December 12, 2019

Patent system revised in Hong Kong

The Intellectual Property Office of Hong Kong is due to enforce the new Patent Amendment Ordinance and Patent Amendment Rules. The new rules enter into effect alongside revised patent fees as of December 19, 2019, implementing the system which offers an alternative route for the filing of patent applications.

It will now be possible to obtain patents under the new Original Grant Patent System (OGPS), allowing applicants to file standard patent applications in Hong Kong directly. The new system will coexist with the previous re-registration system, whereby applicants are obliged to file an initial corresponding application in one of three designated patent offices outside of Hong Kong. These offices include CNIPA, the UK IPO, or the EPO designating the United Kingdom.

The altered rules also refine the short term patent system, with new provisions regarding substantive examination being introduced. Previously, short term patents were not required to enter into substantive examination, however, the new provisions allow for the patent owner or any third party with concern for the validity of the patent to request a post-grant examination. These requests must be filed along with the corresponding fee.

In addition, the new provisions clarify the position of both IP office and applicant regarding the correction of deficiencies, inclusive of extensions of time for an application requesting a deferral of grant. As such, the IP office must notify the applicant of any deficiencies, and the applicant must correct them within 2 months of receipt of the notification. If the only deficiency in the short-term patent application is the lack of a search report, the applicant may request an extension of time for the filing of the report no later than one month prior to the deferred date of grant.

The combination of amended patent legislation and fees is set to encourage further patent filings through the streamlining of the protection process. While foreign corporations who currently file prior applications in China or UK/EPO may not be immediately affected by the alterations, small and medium-sized businesses, especially those based in Hong Kong, will benefit from the direct filing route and reduced e-filing fees.



Author: Danielle Carvey