To ensure that Hong Kong’s system continues to meet present-day circumstances and be in alignment with Government’s vision of developing Hong Kong into a regional innovation and technology hub, Hong Kong Government appointed an Advisory Committee on Review of the Patent System in Hong Kong in 2011(the “Advisory Committee”) to review and advise it on (a) how the Administration should position Hong Kong’s patent system and (b) how best to implement suggested changes to the system. Apart from the macro issues, the review also involved different professional and technical considerations underpinning the patent system as well as specific issues on (a) whether and, if so, how Hong Kong should have its own “original grant” patent system (as opposed to the pre-existing “re-registration” system), (b) refinements to the short-term patent system and (c) regulation of patent agency services. C. K. Kwong, the writer of this article, was a member of this Advisory Committee.
The Advisory Committee made recommendations in its December 2012 Report comprising 202 pages https://www.ipd.gov.hk/eng/intellectual_property/patents/review_report.pdf(the “Advisory Report”) which were accepted by the Hong Kong Government in 2013. These recommendations include:-
- Introduction of an Original Patent Grant (“OPG”) system with substantive examination while retaining the pre-existing re-registration system for grants of standard patents;
- Refinement of the short-term patent protection system;
- Development of a regulatory regime on patent agency services.
The Ordinance https://www.gld.gov.hk/egazette/pdf/20162023/es12016202317.pdfand the Patents (General) (Amendment) Rules 2019 (the “Amendment Rules”) https://www.ipd.gov.hk/eng/intellectual_property/patents/patent_amendment_rules2019.htmwere both eventually brought into force on 19thDecember 2019.
The main changes brought about by the new system are as follows:-
- The alternative of direct filing of standard patent applications in Hong Kong without any prior application at any Designated Patent Office outside Hong Kong i.e. the China National Intellectual Property Administration (“CNIPA”), the European Patent Office (for patents designating the UK) and the United Kingdom Patent Office are now available under the OPG system. The Hong Kong Patents Registry will conduct both formality and substantive examinations;
- Requirement of substantive examination of a short-term patent after grant (as opposed to the previous system of having no substantive examination before or after grant) as a pre-requisite for commencement of enforcement action and making it a groundless threat for infringement proceedings being threatened without furnishing basic patent information to the person being threatened. The maximum number of independent claims per short-term application is increased to two;
- Interim measure prohibiting the use of certain professional titles (as opposed to restriction on the practice of patent agency) is introduced as an interim step to pave way for a long term full regulatory regime.
Within the first 8 minutes of launching the new OPG system at 9:00 am on 19thDecember 2019, the IP Team of Sit, Fung, Kwong & Shum filed Hong Kong’s first and second short-term and standard patent applications respectively under the new OPG system.
Further details of the new system are provided below:-
- Direct application of standard patent: Under the pre-existing system, only two ways of obtaining patent protection were available. First, a standard patent (with maximum protection of 20 years) by re-registration of a patentfiled with one of the “Designated Patent Offices”, namely the China National Intellectual Property Administration (“CNIPA”), the European Patent Office (for patents designating the United Kingdom) and the United Kingdom Patent Office. The second way is to file an application directly with the Hong Kong Patents Registry. A Short-term Patent (with a maximum term of 8 years) is subject to formality examination only.
Under the new OPG system, a patent proprietor has the option of making a direct application for a standard patent with the Hong Kong Patents Registry for same maximum term of 20 years. An OPG application is subject to both formality and substantive examinations. Examinations of an OPG application are conducted by the Hong Kong Patents Registry.
- Refinement of short-term patent system:A short-term patent application under the old regime was not subject to any substantive examination. The new patent system introduces post-grant substantive examination, which can be requested by either the short-term patent proprietor or any other party having a legitimate interest [s. 127B of PAO]. Parties who have legitimate interest in such request includes (a) those who have legitimate business interest with the patent proprietor (i.e. competitor with the patent proprietor or parties within the same area of the patent concerned) and (b) anyone with reasonable ground to suspect that the patent in question is not patentable (the person may not have legitimate business interest with proprietor) [s.127B of PAO]. This requirement safeguards the procedure from being abused [para 4.22 of Report of the Advisory Committee].
Further, a request for substantive examination is now a prerequisite to bring enforcement action for an unexamined short-term patent. Such prerequisite deters abuse, reduces litigation and discourages registration of non-patentable inventions [para 4.10 of Report of the Advisory Committee]. On the other hand, the new patent system gives patentees the benefit of increasing the maximum number of independent claims from one to two.
- Relaxation on Making Priority Claim: Under the old patent system, once the priority deadline was passed, a patent proprietor would not be able to claim convention priority. However, the new patent system allows restoration of priority claim if the standard patent or short-term patent application is filed within 2 months after the expiry of the 12-month priority period and the patent proprietor can satisfy the Registrar that all reasonable care required by the circumstances has been taken [s. 37D(1)(5) of PAO].
Moreover, the new patent system extends the timeline for submission of statement of priority and supporting documents, which can now be filed within 16 months from the earliest priority date claimed [(s. 31C(4)(5) of the Amendment Rules].
- Reference to earlier specified application: The new patent system has also introduced an alternative way to fulfil the minimum requirement of filing a description of invention. A patent proprietor can now make reference to an earlier specified application together with a statement indicating that a description and the drawings (if any) of the invention are completely contained in the specified application. This reference to earlier specified application is useful in fulfilling the said minimum requirement and securing a filing date first if the patent proprietor cannot provide full translations of the specifications at the time of application.
Further, a patent proprietor can claim priority and make reference to an earlier specified application at the same time [s. 37M (3)(c)(ii)of PAO].
- Revised Renewal fees for standard patents:The flat scale under the old regime was abandoned. The new system now adopts a progressive scale for renewing a standard patent: – they are now HK$450 per year for the 3rdto 9thyear, HK$620 per year for the 10thto 14thyear, and HK$850 per year for the 15thto 19th
The new patent system demonstrates Hong Kong Government’s commitment to IP protection by bringing it on par with those of advanced economies and at the same time allow Hong Kong to determine its own patentability criteria, standards and procedures in a way that would best meet the needs of Hong Kong and its stakeholders. Practical measures were made to strike a balance between the legitimate interest of patentees and the general public. In the long run, it also helps nurture and attracts talents, stimulates the growth of patent agency business and widens career paths for our science and engineering graduates.