Introduction The Commerce and Economic Development Bureau and the Intellectual Property Department jointly issued a consultation paper in October 2011. Since the current Hong Kong patent system was implemented in 1997, the purpose of the consultation is to ensure the Hong Kong patent system continues to meet the needs of the society and align with the government policy in developing Hong Kong into an innovation and technology hub. The consultation focuses on three major areas, namely standard patent system, short-term patent system and regulation of patent agency services.  This article summarizes the issues provided by the consultation paper regarding standard patent system. Current “re-registration” system Under the existing standard patent system, an applicant who wants to obtain patent protection in Hong Kong is required to first obtain patent granted by one of the “designated patent offices”, including the State Intellectual Property Office in the People’s Republic of China (the “SIPO”), the UK Patent Office and the European Patent Office (for EP patent designating UK).  The current patent system is also known as the “re-registration” system. There is no substantive examination to be carried out by the Hong Kong Patent Registry. The period of protection for standard patent may last for a maximum of 20 years. If the applicant has already applied for a patent in one of the designated patent offices, it is convenient to obtain a standard patent in Hong Kong with relatively low cost.  Furthermore, all the designated patent offices are well recognized. The substantive examinations conducted by the designated offices confirm the validity and quality of the patents granted by the Hong Kong Patent Registry. The disadvantages of the current system include, firstly, the applicant must have first filed an application with one of the designated patent offices, which may cause inconvenience to some local applicants. Secondly, the existing system does not encourage the development of patent agency business in Hong Kong because substantive examinations are carried out in the foreign patent applications filed at the designated patent offices, which are handled by foreign patent agents. Such arrangement does not promote career development in the local patent profession for the graduates with science and technical background from Hong Kong. Original Grant Patent (OGP) system OGP system allows standard patent application to be filed directly with the Hong Kong Patents Registry before the application has been filed in another patent office.  Substantive examination may be carried out by the local patent office or outsourced to the overseas or PRC patent offices. The removal of the requirement to apply for patent first in another designated patent office makes it more convenient for applicants who require patent protection only in Hong Kong. The drawback would be the high registration fee to be incurred by the substantive examination and the repeated examination for applicants who have already filed applications at the designated patent offices. Patent systems of Singapore and Macao The OGP system was launched in Singapore and Macao in 1995 and 2000 respectively. In Singapore, before the establishment of the OGP system, it used to adopt the re-registration system with two designated patent offices. Currently, various routes for search and examination are available for Singapore patent application.  The applicant may request for both search and examination to be conducted by one of the outsourced patent offices, or rely on the search report issued by other patent offices, and request examination to be done by an outsourced patent office. Alternatively, the applicant may request a patent grant based on search and examination report issued by a patent office recognized by the Singapore Intellectual Property Office (similar to re-registration). In Macao, substantive examination of invention patents is solely outsourced to the SIPO.  The SIPO will issue examination reports and the Intellectual Property Department of the Macao Economic Services will decide whether patent is to be granted. Proposed Options The government has proposed 3 options for public consultation. Option 1 is to replace the current “re-registration” system by an OGP system with substantive examination outsourced to designated patent offices.  Option 2 is to introduce an OGP system with substantive examination outsourced to other patent offices while maintaining the current “re-registration” system.  Option 3 is maintaining the current “re-registration” system, but considering other patent offices to be included as designated patent offices. The Next Stage The consultation period was ended in December 2011.  The government is planning to publish a detailed report after consolidating the views gathered from the public during the consultation period and propose a way forward for the discussion by the Legislative Council in the first half of this year.

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.

For enquiries, please contact:

Ludwig Ng Senior Partner, Head of Intellectual Property & Technology T: (852) 2107 0315 E: ludwig.ng@onc.hk

Derek Lau Senior Associate T: (852) 2107 0329 E: derek.lau@onc.hk

Published by ONC Lawyers © 2012