Edwards Wildman Client Advisory - Report on Hong Kong Patent System Reform



    The Hong Kong Government plans to uplift Hong Kong into a regional innovation and technology hub. As part of the exercise, it issued a consultation paper entitled "Review of the Patent System in Hong Kong" in October 2011. In addition to seeking public comments, the Hong Kong government also appointed an Advisory Committee of experts to review Hong Kong's patent system. On February 7, 2013, the Advisory Committee released its initial Report with key recommendations in three areas: Hong Kong's Standard Patents, Short-term Patents and Regulation of Patent Agency Services.



    Standard Patents

    The Advisory Committee recommended the establishment of an 'original grant' patent system with substantive examination of applications. Currently, Hong Kong's is a re-registration system where the Hong Kong Patent Registry relies on substantive examination of designated patent offices. If a patent is granted by one of these designated patent offices, then upon completion of required paperwork, Hong Kong will also grant the applicant a standard 20-year patent without conducting its own substantive examination. 


    Although this patent system has worked quite well for international filers since many can simply prosecute their patent applications in their home jurisdiction and obtain a Hong Kong patent by completing a few forms. For local inventors, the system is one of frustration since they cannot apply directly for a standard patent in Hong Kong but must go to an outside and perhaps unneeded jurisdiction, prosecute their patent there before they can come back and receive a Hong Kong standard patent. 


    The lack of original grant patent may have slowed the development of local innovation and technology. A re-registration system does not require patent professionals.  This means that there is essentially no one locally to advise local inventors on issues of patentability, patent protection or patent strategy. Without this resource, some local inventors turn for help to others, who may be knowledgeable in other areas of intellectual property rights, but may know no more about patenting then the inventors themselves. The blind leading the blind situation has caused many inventors adequate protection for their inventions. Others are forced to spend additional resources to turn to overseas expert for help with their inventions. Either way, the results are unsatisfactory and may have hindered Hong Kong innovation.


    While the Advisory Committee recommended that initially, substantive examination be outsourced to other patent offices, it recognized that having its own patent examination capability is the ultimate goal for perfecting the Hong Kong patent system. It recommended that an original grant patent system must be "part of the infrastructure which will help Hong Kong achieve its vision of becoming a world class innovation and technology hub". As Hong Kong outsource substantive examination initially, it can nurture local talents to develop expertise and experience needed to operate its own substantive examination process as well as local patent professionals.  To continue the low cost and efficient system for international filers, Hong Kong will continue to maintain its existing re-registration system.



    Short-term Patent

    Hong Kong also has a short-term patent. It provides for one independent claim for a maximum duration of 8-years.  Unlike some other jurisdictions, the Hong Kong short-term patent has the same patentability requirement of a standard patent. The short-term patent is a fast and inexpensive means of protecting inventions and unlike a standard patent, it does not require substantive examination in a designated patent office. The Advisory Committee suggested continuation of a dual patent system for Hong Kong. It also indicated its willingness to consider slight expansion of the scope of the short-term patent by allowance of not more than one independent claim for a product and one independent claim for a process for the same single invention. It recommended maintenance of the current 8-year maximum term limitation and the same level of patentability as the standard patent. 


    In addition, the Advisory Committee recommended that substantive examination of a short-term patent be required to before infringement proceedings may begin. Anyone may seek substantive examination of a short-term patent and the party requesting examination should bear the cost of the examination.



    Regulation of Patent Agency Services

    The third area of recommendation relate to regulation of patent agency services. Currently, there is no requirement for providing patent agency services in Hong Kong. The Advisory Committee proposed that having a full-fledge regulatory regime should be the ultimate goal. The Advisory Committee recommended the building and recognition of Hong Kong having a regulated patent agency profession while grandfathering in existing patent agency services providing re-registration services. It recommended further exploration of issues including accreditation and professional discipline.


    The long awaited report by the Advisory Committee offers hope to those advocating patent reform in Hong Kong. Its work is not yet completed and the Advisory Committee promises to explore detailed implementation issues regarding its recommendations in the next phase of its review. It will then be upon the Hong Kong Government and Legislative Council to convert the recommendations of Advisory Committee into law to help the government realize its dream of lifting Hong Kong into a regional innovation and technology hub.


    If you would like further information, please contact the Edwards Wildman lawyer responsible for your matters or the author linked above.

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