Patent Protection in Hong Kong
In Hong Kong there are two types of patents available: –
1. Hong Kong Standard Patent
A Hong Kong Standard Patent must be registered in a two-stage process based upon a “Designated Patent” – that is, a European patent (designating the United Kingdom), a United Kingdom patent, or a Chinese patent.
The two-stage process for grant of a Standard Patent requires:
(i) filing a Stage I “Request to Record”of the Designated Patent in Hong Kong within 6 months of the date of publication of the Designated Patent. (If the Designated Patent is a PCT National Phase case, publication refers to local national publication on entry into the national/regional phase); and
(ii) filing a Stage II “Request for Registration and Grant” of the Designated Patent in Hong Kong within 6 months of the date of grant of the Designated Patent.
Please note, the above time limits for filing each stage are non-extendable.
Convention Priority is afforded through the priority claim associated with the Designated Patent.
Please note, as Hong Kong is not a PCT member country, a PCT National Phase application cannot be filed directly in to Hong Kong as a National Phase filing.
An absolute novelty requirement is applicable under Hong Kong law with no self-disclosure grace period.
Upon grant, a Standard Patent provides a maximum duration of protection of 20 years commencing from the deemed filing date (i.e. the filing date of the Designated Patent).
2. Short-Term Patent
A Hong Kong Short-Term Patent may be “first filed” directly in Hong Kong to establish a priority date for an invention, or, may be filed in Hong Kong as a “Convention Application” under the Paris Convention claiming priority to an earlier-filed overseas patent application prior to expiration of the 12-month Convention filing deadline.
Additionally, it is possible to file a Short-Term Patent application based on a Chinese National Phase Utility Model Patent if filed within 6 months of the National Phase entry date of the Utility Model Patent in China.
A Short-Term Patent is generally less expensive than a Standard Patent as it is not substantively examined for novelty and inventiveness before being granted. However a Patentability Search Report must be obtained from an accepted International Examining Authority and filed with the Hong Kong Patents Registry in order for the Short-term patent to proceed to grant.
An absolute novelty requirement is applicable in respect of a Short-Term Patent. As such, there must be no prior public disclosure, use and/or commercialisation of the invention anywhere in the world before the earliest priority date of the Short-Term Patent. Importantly, unlike other jurisdictions, no grace period is available.
A Short-Term Patent is published upon grant and provides a maximum duration of protection of 8 years commencing from the filing date of the Short-Term Patent.
Patent Protection in China (PRC)
China is a signatory to the Paris Convention and Chinese patent applications may be filed under the Paris Convention claiming “Convention priority” to an earlier filed foreign patent application if done so within 12-months of the earliest priority date.
China is also a signatory to the Patent Co-operation Treaty (PCT) such that a Chinese National Phase Patent Application may be filed in China based on a PCT Application within 30-months of the earliest priority date. However a 2-month extension period is available “as of right” up until 32 months from the earliest priority date.
A Chinese translation of the text of the patent specification must be included at the time of filing of a Chinese patent application. The accurate translation of technical terms in the patent specification is of critical importance in Chinese patent practice as inaccurately or inappropriately translated technical terms often cause difficulties during prosecution. If not handled properly, such translation errors may go undetected up until grant resulting in potentially limiting or even invalid scope of protection which cannot be rectified. Accordingly, sufficient time should be allocated for the translation (preferably 1-2 weeks) and properly reviewed before the filing deadline in order to alleviate risk of translation errors arising which may adversely affect the ultimate scope of the patent.
In China, two types of patents are available:-
1. Invention Patent
A Chinese Invention Patent provides a maximum duration of protection of 20 years commencing from the filing date of the Invention Patent.
Before proceeding to grant, an Invention Patent application undergoes substantive examination for requirements such as novelty and inventive step. An absolute novelty requirement is applicable to an Invention Patent. As such, there must be no prior public disclosure, use and/or commercialisation of the invention anywhere in the world before the earliest priority date of the Invention Patent. Importantly, unlike other jurisdictions, no grace period is available.
Unlike a Chinese Utility Model Patent, method and process inventions are considered allowable subject matter in an Invention Patent.
2. Utility Model Patent
A Chinese Utility Model Patent provides a maximum duration of protection of 10 years commencing from the filing date of the Utility Model Patent.
A Utility Model Patent is not substantively examined for requirements of novelty and inventive step and is subjected to a formalities examination before grant. However, before a Utility Model Patent can be enforced, a Chinese Court may generally require that a patentability report be submitted.
As with an Invention Patent, an absolute novelty requirement is applicable and no grace period is available. Therefore, any prior public disclosure, use, and/or commercialisation of the invention anywhere in the world before the earliest priority date of the Utility Model Patent will result in invalidation of rights.
A Utility Model Patent will only cover inventions relating to shape or structure of a product. Method and process inventions are not allowable. Therefore, if it is commercially important to protect method or process aspects of an invention then it is advisable to file an application for an Invention Patent instead of a Utility Model Patent.
Overseas Patent Protection for Hong Kong Clients
The first filing of a patent application in Hong Kong, China (or elsewhere) establishes a priority date for an invention which is recognised in most countries under the Paris Convention.
Further patent applications may be subsequently filed in other overseas countries claiming the same priority date as the first filed patent application, if the further patent applications are filed within 12 months of the first filed patent application.
It is still possible to file further overseas patent applications after the 12-month Paris Convention filing period has expired. However, the benefit of the earlier-established priority date can no longer be claimed, and many countries will not allow grant of a patent for the invention if there has been prior disclosure, use and/or commercialisation of the invention anywhere in the world.
There are two options for pursuing overseas patent protection:
Direct National Patent Application Filings
National patent applications can be directly filed in to each jurisdiction of commercial interest before expiry of the 12-month Paris Convention filing deadline. In some cases, a regional patent application can be filed covering multiple countries (e.g. a European Patent).
This option may be preferable and relatively cost-effective if it is certain that overseas protection is required in only a few specific countries (e.g. typically 3-4 countries).
Once national patent applications are filed, they must each undergo examination in accordance with the relevant laws and procedures of each jurisdiction.
International PCT Patent Application
Alternatively, an International PCT Application may be filed which defers the right to pursue further patent protection for the invention in more than 140 PCT member countries by up to 30-31 months from the earliest priority date of the invention.
Advantageously, the filing of an International PCT Application defers the time frame by which national patent application filing fees are incurred, and, allows further time to assess whether the invention is commercially viable before incurring further substantial patenting costs. An International PCT Application is also generally preferable where there is uncertainty as to which jurisdictions may ultimately be of commercial importance and it is desirable to keep all options open for as long as possible at minimal cost. Yet a further advantage in filing an International PCT Application is that an International Prior Art Search is automatically conducted as part of the application which may provide a useful preliminary (and non-binding) indication as to the potential patentability of the invention.
Importantly, an International PCT Application will never in itself progress to grant as a patent in any country and it will eventually lapse. Further National Phase Patent Applications must be filed into jurisdictions of commercial interest based on the International PCT Application before the relevant 30-31 month National Phase entry deadlines in order to continue pursuing patent protection for the invention. If no further National Phase Patent Applications are filed, then pending patent rights covering the invention will be lost.
Not all countries are covered by an International PCT Application and national patent applications must be filed directly into such countries before the 12-month Paris Convention filing deadline (or before prior public disclosure of the invention). For instance, Taiwan and Argentina are not PCT member countries and direct national applications must be filed in to these countries.
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