Patents bill making its way through the legislature

The Hong Kong government recently introduced the Patents (Amendment) Bill 2015 into the Legislative Council for first and second readings. To meet present-day standards for patent systems and to promote Hong Kong as a regional hub for innovation and technology, four years ago the government commenced a review of the local patent system. In December 2012 the advisory committee submitted a report to the government with key recommendations, which were accepted in February 2013. The government has since engaged in various implementation tasks.

Key proposals under the bill include the following.

Introducing original grant patent system for granting standard patents
The current re-registration system requires applicants first to register a patent in a designated patent office outside Hong Kong before they can register the patent in Hong Kong. The proposed new system would allow applicants to file applications for standard patents directly in Hong Kong without first registering elsewhere. The current re-registration system would be retained.

Refining short-term patent system
At present, short-term patents with only one independent claim (with no limitation on the number of dependent claims) are subject only to formality examination. The bill proposes to refine the short-term patent system to:

• include substantive examination as a prerequisite to commence enforcement action;
• grant the owner of a short-term patent or a third party with a legitimate concern about the patent’s validity a right to apply for substantive examination;
• require the owner of a short-term patent making a threat to commence infringement proceedings to give full particulars of the short-term patent in question, and failure to do so may constitute a groundless threat which would entitle the aggrieved party to seek relief; and
• increase the number of independent claims to two.

Implementing interim regulatory measures for local patent practitioners pending establishment of full-fledged regulatory regime
While the establishment of a full-fledged regulatory regime is still pending, the bill proposes interim regulatory measures in the meantime.

At present, there is no regulation on local patent practitioners. Any person can provide patent agency services in Hong Kong and can use the title 'patent agent' or 'patent attorney'. The bill proposes regulating the use of certain titles, which under the new regulatory regime would be conferred exclusively on qualified patent practitioners, as well as other titles that would likely make service users believe that a patent practitioner’s qualification is endorsed by the government or recognised by law. This is to prevent the misuse of titles that may confuse service users about patent practitioners' qualifications. The bill proposes to make this behaviour an offence, with appropriate exemptions to allow the legitimate and reasonable use of professional titles lawfully obtained outside Hong Kong.

After the first and second hearings of the bill in the Legislative Council on November 11 2015, a bills committee was set up, which held its first meeting on December 1 2015. Subject to the progress of the bill, the government expects to implement the new patent system in 2017 at the earliest.