Patent

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A Brief Outline of the Patent Registration System in Hong Kong   Investing in an invention can be very costly. Once an invention is made, it is important to have your investment protected by patent. This article outlines the patent system in Hong Kong and gives some general information as to how your invention could be best protected by a patent.   What is patentable?   According to the Patents Ordinance in Hong Kong an invention is patentable if it is new, involves an inventive step, and capable of industrial use.   To be new and to involve an inventive step, the invention must not be part of the state of art anywhere in the world before the filing of the patent application. If a prior publication, be it in writing or orally or by other means, embodies a clear direction pointing to the crux of the invention applying for a patent, or that invention is in fact obvious to the skilled person, the alleged invention may not be patentable.   Therefore, inventors should be aware that no disclosure of the invention should be made before the filing of patent application to avoid it becoming part of the state of art. The Patents Ordinance nevertheless grants a grace period of six months prior to the filing of application during which the inventor can exhibit the invention in prescribed exhibitions, or disclose it in order to stop an evident abuse of the invention, and still preserve the invention’s patentability.   To be capable of industrial use means that an invention can be put to practical application. An invention cannot be patentable if it is, for example, just scientifically informative but of no practical application. Pursuant to this concept, the Patents Ordinance rules out certain categories as being patentable: such as any discovery, scientific theories and methods of conducting medical surgery.   Who owns the patent?   Basically, the inventor will be the owner of the patent.   If a person is employed to invent and the ultimate invention is made during the course of his employment and that an invention may be expected from performance of such duties, the invention belongs to the employer. If the invention then brings along outstanding benefits to the employer, the employee may apply to court for a compensation at an amount to be decided by the Court as just. Other inventions (e.g. those made outside employment) belong to the employee.   The inventor may assign a patent to another person upon its being granted or may assign the right to apply for a patent to another person before the patent is granted. He may also license the patent right to another person for a specific period of time or subject to other specific conditions (e.g. to grant right of distribution of the products to a certain company).   Duration of a patent   There are two types of patents: standard and short-term. The term of a standard patent is 20 years, from the filing date of the patent application, subject to the payment of renewal fee three years after its grant. The effective date is from the date on which the grant is gazetted.   Any person may apply to court for a compulsory license for use of a standard patent after the patent has been granted for three years, on grounds that, e.g., the invention has not been sufficiently exploited in Hong Kong.   For a short-term patent, the term is eight years, subject to the payment of renewal fee at the end of the fourth year.   How to apply for a patent registration in Hong Kong?   1. For a standard patent:   First, an application can be made to a designated patent office which includes patent office of the People’s Republic of China, the European Patent Office and the UK patent office. Within six months of this application, the applicant must then proceed to the two-stage procedures:    (a) Request to record   After making application to one of the designated patent offices, the applicant must within 6 months of publication of the application by the designated patent office make request to the Hong Kong Patents Registry to record the designated patent application. Such request to record will then be advertised in the Gazette.   (b) Request for registration and grant   This stage follows after the request has been recorded in the register and published and the patent has been granted in the designated patent office. The request for registration and grant has to be filed within 6 months after the date of grant of the designated patent or publication of the request to record, whichever is the later.   2. For a short-term patent:   Application can be filed with the Registrar of the Hong Kong Patents Registry. A date of filing will then be given if the requisite documents have been produced by the applicant, including a specification, a claim, an abstract and a relevant search report provided by one of the prescribed searching authorities in Austria, Australia, Japan, Russia, Sweden, USA and the European Patent Office. The search report serves to certify that the application is a novel invention. After the applicant hands in all necessary documents, the Registrar will conduct a formality examination. After then, the registrar will decide whether a short- term patent can be granted to the particular product or process.   Scope of monopoly conferred by a patent   The scope of monopoly is defined by the patent specification, including the description and the drawings. A patent owner may claim that another person has infringed his patent if that person has committed an activity which falls within the scope of his patent’s specification.   It used to be the case that the courts tended to follow closely the literal meanings of the patent specification in defining the scope of the protection. This could account for the very detailed description and drawings in patent specifications to ensure maximum protection. Recently, the British courts are more willing to heed the spirit of the EPC Protocol and refrain from taking too strict a literal approach in interpreting the scope of protection. The tendency to interpret a patent specification by a purposive approach, i.e. to look beyond the wordings and define the scope of patent protection more widely, is likely to be followed in Hong Kong.   Time   Since the procedures involve overseas operations (e.g. getting a search report etc.), and the complexity of different inventions varies, it is very difficult, if not impossible, to estimate the time required in successfully registering a patent. As a very rough estimate, it usually takes at least two years to register a standard patent.

Published by ONC Lawyers © 2005. All rights reserved.

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The law and procedure on this subject are very specialized and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.