Effective December 19, 2019, Hong Kong will launch a new patent system that includes a new “original grant patent” (OGP), substantive examination for short term patents (STPs), and maintains the current re-registration system based on patents from China (CN), the United Kingdom (UK) and the European Patent Office (EPO) that designate the United Kingdom. The new patent system is based on the Patents (Amendment) Ordinance 2016 passed on June 10, 2016 and Patents (General) (Amendment) Rules 2019 issued on March 12, 2019.
Original Grant Patents
The new OGP system offers a 20-year term patent for direct filings in Hong Kong without the need to first file a CN, UK or EPO application. Upon receipt an OGP application, the Hong Kong registrar will initially conduct a formalities examination 1 . Similar to China, the applicant must then request substantive examination with three years of filing date (or priority date if earlier than the filing date). The patent registrar will then conduct a substantive examination to determine if the claimed invention is new, involves an inventive step, and is susceptible of industrial application subject to certain excluded classes. An OGP applicant will be able to file arguments and amendments in response to a rejection decision. The registrar will then grant the application if the claimed invention meets these three requirements.
Therefore, the resulting patent should have a presumption of validity similar to patents granted under the current re-registration system.
Short Term Patents
To enhance the integrity of STPs, Hong Kong is introducing a post grant substantive examination system for STPs. STPs do not undergo substantive examination and have a term of 8 years2. However, under the new patent system, any STP owner or any third party with a legitimate concern or doubt about the validity of an STP to request the Registrar to conduct substantive examination of the STP3 . This request for substantive examination will be a prerequisite for enforcing any STP.
The current re-registration system will run in parallel with the new OGP system. Accordingly, patent applicants can still apply for a standard patent using a two-step process based off of a Chinese patent application, a UK application or a EPO application designating the UK. In the first step, an applicant must file a request to record with the Hong Kong Patents Registry based upon a pending application within 6 months of publication of the CN, EPO or UK patent application. Once the CN, EPO or UK patent application has granted, the applicant must file an application for registration and grant in Hong Kong within 6 months.
The new patent system provides a more cost-effective route for patent applicants that are not seeking a European, UK or CN patent. However, as Hong Kong itself is a relatively small market, it is unclear if many applicants will take advantage of the new system and instead may continue to use the re-registration system.
More information about the new patent system can be found here.
1 Formalities includes a determination if the application contains (i) an indication that a standard patent under the OGP route is sought; (ii) information identifying the applicant; and (iii) something that appears to be a description of an invention, or a reference to a previously filed application of the invention.
2. A STP patent term is 8 years from the filing date subject to renewal at the end of the 4th year from filing.
3. STP substantive examination will be similar to substantive examination of OGPs including providing applicants with an opportunity to amend an STP and provide arguments in defense of the novelty, inventiveness and industrial applicability of the STP.