After about five years of consultation and consideration since October 2011, the Legislative Council enacted the Patents (Amendment) Ordinance 2016 (hereinafter, the “Amendment Ordinance”) in June 2016, which lays a legal foundation for introduction of an “original grant patent” system in Hong Kong. The Amendment Ordinance will become effective on 19th December 2019.
B. Overview of Hong Kong's Previous Patent System
The previous patent system in Hong Kong was established based on the Patents Ordinance of 1997. In accordance with the Patents Ordinance, patents may be granted in Hong Kong were divided into standard patents and short-term patents. The standard patents were valid for up to 20 years, while the short-term patents, up to 8 years. Standard patents were not directly granted by Hong Kong’s patent authorities, but applicants were required to apply to the Hong Kong Patent Registry after they were granted approval by one of the three designated patent offices, namely the National Intellectual Property Administration of China, the Intellectual Property Office of the United Kingdom or the European Patent Office.
This previous patent system, which relied on patent offices of other countries or regions to examine the application, is known as the “re-registration” system. Under that system, the Hong Kong Patent Registry undertook only a simple formal examination on patents, but did not undertake a substantive examination. Short-term patents, also known as minor patents under the prior system, were valid for up to 8 years. The short-term patents were set up to protect inventions with a short commercial life. Compared to standard patents, short-term patents are simpler in procedures, faster in applications and less in costs. Similarly, the Hong Kong Patent Registry did not conduct substantive examinations on short-term patents, but only conducts a simple formal examination.
Prior to the Amendment Ordinance, the Hong Kong government had very limited regulations on local patent practitioners. There were no examinations conducted in Hong Kong for patent agents, but only provisions stating that persons who are not domiciled in Hong Kong or who have been found guilty of criminal offences shall not act as patent agents. Basically anyone was free to offer patent agency services in Hong Kong with titles such as “patent agent” or “patent attorney”. Although many practitioners engaged in patent agency in Hong Kong, in fact, their qualifications for patent practice was provided by other jurisdictions. Due to absence of regulations in Hong Kong, under the prior system any person, whether they possessed the relevant technical and legal skills or not, may claim to be a patent practitioner.
C. Keys of the Patents (Amendment) Ordinance 2016
1. Establishment of original grant patent system
The Amendment Ordinance establishes an original grant patent system by a framework of laws and procedures for application, examination and granting of patents. The original grant patent system will be implemented along with the existing standard patent “re-registration” system. After the original grant system is fully implemented, applicants may directly submit applications for standard patents in Hong Kong for substantive examination, rather than file in advance with the designated patent offices in Mainland China, United Kingdom or Europe.
The Amendment Ordinance, Section 45 has added Part 3, specifically Article 37A to 37ZD, which provides regulations on, inter alia, Hong Kong applications, non-prejudicial disclosure, priority rights, original patent applicants and original patent application procedures. As of receipt of the original patent application, the Patent Registrar of the Intellectual Property Department will conduct a formal examination of the application. If the application fulfills the formal requirements, the Registrar will publish the statement of patent application, the name of the applicant or the name of the inventor in a prescribed manner after a certain period. The applications need not to be disclosed through a designated patent authority outside Hong Kong. Upon publication, at the request of the applicant, the Registrar will initiate a substantive examination procedure for the application. If, upon examination, the patent application does not fully comply with requirements, the Registrar may make objections to such application. As of receipt of the objections, the applicant has three options in response to the Registrar’s objections: to file a representation, to propose amendments to the statement and claims of rights, or to require the Registrar to review its objections. The Registrar must, in accordance with the prescribed procedures, consider whether the representation or the proposed amendment submitted by the applicant is sufficient to offset the grounds for the previous objections. After substantive examination, if the Registrar considers that the application complies with all the requirements of examination, the standard patent will be granted and published.
Since currently Hong Kong authorities are not capable or experienced in independently conducting substantive examinations, the Registrar of the Patent Registry only handles initiate the substantive examination procedures, while the specific substantive examination is temporarily outsourced to the National Intellectual Property Administration.
2. An improved short-term patent system
The short-term patent system in Hong Kong provides applicants faster access in application, at less cost, for protection of the maximum of 8 years for inventions with shorter commercial life in Hong Kong. However, in order to prevent abuse of the system, the Amendment Ordinance proposes to take measures to improve the existing short-term patent system for enhancement of its integrity. The relevant reform1 of the system includes the followings:
(1) a “post-grant substantive examination” procedures for short-term patents, which means it allows owners of a short-term patent or any third party with reasonable questions or suspicions on the validity of a short-term patent, to require the Intellectual Property Department to conduct a “post-grant substantive examination” on the patent;
(2) the request for the above-mentioned “post-grant substantive examination” is made to provide a basis for initiating relevant legal proceedings on the enforcement of short-term patents that have not been examined;
(3) it requires that any owners of short-term patent, provided that they intend to take legal action on infringement of the patent, provide sufficient information of such short-term patent to the party being threatened, including materials of post-grant substantive examination; otherwise their threats may be deemed as unreasonable threats;
(4) it eases the limits on the number of independent claims in short-term patent applications (it changes from one independent claim to two independent claims);
(5) under the improved short-term patent system, the Intellectual Property Department, as of receipt of a request for a substantive examination of a short-term patent, will conduct a substantive examination on the short-term patent, to determine whether the short-term patent complies with the patentability pursuant to laws; and
(6) upon the substantive examination, if the short-term patent is deemed to have complied with all requirements of the examination, it will be granted a certificate of substantive examination issued by the Intellectual Property Department, as the evidence of the validity of the patent; otherwise the short-term patent will be canceled.
3. Regulations on patent practitioners
The Amendment Ordinance adds provisions to regulate patent practitioners and prohibits any person from using certain titles and descriptions related to patents, such as authorized patent agent, registered patent agent, accredited patent attorney and registered patent attorney. The provisions are the preliminary measures to be taken prior to the establishment of a holistic regulation system. Any breach of the provisions will be deemed as an offence and liable for a fine of up to HK$500,0002.
D. Patents (General) (Amendment) Rules 2019
On 15th March 2019, the Intellectual Property Department published the Patent (General) (Amendment) Rules 2019 on their website, which were submitted to the Legislative Council of Hong Kong on 20th March 2019. Upon review and consideration of the draft by the Legislative Council, the Amendment Rules will come into effect as of the date specified by the Relevant Director on the Gazette, and this effective date will be the same as the effective date of the Amendment Ordinance.
The Patents (General) (Amendment) Rules 2019 are established pursuant to the Amendment Ordinance 2016, which provide specific rules and procedures for the new patent system. A summary includes the following four aspects for reference:
1. the Rules provide the specific procedures for the filing and examination of applications for original grant patent3;
2. the Rules regulate the improved short-term patent system, and provide specific regulations and procedures for implementation on the “post-grant substantive examination”4;
3. the Rules advise on standard fees under the new patent system (including application fees, substantive examination fees, fees for requests for reconsideration after substantive examinations)5; and
4. other amendments on the relevant rules or other technical amendments.
The new patent system in Hong Kong mainly introduces an original grant patent system for standard patents, refines the existing short-term patent system and introduces interim regulatory measure prohibiting use of certain confusing or misleading titles and descriptions related to patent practice in Hong Kong.
The Commerce and Economic Development Bureau (CEDB) of Hong Kong and the State Intellectual Property Office (SIPO) signed a Co-operation Arrangement in the Area of Intellectual Property on 28th June 2017, with a view to foster exchanges and co-operation in the area of intellectual property between the two sides. SIPO will provide Hong Kong original grant patent systems with staunch support and technical assistance for substantive examinations.
1. Patents (Amendment) Ordinance 2016, Section 120 and Section 123
2. Patents (Amendment) Ordinance 2016, Section 129
3. Patents (General) (Amendment) Rules 2019, Section 19, Part 3A
4. Patents (General) (Amendment) Rules 2019, Section 58, Part 9, Division 5 and Division 6
5. Patents (General) (Amendment) Rules 2019, Section 75
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