Practical Considerations for Hong Kong Patents

The patent system in Hong Kong is essentially a re-registration system. Having a patent granted in Hong Kong might give the patentee with significant financial advantages, notwithstanding the fact that Hong Kong is not a favorable jurisdiction for patent litigation. Patent rights in Hong Kong must be pursued independently from China.

Types of Hong Kong patents

Hong Kong standard patent

A two-stage application process is required to get a Hong Kong standard patent. The first step entails making a request to have a pending application recorded in the United Kingdom, Europe (UK), or China (a designated application). In other words, if there is no application for a patent in the UK, EP (UK), or CN, an application for a standard patent in Hong Kong cannot be submitted.

Only after the UK, EP(UK), or CN application, on which the Hong Kong standard is based, may the second stage of a request for registration and grant in Hong Kong be filed (the designated patent). The chosen patent used in the second stage, however, must match the designated application used in the first stage. Though a UK designated application is used in the first step, the CN designated patent cannot be used in the second stage, even if they are both dedicated to the same invention. A Hong Kong standard patent has a 20-year term starting from the date of filing of the basic UK/EP(UK)/CN designated application. A Hong Kong standard patent based on a Chinese patent will be referred to as a ‘CN-based Hong Kong patent’ in the following discussion.

Hong Kong short-term patent

In addition to a Hong Kong standard patent, an application for a Hong Kong short-term patent can be filed to obtain early enforceable rights. A Hong Kong short-term patent has an eight-year term from the date of filing, and the rights are identical to those of a granted regular patent. A Hong Kong short-term patent, on the other hand, will not be substantively examined and will be granted once the Hong Kong Patents Registry determined that all formalities have been completed. The next phase will go through the specifics of the Hong Kong short-term patent.

How can I get enforceable patent rights for my invention earlier?

If obtaining an earlier grant is necessary (for example, for promotional purposes), a Hong Kong short-term patent might be pursued in addition to the Hong Kong standard patent. A Hong Kong short-term patent, unlike utility models in China and Germany, can be directed to any subject-matter, including methods, chemical compounds, and compositions.

Furthermore, a Hong Kong short-term patent is normally granted within six to eighteen months of filing. Please keep in mind, however, that a Hong Kong short-term patent is generally directly filed in Hong Kong. This Hong Kong short-term patent application should be filed within 12 months of the earliest priority date if priority is claimed.

Enforcement of patent rights in Hong Kong

First off, all procedures in Hong Kong for a CN-based Hong Kong patent must be handled in Chinese, which can be quite inconvenient for people who are not familiar with the language. More crucially, due to linguistic and legal differences, this would have major ramifications for any proceedings in Hong Kong. The Hong Kong Patents Ordinance is primarily based on UK patent precedent and case law. Under such legislation, terms and terminology with specific meanings in English, as well as the scope and validity of claims, fair foundation, clarity, and so on, are well established.

Because of the major differences between the Chinese and English languages, there is a lot of confusion about how a Hong Kong court would interpret the real scope of claim of a CN-based Hong Kong patent. As a result, if feasible, the writer would like to initiate any proceedings or enforcement-related actions based on a UK/EP-based Hong Kong patent rather than a CN-based one.

Despite the fact that the Hong Kong patent system is fundamentally a re-registration system, there are ways that can be used to get earlier enforceable rights. In Hong Kong, an applicant might get enforceable rights four to six years sooner than if he or she relied only on an EP or CN patent. In Hong Kong, you can also choose to keep the patent with the largest scope among the EP, UK, and CN patents. Such approaches may be beneficial for certain categories of technology that require early enforceable rights (for example, inventions linked to telecommunications or cosmetics), or for wide protective scope (for example pharmaceuticals or chemicals).