About Our Patents Department
Manager in charge of China patent agency
About Our Patent Services
Recently, there has been a rising trend that infringing activities change from copying product designs to structures. Therefore, there is a double-digit increase in the applications for Standard Patents and Short-Term Patents in Hong Kong.
Other than providing services of applying for Standard Patents and Short-Term Patents, our team caters for other patent-related services as well, such as patent search and patent analysis, etc.
From the point of effectiveness, terminating patent infringement should start from terminating retail outlets selling infringed products. In view of this, our experienced litigation team provides related services, including infringement lawsuits, investigation of infringement activities, etc
Patent Registration and Protection in Hong Kong
Features of Patents
What is patent?
Patent is the exclusive use right of products granted to the product inventors for a certain period of time by a country or a territory according to law.
Why do we register patents?
Registered patents are protected by law, if somebody, without the patent holder’s consent used a patent, the patent holder may take legal actions to protect his interests.
Protection of registered patents in Hong Kong
Patent registration is territorial. Patents registered in other countries or territories which are not registered in Hong Kong would not be protected by Hong Kong’s law. To get protection in Hong Kong, one must register the patent in Hong Kong according to “Patents Ordinance” (Chapter 514) and “Patents (General) Rules” (Chapter 514C).
Standard and Short-Term Patents
According to “Patents Ordinance”, there are two types of patents in Hong Kong:
- Standard patents;
- Short-term patents.
Standard patents refer to those checked, approved by and registered at a designated patent office. “Designated Patent Office” include the following three patent offices:
- The State Intellectual Property Office, People’s Republic of China;
- the United Kingdom Patent Office;
- the European Patent Office, in respect of a patent designating the United Kingdom.
The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of three designated patent offices. The purpose is to protect inventions which have short term business value, to promptly benefit the applicants.
Application for Patents
In Hong Kong, application for patents has three stages:
The First Stage Examination of the Filing Date
After the Registry receives an application, it will issue a notice to the applicant to set a filing date for the application.
The Second Stage Formality Examination
Examination on information in the application forms and examination of the formality of other documents. If the application is not in order, the Registry will give notice to the applicant to correct the deficiencies within two months. Failure to correct deficiencies may result in the application being deemed withdrawn.
The Third Stage Publication of the Patent Application and Grant of Patent
If an application is in order, the Registry will publish the patent application or grant a patent and issue a certificate of grant of patent (only applicable to requests for registration and grant of standard patent and application for short-term patent).
Timeliness of Patents
Successful patent registrations are effective within a period of time. The period of protection of a standard patent can be renewed annually after the end of the third year, up to maximum term of 20 years. Protection under a short-term patent is renewable after the end of the fourth year, up to a maximum term of eight years. Date counted from the date of application at the designated patent office.
What strategies should you adopt to protect your patent in Hong Kong and separately in Mainland China?
You may consider adopting the following strategies to protect your patent:
- Only new inventions are registrable. You need to keep your invention confidential until you file your corresponding designated patent application and short-term application. Using your invention in manufacturing or publishing or disclosing it (for example publishing it in a catalogue or placing an order to manufacture the invented product) before filing you patent application may mean that even if you are granted a patent for your invention, the registration may become invalid because your invention was not considered new on the date of filing the application date.
- It is only in limited circumstances that disclosure does not destroy the novelty of an invention. Sections 95 and 109 of the Patents Ordinance of Hong Kong provide for the specific circumstances of and requirements for non-prejudicial disclosure. If you need to disclose details of your invention before filing an application, you should take professional advice to ensure that the novelty of your invention would not be destroyed upon disclosure.
- You should apply for a patent for your invention as soon as possible to ensure that it is available for use in your business and that you can take immediate action against any infringement.
- Most importantly, you should seek professional advice from an intellectual property lawyer or agent with regard to all aspects of your intellectual property rights, including trademark, copyright, registered design or patent, so as to protect your products or service.