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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.
For break-down of the official fees and our fee, please refer to our Fee
Schedule .
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.
For break-down of the official fees and our fee, please refer to our Fee
Schedule .
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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