Introduction
- Hong Kong has 2 types of patents (1) standard patent, or (2) short-term patent. Both are used for protecting new invention, utilities, functional features, structures, processes, improvements, etc. The longest period of protection for standard patent is 20 years (subject to annual renewal, 1st to 3rd year excepting). The maximum term of protection for short-term patent is 8 years (subject to renewal for the 2nd four years before the expiry of the 1st four years).
- Patents do not protect the appearance of products, shape of design, pattern, decoration or visual aesthetics. To protect the exterior design features, application for registered design and the use of copyright will be needed.
- In order to obtain a valid patent, the invention must be novel, possess inventive step and capable of mass productive application. New invention must be kept confidential and should only be disclosed to others (eg. prototype manufacturer) under a contract containing a confidentiality clause. If a new invention prior to its filing date or priority date claimed in its Hong Kong application is already part of existing technology or has been exposed, exhibited, published or other disclosed to the public, then the invention may have lost its novelty. If a new invention is neither obvious to or foreseeable by a person skilled in the related technology after looking at the current state of the arts in that field, then that new invention can be seen as possessing inventive step.
- Hong Kong examiners will only perform a formality examination, and he or she usually will not make any search for prior patents or prior arts. Hence, the grant and issuance of patent certificate is not in anyway a confirmation on the question of novelty or inventive step, especially in relation to short-term patent.
- Upon filing, the invented product can start to be marketed. However, after such exposure to the public or after the publication of the patent application anywhere, most further filing in additional foreign countries must be made within 12 months of filing date of the first ever application with a claim for Paris Convention or WTO priority. The alternative is to organize the applications to be filed on the same date. Moreover, if the applicant wishes to bring forth the date of evaluating the novelty to the earliest filing date, then Convention priority should also be claimed.
Benefits of Patent
- Patent certificate is the best document for showing that you have claimed the invention.
- Patent enables lawful use of the notation "HK Patent No. ..." on the product and its packaging.
- Ownership of patents useful for your industry can bring royalty income and enables you to negotiate mutual licensing so as to have others' latest technology be incorporated in your products.
- Patent is a corporate asset which is essential when for attracting venture capital and for valuing your company in M&A or IPO situations.
- Showing patent certificate can be a sales technique for making potential customers have confidence in your patented products.
- Patent certificate is the necessary title document for making complaint to the Legal Adviser of TDC Fairs about patent infringement by another exhibitor.
Standard Patent
Standard patent cannot be directly applied in Hong Kong, but need first to have an invention patent application filed in or extended to China, Europe or UK, and then within 6 months of first publication of the base application, file a request to record in Hong Kong. In addition, the applicant must also file a request for grant with 6 months of the publication of the grant of patent in the base application.
The request to record the base application is HK$3,600, and the request for grant is another HK$3,600. In case the base application cannot mature in a grant within 5 years, a maintenance fee of HK$1,500 per year is needed for the 6th year onwards. The above fees have included the official filing and publication fees. The grant and issuance of patent certificate has no additional fee. Unless the application encounters any complication such as amendment, there will no be any extra charge. Please refer to our Fee Schedule for details.Hong Kong standard patent application depend on the success or otherwise of the base application in China, Europe or UK. The time frame of Hong Kong standard patent application also depend on the grant of the base application. The stage 2 request for grant in Hong Kong cannot be filed until the grant of the base application is published. Hong Kong standard patent is usually granted within 3 months of the request for grant. Thereafter, 1st to 3rd years need not paid any annuity. The annual renewal fee from the 4th year onwards to the 20th year is HK$2,000 per year.
The details required are (1) applicant's full name and address, (2) English and Chinese names of the new invention, (3) inventor's name, (4) copy of publication of the base application, and (5) English and Chinese translation of the abstract.
Short-term Patent
Short-term patent application can be directly filed in Hong Kong. Our Agency at present do not provide drafting service for patent specification. We only act as the Hong Kong agent for the Chinese mainland and foreign intellectual property agents and law firms to file and manage the Hong Kong applications to obtain short-term patent certificates.
If an applicant already have a patent or utility model specification drafted in say China, Taiwan, USA, etc., the applicant may also instruct us to file and manage the Hong Kong short-term patent application to obtain short-term patent certificate.
The fee for Hong Kong short-term patent application is HK$5,600. A search report made by the patent office of China, Europe or UK is needed in addition. If the applicant wish us to arrange the search report from the China State Intellectual Property Organization, the fee is HK$6,000. If Convention priority need to be claimed, the fee is HK$600 and the priority document need to be scanned and e-mailed to us with 2 months of filing. The above fees have included the official filing and publication fees. The grant and issuance of patent certificate has no additional fee. Unless the application encounters any complication such as amendment, there will no be any extra charge. Please refer to our Fee Schedule for details.
As Hong Kong examiners only perform a formality examination and do not concern themselves with any substantive examination of novelty and inventive step. Almost all short-term patent applications can successfully matured into grant and certificate within 3 months of submission of all the needed documents. Upon grant, the short-term is valid for the initial 4 years (from the date of filing). The renewal for the next 4 years is HK$4,300.
The details required are (1) applicant's full name and address, (2) English and Chinese names of the new invention, (3) inventor's name and address, (4) patent specification, claims & drawings, (5) English and Chinese translation of the abstract, and (6) Convention priority documents (if claimed).
Hong Kong Patent Search
Anyone from anywhere can use the free online search website http://ipsearch.ipd.gov.hk of the Intellectual Property Department of Hong Kong Government to find out whether any similar published patent exists in the register.
Convention Priority
Within twelve months of the first filing of the patent or utility model in a WTO member country or Paris Convention country, a priority can be claimed in the Hong Kong short-term patent application. This will synchronize the Hong Kong filing date with that of the first filing for the purpose of determining the novelty and inventive step of the patent.
For standard patent application, the Convention priority claim simply follows that claimed in the base application in China, Europe or UK, without need to furnish certified copy of the priority application.
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