Opening the door for original grant patents in Hong Kong

To date, Hong Kong has no system for conducting substantial examination on patent applications – applicants must secure patent protection at one of the following three designated patent offices:

• the State Intellectual Property Office (SIPO);
• the European Patent Office; or
• the UK Intellectual Property Office.

As examiners do not examine the novelty or patentability of a patent application, the registration system in Hong Kong remains more of a re-registration system, given that the patent office is responsible only for conducting formality exams and re-registering foreign-approved patents.

As part of an effort to develop Hong Kong into a regional innovation and technology hub, the city will introduce new application procedures for original grant patents by the end of 2018.

In 2016 the Hong Kong Legislative Council passed the Patent (Amendment) Ordinance, which will finally take effect in 2018. According to the ordinance, a new standard patent system will run parallel to the existing registration system in Hong Kong. The new system will allow inventors to file applications for standard patents (which will be valid for a maximum of 20 years) directly in Hong Kong independent of the three designated patent offices.

Further, substantive examination will be available for short-term patent applications (with a maximum validity period of eight years). Owners of short-term patents and third parties may request the registrar to conduct a post-grant substantive examination and issue a substantive examination certificate confirming the patent’s validity. A request for substantive examination or a substantive examination certificate will become a prerequisite for owners to commence enforcement proceedings in Hong Kong courts against others based on the short-term patent.

Developing Hong Kong patentability principles
The patentability principles in Hong Kong are expected to mirror those currently adopted by SIPO. As Hong Kong has yet to acquire personnel with the experience and technical expertise to conduct substantive examinations on patent applications, the substantive examinations will be initially outsourced to SIPO; Hong Kong examiners will also be sent to SIPO offices for training.

While aspects of the Chinese patentability guidelines will likely be adopted by Hong Kong examiners, the Intellectual Property Department emphasised that Hong Kong is still under the ‘one country, two systems’ administrative model, so its patentability principles will not be exactly identical to SIPO’s. Hong Kong’s legal system remains a commonwealth jurisdiction where existing local, UK and Australian case law will still be considered by the Hong Kong courts when deciding on Hong Kong’s patentability standards.

Advantages
Although the existing ‘re-registration’ system has been operating smoothly for many years by giving applicants cross-jurisdictional protection after securing a patent grant in one of the three designated patent offices, the issue with the existing system is that patent grants from any one of the three designated offices is time consuming and costly.

Considering the rapid evolution of technology, the delay in getting a patent grant (usually five years from patent office approval to re-registering the patent at the Hong Kong patent office) could render the application pointless as the innovation may be outdated by the time it reaches the market.

Having an original grant patent system in Hong Kong is a cost-effective and time-saving option for applicants to place their innovations on the Hong Kong market (eg, local small and medium-sized enterprises). Investors or inventors seeking to place their inventions on both the Hong Kong and foreign markets may also file a patent application in Hong Kong and with foreign patent offices simultaneously.

Hong Kong’s patent office will handle only a fraction of the volume of applications that SIPO is currently handling (to put things in context, the number of annual applications for invention patents filed at SIPO in 2017 exceeded 1 million), hopefully an original patent will be granted by Hong Kong (given that the application fulfils the patentability requirements) more efficiently than other foreign jurisdictions.

Unfinished business
Further information is anticipated regarding Hong Kong’s future patentability guidelines and how it will develop its own characteristics and strengths in order to attract investors and encourage inventors to apply for an original grant patent.

To fully develop Hong Kong’s patent system, it is important that locally granted patents are not limited by jurisdiction. The Hong Kong IP Department is developing its Patent Prosecution Highway to seek recognition for Hong Kong’s original grant patents in other jurisdictions and incentivise bigger businesses to apply for such patents in Hong Kong.