Monthly Archives: December 2013

Asian Patent Attorneys Association 62nd Council Meeting, Hanoi, Vietnam 19-22 October 2013

Timothy Letters and Laurence Thoo were pleased to attend the Asian Patent Attorneys Association’s (APAA) 62nd Council Meeting held in Hanoi, Vietnam between 19-22 October 2013.

Timothy and Laurence represented the Hong Kong Group during the Patents and Designs Standing Committees meetings respectively during discussions covering the topics of “Deeper harmonization in inventive-step/non-obviousness determination” and “Design protection in Hong Kong for protection of tablet computers and smart phones”.

Next year the 63rd Council Meeting is scheduled to be held in Penang, Malaysia from 8-11 November 2014.

The Global Patent Prosecution Highway for Accelerated Examination of Patent Applications

On 6 January 2014, patentees will be able to utilise the “Global Patent Prosecution Highway” (GPPH) in seeking to accelerate examination of patent applications in multiple jurisdictions based on allowance of corresponding patent claim(s) in a patent application under substantive examination before a participating patent office.

The GPPH pilot scheme will provide a uniform and simplified administrative framework which complements the multitude of bilateral PPH arrangements already existing between various jurisdictions.  Initially, the GPPH pilot scheme will involve 17 participating patent offices and will only be available where certain criteria are met.

Further details regarding implementation of the GPPH are available here.

European Patent Office Repeals 24-Month Rule for Filing of Divisional Patent Applications

The European Patent Office (EPO) has recently repealed provisions of the European Patent Convention which limit the time for voluntarily filing a Divisional patent application to 24-months from issuance of a first communication from the Examining Division.

Under the new rules which are to take effect from 1 April 2014, a Divisional application may be voluntarily filed at any time whilst the parent patent application is still pending.  As such, the new rules will be applicable to any Divisional patent applications that are filed on or after the 1 April 2014 irrespective of whether the 24-month limit has expired as long as the parent patent application is still pending.

As Hong Kong Standard Patents (i.e. a 20-year patent) are able to be recorded in Hong Kong based upon European Patents (which designate the United Kingdom), it is envisaged that this change in European Divisional patent application filing practice may generally provide greater flexibility for patentees to pursue patent protection in Hong Kong for inventions in certain circumstances, should the need arise. Conversely, parties concerned with “freedom-to-operate” in Hong Kong will need to take into consideration the increased risks of potential patent infringement ultimately arising in Hong Kong by virtue of this change in European Divisional patent practice.

The official notice published by the EPO is available online here.