Hong Kong Flashcards
What are the types of patents and their terms?
Standard patents (R and O) - 20 years.
[NB an R patent is based on a patent granted in China or the UK including EP(GB)s, whereas an O patent is an original filing in Hong Kong.]
Short term patents (utility models) - 8 years.
Is there a grace period?
No.
However, there is 6 months grace for abusive disclosures and for a disclosure at an international exhibition recognised by the Chinese government.
Are business methods, computer programs, and methods of treatment patentable?
No.
Is there a national security first filing obligation?
No.
Are there excess claim fees (for O patents)?
No.
When is the first renewal fee due?
Whichever is earlier of
- 3 years from the first anniversary of filing after grant; and
- 5 years from the first anniversary of filing after publication of the request to record the patent.
What are the acceptable languages?
English or Chinese.
Explain the registration system for R patents.
Within six months from publication of the UK/CN/EP(GB) application (henceforth the base application), the application must request the recording of that application in the register in Hong Kong.
A filing fee and an advertising 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 correct any defects that are found.
Within six months from grant of the base patent, a request for registration of the granted base 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.
After registration and grant, the patent will be independent of the base patent and can only be challenged in a Hong Kong court.
Explain the examination process for O patents.
Examination must be requested within 3 years of priority.
An examination report will be issued within 4 months for responding. A second examination report is possible but not guaranteed.
If the application does not comply, the Examiner will issue a provisional refusal. The applicant can request that this be reviewed, submitting arguments and amendments within 2 months of the provisional refusal. If they still don’t agree, they will issue another provisional refusal with another 2 month deadline.
Thus, provisional refusals are just examination reports.
What are the rules for requesting priority for an O patent?
The declaration can be made on filing, or up to 16 months after priority with payment of a fee. You only get the 16 months if early publication has not been requested.
Can a standard patent come from a PCT?
There is no PCT national phase in Hong Kong.
Standard (R) patents can be registered on the basis of a PCT application designating the UK, EPO, or China.
Standard (O) patents must be filed by claiming priority from the PCT application within 12 months.
Summarise the rules for short-term patents.
Only one renewal fee is payable, and it is due within the last three months of the first four years. There is a six month grace period.
Priority must be declared on filing, and certified copies of priority documents must be filed within 3 months.
They are only formally examined and they are published as soon as possible after grant.
A short term patent can be applied for on the basis of a PCT application which entered the national phase in China as a utility model.
