Introduction
Hong Kong has
2 types of patents :
1) standard patent
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.
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.
Foreign company or individual can apply for Hong Kong patents without nationality restriction or residency requirement.
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 can be directly applied in Hong Kong, OR first filed in China, Europe or UK and then within strict time limits be extended to Hong Kong.
(A) Hong Kong Original Grant Application : For applied directly in Hong Kong, our fee for filing the standard patent original grand application and request for substantive examination is HK$9,000. Office action reply or amendment is HK$2,000 each round. If the application is provisionally refused, request for review and request for hearing if needed will be separately quoted. Our Agency at present do not provide patent search nor drafting of patent specification, reply or amendment. At present, we only act as the Hong Kong agent for the Chinese mainland and foreign intellectual property agents and law firms to file application and handle the procedural progress.
The success or failure of Hong Kong original grant application essentially depends on novelty and inventive step of the invention in context of its claims. The usual time needed is 2 to 5 years.
The original grant application details required are :
(1) applicant's full name and address,
(2) English and Chinese names of the new invention,
(3) inventor’s name,
(4) patent specification,
(5) English and Chinese translation of the abstract,
(6) Convention priority documents (if claimed), and
(7) office action reply, amendment and review in substantive examination.
Or alternatively by indirect route,
(B) Request to Record & Request to Grant : If invention patent application has been filed in China, Europe or UK, then within 6 months of first publication of the base application, a request to record must be filed in Hong Kong. In addition, within 6 months of the publication of the grant of patent in the base application, a request for grant must also be filed in Hong Kong. Our fee for the request to record a patent 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.
Hong Kong request to record & request to grant application depend on the success or failure of the base application in China, Europe or UK. The time frame 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 around 6 months of the request for grant.
The request to record & request to grant 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.
Samples of publication
of the base applications for stage 1 request to record :
After filing of the stage 1 request to record, the examiner will first examine the minimum requirements and accord the actual filing date. Once the formalities are also examined, the examiner will prepare for the recoding and publication in Hong Kong of the base application. This whole stage 1 process usually completes at around 3 months with the records searchable at the official search website https://esearch.ipd.gov.hk .
Samples of records and publication in Hong Kong :
Hong Kong standard
patent application depends on the success or otherwise of the base
application in China, Europe or UK.
The stage 2 request for grant in Hong Kong cannot be filed until the base application in China, Europe or UK has been granted as a patent and published there.
Samples of publication
of the base applications for stage 2 request for grant :
After filing the stage 2 request for grant in Hong Kong, standard patent
is usually granted in Hong Kong at around 6 months.
Hong Kong standard patent certificate samples :
Thereafter,
1st to 3rd years need no annuity. The annual renewal fee
from the 4th year onwards to the 20th year is HK$2,000 per year all-inclusive.
For break-down of the official fees and our fee, please refer to our Fee
Schedule .
For details on renewing standard patent, please refer to HK Patent Renewal .
Short-term
Patent
Short-term patent
application can be directly filed in Hong Kong once the specification, claims and drawings are ready. This is so irrespective of whether the document is in the format of an invention patent or a utility model.
The fee for Hong
Kong short-term patent application is HK$5,600. A search report
made by an international search authority (such as patent office of US, Europe, China, UK, Australia) is needed in addition.
Search report samples :
China : 
USA : 
UK : 
Australia : 
In case where the applicant wishes us to arrange the search report from the China
State Intellectual Property Organization, the fee is HK$7,000.
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 are inclusive of all the official fees, the professional fee and disbursements. No other fee or expense is needed (since Hong Kong only has formality examination and no substantive prosecution).
The short-term application 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
or utility model specification, claims & drawings,
(5) English and Chinese translation
of the abstract,
(6) search report,
(7) Convention priority documents (if claimed).
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 mature
into grant and certificate at around 3 months after submission of all the
needed documents.
Hong Kong short-term patent certificate samples :
Upon grant, the short-term patent is initially valid for
4 years (from the date of filing). The renewal for the next 4 years is HK$4,300 all-inclusive.
For break-down of the official fees and our fee, please refer to our Fee
Schedule .
For details on renewing short-term patent, please refer to HK Patent Renewal .
Hong
Kong Patent Search
Anyone from anywhere can
use the free online search website https://esearch.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 standard
patent original grant applcation and 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 request to record 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 (hence no fee for claiming priority).
For standard
patent original grant and short-term patent application, certified copy of the priority application needs to be filed within 2 months of the application date.
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