General Information On Patent Filing In Hong Kong

Question
General information on patent filing in Hong Kong?

Answer
a) TYPES AND DURATION OF PATENTS
i) Standard Patents (a term of 20 years);
ii) Short-term Patents (a term of 8 years) having only one independent claim and any number of subsidiary claims.

b) VALIDITY & ENFORCEMENT
i) Both types pf patents may be litigated in Hong Kong Courts;
ii) Standard Patents will be independent of original grants (except for revocation);
iii) Short-term Patents – the burden of establishing validity of the patent in court proceedings will be imposed on the patentee.

c) LANGUAGE OF PROCEEDINGS
i) English or Chinese

PART I : STANDARD PATENTS
Application Procedure
Stage 1
File a request to record within 6 months after the date of publication by a designated patent office. A designated office is the Chinese Patent Office, United Kingdom Patent Office Or European Patent Office in respect of patents granted under European Patent Convention designating the United Kingdom.

Stage 2
File a request for registration and grant within 6 months of the date of grant of the patent by the designated patent office.
(The deadlines for filing of Stage 1 or Stage 2 are non-extendible).

Documents to record a standard patent based on an application filed at a designated patent office.
i.) A copy of the designated patent application as published including the abstract, description, claims, drawings and search report;
ii.) If the application does not state the name(s) of inventor(s), then a statement identifying person(s) whom the applicant believes is the inventor(s) is required;
iii.) The name and address of the applicant;
iv.) If the applicant is not same as one stated in the designated application, then a statement explaining the derivation of title along with supporting prescribed document is required;
v.) If priority is claimed, then details of the priority document(s) including filing date(s), application number(s) and filing country, are required;
vi.) If a claim is made for non-prejudicial disclosure, then details of the name, place and opening date of the exhibition or meeting, as well as the date if the first disclosure, is required; and
vii.) Title of invention and abstract in Chinese and English.

Documents to record a standard patent based on a PCT Application.
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of the translation of the PCT application published by the designated patent office;
iii.) A copy of the publication indicating that the PCT application has validly entered into the national phase by a designated patent office; and
iv.) Title of invention and abstract in Chinese and English.

Documents to request registration and grant of a standard patent.
i.) A copy of the granted specification of the designated patent, including the description, claims and drawings together with a statement confirming that it is a true copy of the document issued by or kept at the relevant designated patent office.
ii.) Where the person filing the request is not the person named on the register as the applicant for a standard patent, then a statement explaining the derivation of title along with supporting prescribed documents is required;
iii.) Where a request to record contains a statement claiming priority, the applicant may be required to submit copies of the priority document(s); and
iv.) Title of invention and abstract in Chinese and English.

Maintenance Fee
Payment of a maintenance fee is required for all pending patent applications. The maintenance fee is required to be paid before expiry of the 5th or any succeeding year from the anniversary of the date of filing the designated patent application first occurring after the aforesaid date of publication.

Example :
Filing date of designated patent : 01 JANUARY 2002
Publication date of request to record : 05 MAY 2004
Relevant date first occurring after publication date : 01 JANUARY 2005
First maintenance fee due : 01 JANUARY 2010

If the maintenance fee is not paid within the prescribed time limit, the patent application may be restored within 6 months upon paying the maintenance fee as well as an additional fee.

After the request for registration and grant (stage 2) is filed, the applicant is no longer required to pay the maintenance fee.

Renewal
All granted patents must be renewed. The renewal fee shall be paid before expiry of the 3rd year but not earlier than a date 3 months before the expiry date.

Example :
Filing date of designated patent : 01 JANUARY 2000
Grant date in Hong Kong : 05 MAY 2004
Relevant date first occurring after grant date : 01 JANUARY 2005
First renewal due date : 01 JANUARY 2008

Standard patent shall cease to have effect at expiry of the 3rd or any succeeding year if renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.

PART II : SHORT-TERM PATENTS
Application Procedure
- One step process and requires no substantive examination in Hong Kong.
- The application can claim priority if it is filed within 12 months of the filing date of the first application in either a Paris Convention country/WTO member country.
- Alternatively, a short-term patent can be filed via a PCT application which enters the national phase in China as a utility model application within 6 months.

Documents for a short-term patent based on a Paris Convention/WTO member country.
i.) The specification including:
a) description of the invention to which the applications relates;
b) at least one claim but not exceeding 1 independent claim, and
c) any drawings referred to in the description;
ii.) Title of invention and abstract in English and Chinese;
iii.) Original search report in relation to the invention (issued by an established searching authority);
iv.) Name and address of the applicant and inventor(s);
v.) Where applicant is not the sole inventor, then a statement indicating the derivation of title is required;
v.) If priority is claimed, then a statement of priority and a copy of the priority document(s) is required.
(A request for deferral of grant of a short-term patent can only be made at time of filing the application)


Documents for a short-term patent based on a PCT application designating a utility model in China
i.) A copy of the PCT application as published by the International Bureau;
ii.) A copy of International Search Report for the PCT application;
iii.) Date of national phase entry of the PCT application into China;
vi.) A copy of the translation of the PCT application (if any) published by the Chinese Patent Office; and
v.) A copy of the information published by the Chinese Patent Office concerning the PCT application.

Renewal
Renewal fees are payable 3 months before expiry of the 4th year from the date of filing. Renewal fees for a short-term patent are only paid once.

A short-term patent shall cease to have effect at expiry of the 4th year if the renewal fee is not paid, but may be restored within 6 months upon paying the renewal fee and any prescribed additional fee.