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Legal news, views and insight from LexisNexis Hong Kong
6 January 2020 | by LexisNexis Hong Kong
A new patent system was implemented in Hong Kong on 19 December 2019 pursuant to the enactment of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019. This includes the introduction of a new original grant patent (“OGP”) system and the refinement of the existing short-term patent (“STP”) system, aimed at providing faster and more cost-effective patent protection in Hong Kong, and overall enhancing the intellectual property protection regime in Hong Kong.
The new OGP system will allow for the grant of standard patents for a maximum term of 20 years protection through direct applications in Hong Kong, which will run in parallel with the existing “re-registration” system as an alternative application process. The re-registration system did not allow direct applications to the Patents Registry, and instead only granted patent protection in Hong Kong provided that the applicant had filed a corresponding patent application with a designated foreign patent office, including Mainland China, the UK and the EU.
Under the new OGP system, examination of a standard patent application comprises of (1) examination to accord a date of filing for the application; (2) examination on the formal requirements of the application; (3) publication of the application; (4) substantive examination of the application; and (5) outcome of the application: grant and publication of the patent or final refusal of the patent grant.
With regards to the substantive examination, the Registrar examines whether the application satisfies the patentability requirements under the Patents Ordinance including novelty, inventiveness, and industrial application. Upon satisfying all patentability requirements, the patent will be granted and published. On the other hand, if the Registrar finds that the application fails to fulfil the requirements, he may raise an examination notice to which the applicant needs to respond by filing a written representation and/or request to amend the application.
The STP system currently offers a cost-effective alternative to protect inventions for a maximum term of eight years and is not subject to substantive examination upon application. The amendments will refine this system by introducing a post-grant substantive examination of a STP, so that a party with legitimate concern about the validity of the patent may request the Registrar of Patents to conduct a substantive examination under similar criteria as the OGP system. If the Registrar is of the view that all examination requirements have been complied with, the Registrar will issue a certificate of substantive examination and enter a record in the register accordingly. A request to conduct a post-grant substantive examination would be compulsory for any proprietor who wishes to commence an enforcement action.
For commentary on related topics, please see:
The Annotated Ordinances of Hong Kong – Patents Ordinance (Cap. 514)
Halsbury’s Laws of Hong Kong 2nd Edition – Intellectual Property
Lexis Advance® Hong Kong Practical Guidance – Commercial
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