In this article we consider the Hong Kong patent system, beginning by briefly exploring the reasons for considering and obtaining patent protection in Hong Kong. Following this, the patent system itself is outlined, including the types of patent which can be applied for, and the process by which protection can be obtained.
When it comes to considering patent protection overseas, we are often asked by clients to advise or provide guidance on the countries or regions in which patent protection should be sought. Although the general rule is to consider countries in which the patented product is to be manufactured or sold, there are exceptions, and Hong Kong is an excellent example of one such exception to the rule.
During the last few decades, China’s economy has developed year on year, which has had a dramatic effect on the way the country is viewed in terms of a market. Although China remains a major manufacturing hub, it has also developed into a very lucrative market and for these reasons is often included in the list of countries in which to obtain patent protection overseas.
Obtaining patent protection in China not only provides the patentee with a mechanism by which to enforce their rights, in order to stop the manufacture or sale of identical products, it also provides the patentee with an effective way to prohibit the export of ‘copied’ products by shipping through one of China’s major ports. However, due to the fact that a Chinese patent does not have jurisdiction in Hong Kong (and vice versa), the limitation on export can potentially be easily overcome by shipping the product through the Port of Hong Kong.
This is a considerable problem, particularly where patent protection has not been sought in the US, for example, thus allowing a third party to import copied products into the US, therefore exploiting this unprotected market.
In view of the above, obtaining patent protection in Hong Kong is an effective way in which to prohibit the export of products that would otherwise have been prohibited from export from China. Furthermore, with a population of more than seven million, Hong Kong is potentially in itself a very lucrative consumer market, a market that is quite often overlooked.
Unlike the position in the United Kingdom, the Hong Kong patent system is a system whereby a first or so-called designated patent application is re-registered, examined and granted.
There are two types of patents in Hong Kong:
- a short-term patent, which has a term of 8 years, and
- a standard patent, which has a term of 20 years.
This article concentrates on the Hong Kong standard patent which gives rise to an exclusive right. In order to obtain grant or registration of a Hong Kong standard patent, it is necessary to have a designated patent application on which the registration can be based. Such applications which can serve as designated applications include patent applications granted by one of three patent offices, known as designated patent offices and which include:
- the State Intellectual Property Office (the Chinese Patent Office)
- the European Patent Office (for a European patent application designating the United Kingdom),
- the United Kingdom Patent Office.
It is also possible to base a Hong Kong standard patent application on the publication of an international patent application, provided that application enters the European regional phase (and the European patent application designates the United Kingdom), or provided that the international patent application enters the Chinese national phase.
In order to obtain the re-registration of one of the above-mentioned patent applications in Hong Kong, it is necessary to follow a two-stage procedure, as detailed below.
The first stage requires the applicant to file a request to record the designated patent. This stage must be completed within six months of publication of the designated patent application. Provided there are no deficiencies in the application, this stage can be completed within three months from the date of the receipt of request, and concludes with a filing date being accorded.
The second stage concerns filing a request for registration and grant. This stage must be completed within six months of grant of the designated patent application. It is during this stage that the patent is examined, although it is important to note that such examination is limited to a formalities examination. No substantive examination is ever conducted.
The registration of a designated patent application in Hong Kong is relatively inexpensive and often the procedure is very straightforward, typically being completed within a number of months at each stage.
One important consideration is the payment of a renewal fee in order to keep the patent in force. An annual renewal fee is first due in respect of the fourth year anniversary of the filing date of the designated patent application, and each year thereafter.
When combined with patent protection in China, obtaining patent protection in Hong Kong provides a mechanism by which to strengthen your position in an already attractive market, and in many cases for reasonably minimal additional expenditure.
Please contact Albright IP should you require any advice or assistance regarding obtaining patent protection in Hong Kong.
