1e) Hong Kong Flashcards
Types of patent
Standard patent (R) and (O)– 20 year term
o Standard patent (R) - Based on patent granted in one of 3 designated patent offices (China, UK, EP
designating UK)
o Standard patent (O) - As of December 2019, under the original grant patent (OGP) system, applicants
also have the option to file standard applications directly with the Hong Kong Intellectual Property
Department.
Short term patent – 8 years
Patentable inventions
- Novelty/Inventive step
Absolute novelty
Pre-filed/post published HK patent or short term patent is novelty only prior art.
Inventive step – uses the Windsurfing-Pozzoli approach - Grace Periods
For both standard and short term patents:
o 6 month grace period (from filing or priority) for abusive disclosure
o 6 month grace period (from filing or priority) for disclosure at an officially recognized international
exhibition recognised by the Chinese Government, providing that a statement is made on filing the
application that the invention has been so displayed - Exclusion to patentability
Discovery, scientific theory or mathematical method, aesthetic creation, business methods (scheume, rule or
method for performing a mental act, playing a game, computer programs, presentation of information as such
not patentable. Method of treatment, plant or animal variety and an essentially biological process are also
excluded matter.
The short term patent will be published as soon as possible after its grant
Process for Obtaining a National Patent - filing and fees
- filing and fees
Fees/other: An application for a Standard Patent (O) can be submitted directly to the Hong Kong Intellectual
Property Department. Alternatively, a patent application can be filed with the CNIPA of China, the UKPO or
the EPO (designating UK), upon which the application for a standard patent in Hong Kong is to be based.
An application for a standard patent may be filed by the applicant in the designated patent application or his
successor in title
An application for a short-term patent may be filed by any entitled person.
Applicants must have an address for service in Hong Kong and thus applicants not residing in Hong Kong
should appoint an agent
Obligation to file first with national office: No
Excess claim fees: For Standard Patents (O), claims must be reasonable in number for the invention. For
Standard Patents (R) via other systems, see GB, EP, CN patent system
Renewal Fees: 3 years from the first anniversary of the filing date after the date of grant of the standard
patent, or 5 years from the first anniversary of the filing date after publication of the request to record the
application in Hong Kong, whichever is earlier
Process for Obtaining a National Patent - language
Applications are to be filed in English or Chinese. If the designated patent application is in Chinese, the
application for a standard patent may be filed in Chinese or English
Process for Obtaining a National Patent - search and exam
Search before grant: N/A
Type of examination: For Standard Patents (R), registration system for patents via GB, CN, EP. For
Standard Patents (O), new substantive examination system at national office effective from 19 December
2019. Post grant substantive examination also necessary for short term patents (STP).
Time limit to request exam: N/A
Multiply dependent claims allowed: N/A
Prior Art Disclosure requirements: N/A
Examination Process: The procedure for Standard Patents (R), grant via registration of GB, CN, EP patents:
1. Within six months from publication of the basic application, the applicant must request the recording of
that application in the Register in Hong Kong. A filing fee and an advertisement fee are payable within
one month from the earliest filing of the request. The application will be examined for formal
requirements and the applicant given two months to remedy any defects that are found.
2. Within six months from the date of grant of a patent, a request for registration of the designated patent
and for grant of a standard patent must be filed. A filing and advertisement fee are payable within one
month after the earliest filing of the request for registration and grant.
3. After registration and grant, the patent will be independent of the patent it is derived from and its
validity can only be challenged in the Court in Hong Kong
New Substantive Examination process effective 19 December 2019
1. Revisions to the HK patent law effective from 19 Dec 2019 introduced a new type of 20-year patent
which is subject to substantive examination locally, and is referred to as an “original grant patent”
(OGP), or “standard patent (O)”. This new patent will coexist alongside the existing 20-year “reregistration
patent”, or “standard patent (R)”, which is the re-registration in HK of a patent granted on
an application for a UK patent, a Chinese patent, or a European patent designating the UK.
The substantive examination procedure for the OGP is initiated by the applicant filing a request for
examination within three years from the filing date (or the earliest priority date, if applicable).
Substantive examination proceeds in the conventional way, with the issue of examination reports,
followed by responses, leading to the acceptance or refusal of the application.
2. After registration and grant the patent will be independent of the basic patent and its validity can only
be challenged in the Court in Hong Kong.
Procedure:
o File request for substantive examination within 3 years of the date of filing/priority.
o Standard examination procedure including an assessment of novelty, inventive step, etc.
o If the requirements for patentability are not met, an examination notice is issued. Must respond within
4 months from that notice. A further examination notice may be issued.
o After the further examination notice, if the Registrar considers the application still does not comply
with the requirements, it will issue a provisional decision of refusal.
o A request to review the provisional decision of refusal must be filed within 2 months of the date of that
decision. The request should include your arguments and/or amendments.
o If the Registrar maintains its view, a review opinion to that effect is issued. Must respond within 2
months.
o Further review opinion(s) can be issued. Must respond with arguments and/or amendments and
request a hearing within 2 months. Else, a final refusal will be issued.
o Note: Initial formal examination is equivalent to the old process. Publication after formal examination
is 18 months from filing/priority.
Process for Obtaining a National Patent - grant
If the formal requirements have been complied with a short-term patent will be granted or the designated
patent will be registered and a standard patent for the invention be granted. A certificate of the standard
patent will be issued and a notice of grant be advertised in the HKIP journal
Process for Obtaining a National Patent - 3rd party challenge options
But… Only applies to granted “standard patent O”. Any person can oppose an allowable application by filing a
case for opposition within 1 month of the publication of grant in the HKIP journal and pay fee. Time limit
extendible by 1 month with a late fee.
Process for Obtaining a National Patent - Claiming priority
For an application for a short-term patent, priority must be claimed on filing the application, stating the date of
filing and application number of the application whose priority is claims, and the country, territory or area in or
for which this application was made. A copy of the application and a certificate stating the filing date of the
priority application must be filed within three months from filing the application. If the priority application is not
in English or Chinese, it must be accompanied by a translation into English or Chinese. A declaration of priority for a “standard patent O” is preferably made on filing. Non-extendible deadline of 16 months from
priority with prescribed fee to make the declaration (only applicable if early publication has not been
requested).
National Phase Entry From a PCT Application
- time limits (and any extensions of time) for national/regional phase entry and filing formal documents
It is possible to apply for a standard patent or for a short-term patent in Hong Kong on the basis of a PCT
application.
For a standard patent, a patent application must be filed at a designated patent office and may be a PCT
application designating China, the UK or the EPO (UK).
The grant of a short-term patent in Hong Kong via the PCT can be applied for on the basis of a PCT
application for a utility model designating China. The application for the short-term patent in Hong Kong must
be filed within 6 months from the date that the PCT application entered the National Phase in China
A “standard patent O” can be filed using standard 12 month priority claim. Restoration of priority up to 2
months after expiry of 12 month priority period with application for restoration. Applies “reasonable care”
criteria.
Utility Models / Other Patents – Short Term Patent
Term: Short Term Patent - Duration is four years from the date of filing, renewable once with a further fouryear
period; no extension. Renewal with the second four-year period must be requested during the last three
months of the first four-year period. 6 month grace period available.
What can be protected:
Available from PCT:
Conversion to/from patent:
Examination: Short-term patent applied for directly with the Patents Registry in Hong Kong or obtained on a
PCT application for a utility model designating China
Applications for the grant of a short-term patent are examined as to form only although a novelty search report
must be filed with such application (drawn up by the CNIPA, UKPO, EPO or another ISA). The Registrar may
refuse the grant of a short-term patent for an invention if he is of the opinion that the publication or working of
the invention would be contrary to public order or morality.
