The existing standard patent system in Hong Kong SAR is a re-registration system which consists of two stages. Currently, there is no substantive examination. The first stage involves filing a request to record with the Hong Kong SAR Patents Registry based on a pending application in the UK, Europe or China ("the designated patent application"). The first stage application must be filed within 6 months of the publication of the corresponding designated patent application. Once the corresponding designated patent application has proceeded to grant, an application for registration and grant must be filed in Hong Kong SAR within 6 month of the grant of the corresponding designated patent.
Under the newly passed Patents (Amendment) Bill, it is possible to file a standard originating patent application, either with a claim to priority or as a first filing directly with the Hong Kong SAR Patents Registry. Applicants will no longer need to rely on a filing in the UK, Europe or China. The standard originating patent application will need to go through substantive examination. If the Registrar is satisfied that the requirements are complied with, the application will be published and any party can file observations on the patentability of the invention.
The existing re-registration system will continuously run parallel with the OGP system.
As substantive examination procedures will be introduced under the newly passed Patents (Amendment) Bill, a proprietor of a short-term patent and, in certain circumstances, a third party can request the Hong Kong SAR Patents Registry to conduct a post-grant substantive examination in respect of a short-term patent whereby the a certificate of substantive examination will be issued to confirm the validity of the patent or, if the patent is found to be invalid, a revocation of the patent.
A request for substantive examination or a certificate of substantive examination will become a requirement for commencing enforcement proceedings in respect of a short-term patent before the court.
Under the new Ordinance, claims can relate to one invention or to a group of inventions that are so linked as to form a single inventive concept. This enables applicants to obtain more than one species of claim, such as a product claim and a method claim.
Under the current practice, a post-grant amendment to a standard patent and a short-term patent is made only to the court. The Patents (Amendment) Bill introduces a new post-grant amendment procedure for both a standard originating patent and a short-term patent in respect of which a certificate of substantive examination has been issued to be made to the Registrar and also to the court. The Registrar or court must publish the application and consider any opposition to the application.
However, the court will continue to be the only authority to make a post-grant amendment for a standard patent under the existing re-registration system.
A new provision has been added which requires the party (plaintiff) seeking relief for threat of alleged infringement of a short-term patent, the matters that other party (defendant) is required to prove, failing which the plaintiff would be entitled to the relief claimed.
Under the current practice, there is no restriction on people describing themselves as a patent agent, patent attorney or other similar description.
The Patents (Amendment) Bill prohibits the use by a person in Hong Kong SAR of a title or description such as "certified patent agent", "registered patent agent" or any other title that is likely to give the impression that the person holds a qualification, recognised by law or endorsed by the Government, for providing patent agency services in Hong Kong SAR. However there are exemptions that allow a person using a title or description that solely relates to the person's qualification for lawfully providing patent agency services in a jurisdiction outside Hong Kong SAR and clearly indicates the jurisdiction.
The new amendments to the current Patent Ordinance has introduced significant changes to patent law in Hong Kong SAR. As a result of the changes, applicants no longer have to rely on filings made in China, Europe or the UK but can simply apply for a Hong Kong SAR patent. This provides a useful tool and incentives for applicants and local Hong Kong SAR companies in protecting their inventions in Hong Kong SAR. Businesses will have more flexibility in formulating their patent filing strategy in accordance with their business plan.
