New Patent System in Hong Kong – Original Grant Patent Route

On December 19, 2019, the Hong Kong Intellectual Property Department (HKIPD) will launch a new patent system as the result of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019.[i] Under the new system, a direct patent filing route for standard Hong Kong prosecution (Original Grant Patent (OGP)) will be available in addition to the existing re-registration patent system. This change affects standard patents, which protect an invention for a maximum term of 20 years.

Under the OGP system, a patent specification for the standard patent application may be drafted in English or Chinese. A request for a substantive examination of the patent application must be filed within 3 years from the filing date or the earliest priority date of the standard patent application. The HKIPD will outsource aspects of the substantive examination of Hong Kong standard patent applications to the China National Intellectual Property Administration (CNIPA), as an interim arrangement. The examiners from the CNIPA will provide technical opinions relevant to the novelty and inventive step of the claimed invention, while the Patents Registry in Hong Kong will prepare the office action (examination notice) in view of CNIPA’s technical opinion and based on the Patents Ordinance in Hong Kong.

The Patents (Amendment) Ordinance 2016 also introduces changes in the existing short-term patent system. In Hong Kong, a short-term patent can be a cost effective alternative for obtaining limited patent protection for a maximum term of 8 years. Under the existing system, a short-term patent application can be filed directly at the Hong Kong Patents Registry and is only subject to formality examination. The new short-term patent system will increase the number of independent claims allowed from one to two independent claims, provided that the two independent claims are related to a single invention.

Short-term patents will also now be subject to post-grant substantive examination by the Patents Registrar under the following circumstances: (1) at the request of the short-term patent proprietor or any third party with a legitimate concern about the validity of the short-term patent; or (2) as a prerequisite to enforcement of an unexamined short-term patent by the short-term patent proprietor. If the short-term patent does not satisfy the examination requirements, the Patent Registrar will raise one or more objections, and the short-term patent proprietor will be given the opportunity to submit remarks and/or amendments to the short-term patent to address the Patent Registrar’s objections. If the short-term patent is not found to satisfy all substantive requirements, it will be revoked.

[i] https://www.spruson.com/patents/hong-kong-update-new-patent-system-featuring-an-original-grant-patent-ogp-route/

This article appeared in the November 2019 issue of Global Patent Prosecution.