November 17, 2015

Hong Kong: Government introduced Patents (Amendment) Bill 2015

According to a press release by the Government of Hong Kong SAR, on October 30, 2015, the Patents (Amendment) Bill 2015 was published to provide a legal framework for reforming the patent system in Hong Kong. The patent systems, practices and procedures as well as major regional and international patent treaties were taken into account in formulating the amendment Bill statements.

Currently, two types of patents for inventions may be granted in Hong Kong, namely standard patents and short-term patents. The Patent (Amendment) Bill introduces changes to each of them.

OGP route for standard patents

Standard patents are currently granted according to the “re-registration” system, which prescribes that a patent in Hong Kong is granted only after obtainment a prior grant in one of three “designated patent offices”, namely State Intellectual Property Office of the P.R.C (SIPO), the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO) for patents designating the UK.

The Bill provides the new Originally Grant Patent (OGP) system in addition to current re-registration system. Under the OGP route an applicants will have an opportunity to file applications for a standard patent directly to the Hong Kong IP Department (HKIPD) without obtaining a patent from above-indicated foreign authorities first.

Refining the short-term patent system

Short-term patents are a quicker and cheaper way to protect inventions with a shorter commercial life cycle. Currently, short-term patent application may include only one independent claim. Short-term patents are granted by the Hong Kong Patents Registry after formal examination of the applications based on the result of the substantive examination conducted by the designated authorities.

The Patents (Amendment) Bill offers the following steps in order to refine short-patent system:

1) substantive examination of a short-term patent should be made as a precondition to start the enforcement action;

2) if a short-term patent owner has a legitimate concern or doubt about the validity of the patent he may apply to the Registry for substantive examination of the patent;

3) number of independent claims in a short-term applications is to be increased, etc.

The patent legislation reform in Hong Kong was launched in 2011 by providing public consultations. Current Patents (Amendment) Bill 2015 was published in the Gazette on October 30, 2015, and introduced into Legislative Council (LegCo) for the First and Second Readings on November 11, 2015. 

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Author: Lynda Miller