ABSTRACT: A new patent system will be launched in Hong Kong on December 19, 2019. Notices appointing the above date as the commencement date of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019 were gazette on October 11 for the launch of the new patent system.
 
1. Summary of the new patent system
Under the new patent system, an original grant patent (OGP) system will be introduced to provide to patent applicants an alternative route of seeking standard patent protection in Hong Kong. Patent applicants will have the option of filing standard patent applications directly in Hong Kong, thereby dispensing with any prior filing of their corresponding applications with a designated patent office outside Hong Kong as required under the existing "re-registration" system.
 
Apart from introduction of the OGP system, the new patent system also involves refining the existing short-term patent (STP) system to enhance its integrity while upkeeping the overall cost-effectiveness of seeking STP protection in Hong Kong.
 
The use of certain misleading or confusing titles/descriptions relating to patent practice in Hong Kong will also be prohibited.
 
2. Existing patent system

• Standard patents: a standard patent application for an invention must be timely filed in Hong Kong based on a corresponding patent application for the same invention in Mainland China, the United Kingdom or the European Patent Office (for patent applications designating the United Kingdom) [the “reregistration” route].
• Short-term patents: a short-term patent application for an invention can be directly filed in Hong Kong. Only one independent claim is allowed for each application.

Both types of patent applications are only subject to formality examination by the Patents Registry.
 
3. Features of the new patent system
   
    1) Introduction of an original grant patent (OGP) system which provides a direct filing route for seeking standard patent protection in Hong Kong.

• Applications filed under the OGP route are subject to substantive examination by the Patents Registry for determining the patentability of their underlying inventions.
• Applicants may choose to file their standard patent applications through the OGP route or the existing re-registration route based on their protection strategies. 

    2) Refinement to the existing short-term patent system

• Each application may contain up to two independent claims.
• Short-term patents may be subject to post-grant substantive examination by the Patents Registry (upon request by its proprietor or a third party having reasonable grounds/legitimate business interests) for determining its validity.
• The proprietor of a short-term patent must file a request for substantive examination of the patent with the Patents Registry before commencing legal proceedings to enforce the patent.
• The proprietor of a short-term patent who threatens another person with infringement proceedings relating to an unexamined short-term patent must, upon request by the alleged infringer, provide him/her with adequate information to identify the patent.

 
    3) Regulation of titles/descriptions relating to patent practice

• The use of confusing or misleading titles/descriptions including “registered/certified patent agent” and “registered/certified patent attorney” is prohibited.
• Use of titles/descriptions of any qualifications lawfully obtained for patent practice elsewhere is permitted as long as the jurisdiction where the qualification was obtained is clearly indicated.

 
Major benefits of the new patent system

• The new OGP system helps to reduce the patenting costs and time for obtaining standard patents.
• Refinement to the short-term patent system safeguards against potential abuse of the system thereby enhancing its integrity while maintaining the overall cost-effectiveness of seeking short-term patent protection in Hong Kong.
• The regulatory measure concerning titles or descriptions relating to patent practice paves the way for Hong Kong to introduce a full-fledged regime on regulating local patent practitioners in the long term.
• The new patent system forms an important building block to the local patent protection regime which facilitates the development of Hong Kong into a regional innovation and technology hub.

Materials relating to the new patent system

Upon the commencement of the Patents (Amendment) Ordinance 2016 and the Patents (General)(Amendment) Rules 2019, a new set of specified forms relating to the standard patents by original grant and the refinement to the short-term patent system will be used. The Intellectual Property Department has uploaded to its website (www.ipd.gov.hk) the draft version of such forms for advance information. Other relevant materials regarding the filing requirements and procedures will follow.
 
From the current draft version, the request forms for grant, substantive examination, reviewing, addition or restoration of priority claim, hearing and amendment are suitable for an OGP. And a request form for substantive examination is added for a STP. Wherein, the request form for grant of an OGP is basically similar to the request form to record a designated patent application for a standard patent (re-registration standard patent). Besides, if the applicant(s) is not the inventor(s), an additional form “Statement of inventorship in respect of a standard patent” is required, which is different from the re-registration route.
 
CONCLUSION: Hereby quote the view of a spokesman for the Commerce and Economic Development Bureau, “The launch of the new patent system is a milestone in the development of Hong Kong's patent regime. It demonstrates our strong commitment to enhancing our intellectual property (IP) protection. It will greatly facilitate the development of Hong Kong as an innovation and IP trading hub in the long term."