Review of the Patent System in Hong Kong (Part 2): Taking a Real Step Forward?

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Introduction
In October 2011 the Government published a consultation paper (“Consultation Paper”) entitled “Review of the Patent System in Hong Kong”. The Advisory Committee on Review of the Patent System in Hong Kong (the “Advisory Committee”) was formed to examine the submissions by the public as well as various professional bodies on the future of our patent system on three main areas: (i) the introduction of an “original grant” patent system with substantive examination of standard patents; (ii) the review of the current short-term patents and (iii) the need for a regulatory regime for patent agency services in Hong Kong. The Advisory Committee’s report and recommendations were finally rolled out in February this year.

This newsletter will focus on the recommendations for the introduction of an original grant patent (OGP) system in Hong Kong. Current standard patent system in Hong Kong The current standard patent system in Hong Kong is commonly known as a “re-registration” system – the applicant will have to first obtain a patent granted by one of the three designated patent offices[1] before filing with the Hong Kong Patent Registry a standard patent application for registration of the patent granted by the designated patent office. As such, there is no substantive examination to be carried out by the Hong Kong Patent Registry. The Case for an OGP System While the existing standard patent system is regarded by some as cost-effective, user-friendly and credible, responses from the public consultation also pointed out some inherent weaknesses of the current system. As mentioned, the patent in question must first be granted by one of the three designated patent offices. Since the prosecution of such designated patent takes place overseas, this leads to uncertainties and lack of control on the timeframe of patent application and causes inconvenience to local inventors. Some respondents also considered that a re-registration system might be perceived as a second-grade patent system, and such perception does not facilitate Hong Kong in promoting innovation or developing into an IP trading hub. Nevertheless, the vast majority of respondents consider that the current re-registration system should be maintained, regardless of whether an OGP system is to be introduced. The question then is, whether OGP system can address the weaknesses in the current system. As the Advisory Committee put it, the OGP system is effective in ensuring patent quality and stringent IP protection, and may help developing Hong Kong into an innovation and technology hub in the long run. The OGP system would also provide a direct filing route for local applicants who only want to obtain patent protection in Hong Kong. On the face of it, the OGP system substantially cures the inherent weaknesses of the existing system. Direction for change At the outset the Government has proposed either (i) to replace the current system directly with an OGP system or (ii) to introduce the OGP system alongside the existing re-registration system. Having analysed other countries’ experience in introducing the OGP system, in particular that of Singapore, the Advisory Committee identified a handful of difficulties – mostly related to time and resources. Thus, instead of opting for a full-fledged OGP system immediately, it was recommended that Hong Kong should first aim to develop itself into a regional innovation and technology hub, taking advantage of the opportunities offered by Mainland China. The current system is to be maintained, in order to allow the proposed OGP system (and the necessary support) to mature. The Advisory Committee also recommended that the substantive examination of patent applications be outsourced to other patent offices, e.g. the State Intellectual Property Office of the People’s Republic of China, at least for the initial stage. Strategically speaking, this is a step that Hong Kong must take in order to catch up with the international trend and other leading jurisdictions. The proposed OGP system would likely bring a lot of benefits to the inventors in Hong Kong, including opportunities for direct communication between local enterprises/inventors and the patent agent (e.g. Hong Kong patent practitioners), more flexible and expedient examination procedures, and lower costs in obtaining patent protections in Hong Kong. Hopefully the OGP system will ultimately provide a better basis for mutual recognition of patents by Hong Kong and Mainland China on the one hand, and encourage local innovations and attract more enterprises to set up their R&D operations in Hong Kong on the other. As indicated in its report, the Advisory Committee will further advise the Government after the latter has taken a decision on the way forward and map out the implementation details in the light of the recommendations made by the Advisory Committee. We shall update you again if there are any progresses.


[1]       The designated patent offices are the State Intellectual Property Office of the People’s Republic of China, the United Kingdom Patent Office and the European Patent Office (for European patents designating UK).
IMPORTANT:
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.
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Published by ONC Lawyers © 2013