Changes are coming to the Hong Kong patent system
Hong Kong will establish a new Patent System on 19 December 2019.
The new patent system will include:
- a direct patent filing route for Hong Kong standard patent to be called an Original Grant Patent ("OGP") which will have a 20 year term; and
- refinements to the existing short-term patent (“STP”) system to enhance the integrity of that system. STPs have an 8year term.
According to an Updated Background Brief of 19 June 2018 from the Hong Kong Panel on Commerce and Industry, the Patents Registry will initially enlist the technical assistance of the State Intellectual Property Office (now CNIPA) in OGP substantive examination. Local substantive examination capacity will be developed over the medium and long term to enhance overall strength and quality of the new patent system as well as user-friendliness. The OGP route will be provided as an alternative to the existing patent re-registration process from the CNIPA, the EPO (UK designation), or the UKIPO. Applications will be able to be filed in Chinese or English.
The new OGP system will also put Hong Kong in a better position to negotiate for inclusion in Patent Prosecution Highways ("PPH") with other Patent Offices. The result would be faster examination, which would encourage OGP applicants to file in other countries and overseas patent applicants to file in Hong Kong.
Substantive examination is not required in the existing STP system and refinement could include providing for post-grant substantive examination for such patents. Substantive examination would be made a pre-requisite to the commencement of enforcement proceedings in relation to an STP. This refinement to the STP system would be intended to help strike a reasonable balance between the legitimate interest of a patentee and that of a recipient of a threat of infringement actions.