As a sequel to our newsletter on Enforcement of Short-term Patent Rights in November 2013, this newsletter addresses the enforcement of standard patent rights in Hong Kong and some of the underlying legal and practical issues.

Overview of Standard Patent Application 

A Hong Kong standard patent is obtained based on a patent application to one of the three designated patent offices, i.e. the State Intellectual Property Office of the People’s Republic of China (“SIPO”), the European Patent Office (“EPO”) and the United Kingdom Patent Office (“UKPO”), through a two-stage application process prescribed in the Patents Ordinance (Cap.514)(“PO”).

Stage 1 is the filing of a request in Hong Kong to record a pending patent application in one of the three designated patent offices (“Designated Patent Application”). In other words, an application in Hong Kong for a standard patent cannot be filed if there is no application for a patent made with one of the designated patent offices. The request must be filed within 6 months from the date on which the corresponding application was published in the designated patent office.

Stage 2 is the filing of a request for registration and grant. The request can only be filed when the Designated Patent Application, on which the Hong Kong standard patent is based (in Stage 1), is granted, and it must be filed within 6 months from the date on which the Designated Patent Application is granted by the designated patent office.

Notably, the grant of a Hong Kong standard patent relies wholly on the grant of the Designated Patent Application. That is why the standard patent regime in Hong Kong is often described as a “re-registration” system. 

Rights conferred by a Standard Patent 

Once granted, a standard patent, subject to renewal, remains in force until the end of the period of 20 years from the date of filing of the Designated Patent Application. Subject to an exception which will be discussed below, the standard patent granted shall have a life of its own, separate and independent from its designated counterpart.

Same as short-term patent, a valid standard patent confers on its owner the right to prevent all third parties not having his consent from using the invention. Likewise, the owner has the right to prevent any unauthorized indirect use of the invention. Limitations under section 75 of the PO apply equally to standard patents, as they apply to the short-term patent, e.g. acts done by a third party for non-commercial purposes without patentee’s consent will not constitute an infringing act. 

Enforcement and Validity of Standard Patent 

If there is infringement of a standard patent, the owner or the exclusive licensee of the standard patent can bring civil proceedings for enforcement of the patent rights. As discussed previously in the context of a short-term patent, the validity of a patent is often challenged as a defence to infringement claims. The infringer may seek to argue that the patent in question is not valid and apply to have it revoked. While standard patents are prima facie valid, they are still susceptible to grounds of challenge such as allegations that the invention lacks novelty or inventive steps.

There is one ground of challenge which is peculiar to standard patents. As mentioned above, a standard patent acquires a life of its own once being granted. That, however, is subject to an exception, where under section 90(1)(i) of the PO, a standard patent will be revoked when its corresponding designed patent has been revoked in the designated patent office.

Hence, in defending an infringement claim in Hong Kong, in addition to challenging the validity of the standard patent in Hong Kong based on the grounds of revocation in the PO, defendants can apply for revocation of the corresponding designated patent in the designated patent office and seek to have the corresponding designated patent revoked. The revocation proceedings will be governed by the rules and regulations of the designated patent office and their patent laws, under which there may be more grounds for revocation than under the PO. 

These “parallel” challenges on the validity of the patent in Hong Kong and the designated patent office undoubtedly add difficulty to the infringement claim (and, conversely, increased opportunities and alternatives to the infringer in defending the claim). It is thus vital that the patent applications be coordinated and sychronised in advance by patent attorneys and professionals in order to minimize the added risks in subsequent enforcement. 

Conclusion

The enforcement of rights conferred by standard patents faces challenges of its own. Due to the nature of the standard patent regime in Hong Kong, it should be borne in mind that the validity of the corresponding designated patent may affect the validity of a standard patent in Hong Kong, since challenges made to the validity of the corresponding designated patent of a Hong Kong standard patent can lead to the latter being revoked in Hong Kong.

For enquiries, please contact our Intellectual Property & Technology Department:

E: ip@onc.hk

T: (852) 2810 1212

W: www.onc.hk

F: (852) 2804 6311

19th Floor, Three Exchange Square, 8 Connaught Place, Central, Hong Kong

Important: The law and procedure on this subject are very specialised 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.