the applicant; and (4) a reference to the designated patent application inducing the application number and the publication number assigned by the designated Patent Office.

Term for filing missing documents: if the minimum filing requirements are met, a period of two months from the date of the notice issued by the Registrar will be given if there are deficiencies in the request.

Electronic filing: available, with reduction of official fees.

Stage 2 – Request for registration and grant – pre-requisite: (a) the Request to Record in Hong Kong has been recorded in the Register and published; (b) the patent has been granted in the designated Patent Office.

Filing requirements: within six months after the date of grant of the designated patent or publication of the Request to Record, whichever is later, the following is required:
1. A Request for Registration and Grant, which should include a copy of the published specification of the designated patent, as granted and one should confirm that it is a true copy of the document issued by or kept at the relevant designated Patent Office;
2. Payment of the filing and advertisement fees.

Examination: formal examination only.

PROTECTION

Duration: twenty years from its deemed filing date.

Original Grant Patent (OGP)

Under the new Patents (Amendment) Ordinance effective on December 19, 2019, it is possible to make a direct filing route for seeking standard patent protection in Hong Kong without the need to have 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).

Applications filed through the OGP route are subject to substantive examination by the Hong Kong Patents Registry for determining the patentability of the subject inventions.

Filing requirements:
1. Name, address, country of incorporation of applicant(s) and name and address of inventor(s). If the name(s) of the applicant/inventor are not in Roman alphabet, a transliteration into Roman alphabet should be made. The name(s) should also be provided in Chinese (if applicable);
2. 1 copy of the specification including description, claims, abstract, and drawings;
3. If priority is claimed, a photocopy of the certified priority document with certified translation (if other than in English or Chinese).

PROTECTION

Duration: twenty years from its filing date.

Short-Term Patent

FILING

The Patents Ordinance provides for the application to register a short-term patent which is an application made directly to Hong Kong. Inventions which are a product or process can be the subject of a short-term patent. Applicants must file a search report from a prescribed authority. The short-term patent will be granted after passing a formal examination only.

Filing requirements:
1. Name, address, country of incorporation of applicant(s) and name and address of inventor(s). If the name(s) of the applicant/inventor are not in Roman alphabet, a transliteration into Roman alphabet should be made. The name(s) should also be provided in Chinese (if applicable);
2. 1 copy of the specification including description, claims, abstract, and drawings. The specification shall contain one or more claims but no more than two independent claims. Each claim shall contain a characterizing portion, preceded by the expression “characterized in that” or “characterized by”;
3. International Patent Classification; class/subclass;
4. If priority is claimed, a photocopy of the certified priority document with certified translation (other than English or Chinese);
5. Search report in Chinese or English; otherwise, a certified translation of the search report from one of the ten approved authorities is required. (Note: submission of the search report may be deferred by requesting for deferral of grant at the time of filing.)

Electronic filing: available, with reduction of official fees.

PROTECTION

Duration: eight years from its filing date.

Examination, Granting, Protection

Accelerated examination: not possible.

Publication for standard patent (R): (1) if a request to record is found to have satisfied the requirements and the deficiencies are found to have been corrected, then the Registrar shall (a) record the designated patent application and enter particulars of the request to record in the Register; (b) advertise the fact of such publication and entry by notice in the Official Journal; and (c) inform the applicant of the publication of the request to record; (2) it shall include: (a) the designated patent application, including the description, claims, any drawings and any search report or abstract published by the designated Patent Office and filed in the request to record; (b) the names of the proprietor and (if different) the inventor.

Beginning of protection: a standard patent (R) granted shall take effect from the date on which the fact of its grant is advertised in the Official Journal.

Duration: twenty years from the deemed application date.

Maintenance fees: for standard patent application (R) if no stage 2 is filed within five years, maintenance fees must be paid annually after the expiry of the fifth year, calculated from the date of publication of stage 1.

Renewal fees: for standard patent application (R), fees have to be paid annually after the expiry of the third year, calculated from the date of grant, for standard patent (R), fees have to be paid upon the patent application is granted; and for short-term patent, fees have to be paid after the expiry of the fourth year, calculated from the filing date. 

Annuity grace period: available, for six months subject to penalty for both types of above-mentioned fees.

Rights of prior user: available.

Compulsory licenses: provided by the law any time after the expiration of three years from the date of grant of a standard patent. An application for a compulsory license has to be filed with the court.

Supplementary Protection Certificates (SPCs): not available.

Assignment: there is no statutory deadline for the recordal of assignment. However, in order to be effective as against third parties, it is advisable to file an application for recordal of assignment at the Hong Kong Patents Registry within six months from the date of assignment. Otherwise, the assignee may not be entitled to an award of damages or an account of profits for infringement between the date of the assignment and its registration.

License: same as for an assignment.

Amendment of issued patent: available. An application to amend specification after grant for a standard patent (R) or OGP is available.

Revocation: available.

Nullification: application should be filed with the court.

Infringement and penalties: civil proceedings may be brought to the court by the patent owner or the holder of an exclusive license under a patent against an act of infringement. The court may then grant the following reliefs: (1) an injunction restraining the defendant from any apprehended act of such infringement; (2) an order requiring the defendant to deliver up or destroy any patented product in relation to which the patent is infringed or any article in which the product is inextricably comprised; (3) damages in respect of the infringement; (4) an account of the profits derived by the defendant from the infringement; (5) a declaration that the patent is valid and has been infringed by the defendant.