INFORMATION FROM THE EPO
New patent law in Hong Kong
On 27 June 1997 a new Patents Ordinance entered into force in Hong Kong, establishing an independent patent system there. It provides that applications to certain "designated patent offices" and patents granted by those offices will continue to form the basis of an application for a standard patent in Hong Kong. The designated patent offices are:
- the Chinese Patent Office;
- the United Kingdom Patent Office;
- the European Patent Office, in respect of applications and patents designating the UK.
A standard patent has a maximum term of 20 years from the deemed date of filing, ie the date of filing of the designated patent application. The Ordinance also provides for short-term patents with a maximum term of 8 years from the filing date, ie the date of filing of the application in Hong Kong (see paragraph IV).
1. Procedure for applying for a standard patent
There is a two-stage registration procedure. Within 6 months of publication of the designated patent application the following steps must be taken (Section 15 Patents Ordinance):
(i) the filing of a request to record, on IPD Form P4.
(ii) provision of a photocopy of the designated patent application as published (no need for certification);
(iii) payment of the filing and advertisement fees.
According to Section 16 of the Patents Ordinance, where a designated patent application is in the national phase of an international application under the Patent Cooperation Treaty, the date of publication is the date on which the designated patent office indicates that the international application has validly entered the national phase. In the case of European patents designating the UK, this will be the date on which the bibliographic data were published in the European Patent Bulletin.
The title of the invention and the abstract must be available in both the English and Chinese languages (Section 104 Patents Ordinance, Rule 56 Patents (General) Rules).
Annual fees to maintain a standard patent application must be paid if the application has been pending for five years or any succeeding year after the date of publishing the request to record (Section 33 Patents Ordinance).
For any PCT application filed on or after 1 July 1997, the designation of China will apply to Hong Kong. However, the two-stage registration procedure will also apply to such applications.
Within six months of grant of the designated patent or publication of the request to record, whichever is the later, the following steps must be taken (Section 23 Patents Ordinance):
(i) a request for registration and grant (IPD Form P5) must be filed;
(ii) a verified copy of the published specification of the designated patent must be filed;
(iii) payment of filing and advertisement fees.
The title of the invention must be available in both English and Chinese (Section 104 Patents Ordinance, Rule 56 Patents (General) Rules).
Any amendment of the designated patent as a result of prescribed opposition or revocation proceedings in the designated patent office must be notified to the Registrar within three months beginning from the date of amendment in the designated patent office or the date of grant of the standard patent, whichever is the later (Section 43 Patents Ordinance, Rules 35 and 36 Patents (General) Rules).
If the designated patent has been revoked in the prescribed proceedings in the designated patent office the proprietor must file a verified copy of the order of revocation or other prescribed documentation with the Registrar who shall advertise this fact (Section 44(2) and (3) Patents Ordinance).
Any person other than the proprietor may then apply to the Registrar for an order that the standard patent be revoked following the prescribed proceedings. The Registrar may either revoke the standard patent or may refer the application to the appropriate court (Section 44(4) Patents Ordinance).
2. Transitional arrangements
(i) All existing registered patents in force on 27 June in the United Kingdom will automatically be deemed to be standard patents and:
are deemed to have been granted on and to take effect from 27 June 1997;
shall have first renewal fees due from the fourth year after 27 June 1997.
(ii) Pending applications for registration which have been lodged under the old law before 27 June 1997 but which have not yet been approved will, once registered, automatically become deemed standard patents. They shall be deemed to have been registered under the old law on 26 June 1997 and:
are deemed to have been granted on and to take effect from 27 June 1997;
shall have first renewal fees due from the fourth year after 27 June 1997.
(iii) Existing UK patents and European patents (UK) which have taken effect in the UK before 27 June 1997 but which have not been the subject of an application for registration under the old law before this date may be registered provided the applicant makes a request for registration and grant within:
12 months after 27 June 1997; or
5 years after the date of grant of the patent or of its taking effect in the UK, whichever is the earlier.
(iv) UK 1977 Act patent applications and European patent applications designating the UK published before 27 June 1997 but where requests to record have been made in Hong Kong under the Patents Ordinance after its commencement may form the basis of registration provided the applicant makes a request to record within 18 months.
The applicant will also in due course have to request registration and grant of a standard patent.
(v) Where a UK 1977 Act patent or European patent (UK) is granted within 12 months after 27 June 1997 the applicant should make a request for registration and grant only within 6 months after the date of grant of the patent.
(vi) For existing UK 1949 Act patent applications, and patents granted in the United Kingdom after 27 June 1997 in respect of such applications, the request for registration and grant of a standard patent shall be made within: 6 months after the grant of the patent; or 20 years after the date of filing of the complete specification, whichever is the earlier.
3. Short-term patents
The new Patents Ordinance makes provision for a short-term patent with a maximum term of 8 years from the filing date. Applications must be made directly to the Registrar and must contain a search report from any of the International Searching Authorities appointed under Article 16 of the Patent Cooperation Treaty or from any of the designated patent offices.