Patent Law in Hong Kong:
Reform of the Patent System in Hong Kong: For your information, a new patent system will be launched in Hong Kong by the end of 2019 with the commencement of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019. These two legislative amendments have not yet been in force.
One of the main features under the new patent system is that an original grant patent (“OGP”) system will be introduced, in addition to the two existing types of patent in Hong Kong (i.e. standard patent and short-term patent) as outlined above. The OGP system will run in parallel with the existing “re-registration” system for the grant of standard patents and will offer an alternative route for seeking standard patent protection for a maximum term of 20 years in Hong Kong. It enables direct filing of standard patent applications in Hong Kong, without the prior need for filing a corresponding patent application with any designated patent office outside Hong Kong. Applications filed under the OGP system will be subject to substantive examination by the Patents Registry.
Hong Kong Patent Application:
It is not possible to file with the Hong Kong Patents Registry any Paris Convention patent application or PCT patent application.
* There are currently only two types of patent in Hong Kong, namely (a) standard patent and (b) short-term patent.
Hong Kong Standard Patent Application – 20 year duration
The recordal system operates in two stages:
Stage 1: Filing a Request to Record — within six months after the date of publication of the designated patent application. No extension of time is allowed.
(a) Name and address of applicant(s);
(b) Name of inventor(s);
(c) Abstract (including title of invention) in both English and Chinese;
(d) A copy of designated patent application as published; and
(e) A copy of PCT publication (if any)
(f) Simply signed Power of Attorney (POA).
Stage 2: Filing a Request for Registration and Grant — within six months after the date of grant of the designated patent. No extension of time is allowed.
(a) A photocopy of designated patent as granted issued by the designated Patent Office
Time frame for registration: Depending on the designated patent application.
There is no official search, nor substantive examination, conducted by the Hong Kong Intellectual Property Department (HKIPD). Therefore, an applicant can choose which designated office to use where it could likely allow the widest scope of protection.
We would like to advise you that the time frame of registration of a standard patent in Hong Kong would largely depend on:-
(i) when the corresponding designated patent application is published (as the 1st stage filing must be made in Hong Kong within 6 months after publication of the designated patent application by the designated patent office); and
(ii) when the designated patent is granted (as the 2nd stage filing must be made in Hong Kong within 6 months after the local publication of the Request to Record, or the grant of the designated patent by the designated patent office, whichever is the later).
For a standard patent, the monopoly right given to the exclusive use of an invention is renewable annually for a maximum period of 20 years dating from the date of filing the corresponding designated patent application (i.e. patent application made in (a) the Chinese Patent Office or (b) the European Patent Office, in respect of a patent designating the United Kingdom or (c) the United Kingdom Patent Office). Accordingly, before the client can apply to register a standard patent in Hong Kong, the client will have to file a patent application in any one of the designated patent offices (“DPO”), i.e. the Chinese Patent Office, European Patent Office or UK Patent Office. Upon the acceptance and publication of the designated patent application by the DPO, the client may then proceed with the standard patent application in Hong Kong.
A standard patent application in Hong Kong is made in two stages by filing a Request to Record (i.e. the 1st stage filing) the published designated patent application and by filing a Request for Registration and Grant in Hong Kong (i.e. the 2nd stage filing) of the granted designated patent.
For the Request to Record (i.e. the 1st stage filing), it must be filed with the Hong Kong Patents Registry within 6 months from the publication date of the corresponding designated patent application, whereas the Request for Registration and Grant (i.e. the 2nd stage filing) must be filed with the Hong Kong Patents Registry within 6 months of the grant of the designated patent or of the local publication of the Request to Record, whichever is the later. No grace period is available for the aforesaid time limits.
Hong Kong Short-Term Patent Application – 8 years duration
Again, a short-term patent application can be filed directly at the Hong Kong Patents Registry. No official search or substantive examination will be conducted, and the patent will be granted after passing a formality examination.
(a) Name and address of applicant(s) and inventor(s);
(b) A Chinese or English specification contains one or more claims but not exceeding one independent claim;
(c) Abstract (including title of invention) in both English and Chinese;
(d) An photocopy of an original Search Report;
(e) If the applicant is not the inventor, please advise us how the applicant acquired the right to make this application, e.g. by employment or assignment, no supporting documents are needed; and
(f) In case claiming Convention Priority, filing number, date and country of filing are required. A photocopy of the certified priority document should be filed within two months from the date of notice of deficiency. If the document is not in English or Chinese, an English or a Chinese translation of the document, the translator’s name and official capacity are also required.
(g) Simply signed Power of Attorney (POA).
Time frame for registration: 6-9 months. According to our past experience, if the application process is smooth with no official deficiency or objection raised by the Registrar against the application, the whole application process will take around 6 to 9 months from the filing date of the application to registration, depending on the examination speed of our Patents Registry.
For a short-term patent, the term of monopoly right lasts for a maximum period of 8 years, subject to renewal from the expiry of the fourth year from the filing date of the application for a further period of four years. Short-term patents can be granted in Hong Kong independent of any overseas patents.
In general, there is no time limit for filing a short-term patent application in Hong Kong. However, if the client wishes to claim priority from a first application in a Paris Convention country or World Trade Organization member territory, the short-term patent application should be filed in Hong Kong within 12 months of filing the first application.
To support an application for a short-term patent, the applicant needs to file a search report with the Registry. For your information, the search report must be a prior art search report prepared by one of the prescribed searching authorities, i.e. one of the three DPO or an international searching authority appointed under Article 16 of the Patent Co-operation Treaty.
Maintenance Fee: Only required for applications not yet granted 5 years after publication of the first stage; payable each year thereafter till filing of second stage.
Trademark Law in Hong Kong
Legal basis is the Trade Marks Ordinance, Cap. 559 (TMO) in force since April 4th, 2003.
Even after the commission of Hong Kong to China, Hong Kong and China maintain independent laws and there is a separate trademark law in Hong Kong (i.e. TMO). IP rights registered in Hong Kong will not be automatically protected in China, and vice versa. The principles of “common law” apply.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition so to establish common law rights.
Documents Required for Filing Trade Mark Application in HONG KONG
1. Detail information of the Applicant;
2. Description of goods/ services (10 th edition Nice Classification);
3. Soft copy into jpg document format; if color claimed 10 prints of the mark for each application (maximize 10cm X 10cm);
4. A copy of business registration for incorporation applicant (or passport copy and number for individual);
5. Detail information of priority application if required.
6. Simply signed Power of Attorney (POA).
* As well as the specific items, the Class headings of Nice Classification are also acceptable and no limitation for the numbers of the items in each class in Hong Kong. Multiple-class applications are possible.
Procedure of Trademark Registration in Hong Kong:
1. Filing Application
2. Deficiencies Checking – about two months
3. Substantive Examination – about 1 to 6 months
4. Publication for Opposition – 3 months
5. Registration – about half month to 1 month
The application is filed at the Trade Marks Registry.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use before the date of application for registration.
Prior to registration, the trademark application is published in the “Hong Kong Intellectual Property Journal”.
The first office action is issued after approx. 2 months.
National Opposition Period
The opposition period is 3 months minus 1 day from the date of publication of the trademark application.
If the priority right is claimed, the Convention priority details, i.e. priority date, priority country and prior application number, are required.
If there are no deficiencies in the application and no objections to the trademark, the whole application process mighat be taken as little as 9 to 12 months from receipt of application to registration.
A trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.