Changes in patent system announced

The government recently announced that it has accepted the recommendations put forward by the Advisory Committee appointed to consider how Hong Kong should position its patent system in future and how best to implement any changes to that system in light of what the government decides.

The committee considered a total of 74 submissions filed in response to the Review of the Patent System in Hong Kong consultation paper launched in October 2011, and studied different aspects of the patent systems in other jurisdictions such as Australia, China, Macao, New Zealand, Singapore, the United Kingdom and the United States. Bearing in mind the long-term goals of developing Hong Kong into an innovation and technology hub, and ensuring that the patent system continues to meet changing needs, the following strategic recommendations were made to the government:

• Standard patent: An original patent system should be established with substantive examination outsourced to other patent offices, while at the same time retaining the current re-registration system.
• Short-term patent:
  • The current non-substantive examination system and the maximum eight-year protection term should be maintained.
  • Substantive examination should be made a pre-requisite to the commencement of infringement proceedings.
  • Both the patentee and any third party can apply to the Patents Registry for substantive examination of the patent.
  • When making a threat of infringement proceedings, the patentee should provide the party to whom the threat is made with full particulars about the patent; failure to so do would enable that party to seek a legal remedy.
• Regulation of patent agency services:
  • A full-fledged regulatory regime on patent agency services should be developed in the long term. 
  • Interim measures should be introduced having regard to the existing patent agency on the one hand, and the development of a regulated patent agency profession on the other.

The committee will continue to work on the details of implementing its recommendations, which will change the existing patent system significantly.