Pages 580-587

S. THIRD COUNTRIES

Patent protection in Hong Kong Special Administration Region

OJ EPO 2009, 546

The patent law of the Hong Kong Special Administrative Region (SAR) has been in force since 1997 without major changes (see OJ EPO 1997, 429). Nevertheless, it is appropriate to provide updated information about patent protection in Hong Kong SAR and in particular about the procedure to extend European patents designating the United Kingdom (UK) to that territory.

I. Introduction

The Hong Kong Patents Ordinance of 27 June 1997, as last amended on 22 February 2008,1 established an independent patent system. A patent granted for Hong Kong SAR takes effect in Hong Kong only and does not provide for protection in the People's Republic of China (PRC).

Hong Kong's Patents Ordinance (Chapter 514) and Patents (General) Rules (Chapter 514C) draw a distinction between "standard" and "short-term" patents.

There is no search and substantive examination of the patent application, neither for a standard patent nor for a short-term patent.

A standard patent can be based on a European patent application, or an application seeking patent protection in the PRC or the UK (see para. II.(a) and (b)). A standard patent has a maximum term of 20 years from the date of filing of the corresponding patent application in the EPO or in the PRC or the UK.

A search report from the EPO may serve as the basis for a short-term patent. Such a patent has a maximum term of eight years from the filing date, i.e. the date of filing of the application in the Hong Kong SAR (see section III).

II. Standard patents

Procedure for applying for a standard patent based on a patent application filed with EPO

(a) General

Standard patents are issued following a two-stage formal registration procedure. All the necessary registration forms are available at www.ipd.gov.hk/eng/forms_fees/patents.htm.

The first stage for the grant of a Hong Kong SAR standard patent is based on the corresponding European patent application (in respect of an application designating the UK) published by the EPO.

A PCT application designating the EPO may serve as the basis for the first stage of the registration procedure in Hong Kong SAR.

The second stage for the grant of a Hong Kong SAR standard patent requires separate registration of the corresponding European patent after it has been granted by the EPO. It should be noted that only European patents granted for the UK are eligible for the grant of a standard patent in the Hong Kong SAR.

(b) Stage one: registration of the application

Within six months after the date of publication of the international patent application designating the EPO2 or the European patent application,3 the following steps must be taken (Sections 15 and 16 Patents Ordinance, Section 8 Patents (General) Rules):

(i) filing of a "request to record" (Patents Form P4)

(ii) provision of a copy of the patent application to be registered as published

(iii) in the case of an international application, provision of a copy of:

• the international application as published by the International Bureau
• translation of the international application published by the EPO as designated Office (if the international application was not published in an official language of the EPO)
• the information about the international application published by the EPO (e.g. copy of an extract from the European Patent Bulletin, the European Patent Register or any publication issued by the EPO showing that the international application has entered the regional phase)

(iv) payment of the prescribed fees.

The title of the invention and the abstract must be available in both English and Chinese (Section 104 Patents Ordinance, Section 56(2) Patents (General) Rules). However, it is not necessary to file an English or Chinese translation of the copy of the European patent application published in French or German (Section 56(4) Patents (General) Rules).

The first stage of the registration procedure is usually concluded within three months as from the date of receipt of the application if the application meets all requirements and does not include any deficiency.

If it is not possible to proceed to the second stage within five years after publication of the request to record (for example, because the patent on the basis of the registered application is not granted within this period), Patents Form P9 must be completed and a maintenance fee paid. If these requirements are not met, the patent application is deemed withdrawn (Section 33 Patents Ordinance, Section 28 Patents (General) Rules). Restoration of the application is possible under certain limited conditions (Section 34 Patents Ordinance, Section 31 Patents (General) Rules).

(c) Stage two: registration of the European patent, grant of the standard patent

Within six months after the date of grant of the European patent designating the UK or publication of the request to record in the Hong Kong SAR, whichever is the later, the following steps must be taken (Section 23 Patents Ordinance, Section 19 Patents (General) Rules):

(i) filing of a request for registration and grant using Patents Form P5

(ii) filing of a copy of the published specification of the European patent (and confirming on the above form that it is a true copy of the document issued or kept by the EPO)

(iii) payment of the prescribed fees.

The title of the invention must be available in both English and Chinese (Section 104 Patents Ordinance, Section 56(2) Patents (General) Rules).

Under the London Agreement, a European patent designating the UK and granted in French or German no longer has to be translated into English (OJ EPO 2001, 549 and OJ EPO 2008, 123). In such cases it is not necessary to file a translation into English or Chinese of the copy of the published specification of the European patent which serves as the basis for the Hong Kong SAR standard patent (Section 56(5) Patents (General) Rules).

If all requirements are met and there is no deficiency, the standard patent is normally granted within three months, and its details are published.

(d) Impact of opposition procedures before the EPO

In general Hong Kong SAR standard patents stand alone and are not affected by a possible post-grant revocation or lapse of the European patent in the UK on which the standard patent is based.

However, as an exception any amendment or the revocation of the European patent - which served as the basis for the Hong Kong SAR standard patent - as a result of opposition or appeal proceedings before the EPO must be notified to the Registrar of patents in Hong Kong. The Registrar will record and publish the amendment or revocation.

For an amendment, the notification has to be made within six months as from the date of the amendment in the EPO4 or the date of grant of the Hong Kong SAR standard patent, whichever is later (Section 43 Patents Ordinance, Sections 35 and 36 Patents (General) Rules).

In such cases, under Section 43 Patents Ordinance and Sections 35 and 36 Patents (General) Rules the standard patent proprietor must

(i) file a notice of the amendment on Patents Form P8

(ii) file with the Registrar (who must advertise this fact) a verified copy of the amended specification or other prescribed documentation.5

For revocation, under Section 44 Patents Ordinance and Sections 36 and 37 Patents (General) Rules, the standard patent proprietor must, after publication of the revocation by the EPO6

(i) file a notice of the revocation on Patents Form P15

(ii) file with the Registrar (who must advertise this fact) a verified copy of the decision regarding the revocation or other prescribed documentation7.

In the event of the revocation of the European patent - which served as the basis for the Hong Kong SAR standard patent - as a result of opposition or appeal proceedings before the EPO, any person other than the proprietor may apply to the Registrar for an order that the standard patent be revoked in accordance with the prescribed procedure,8 upon payment of the specified fee. The Registrar may either revoke the standard patent or refer the application to the appropriate court (Section 44(4) and (5) Patents Ordinance, Sections 36 and 37 Patents (General) Rules).

III. Short-term patents

Short-term patents can inter alia be based on a search report from the EPO or on an international search report from the EPO when acting as International Searching Authority9. In general, there is no time limit for filing a short-term patent application. However, if the applicant wishes to claim priority from an application filed in a Paris Convention country or World Trade Organization member country, territory, or area, it should file the short-term patent application in the Hong Kong SAR within 12 months after the date of filing of the first application (Sections 110 and 111 Patents Ordinance and Section 69 Patents (General) Rules).

Applications for a short-term patent must be made on Patents Form P6 direct to the Registrar and must contain a search report in relation to the invention. A certified translation of the search report must be filed if the search report is not drawn up in English or Chinese (Sections 104 and 113(3) Patents Ordinance and Section 56(1) Patents (General) Rules). The application to which the search report relates does not have to be filed with the Hong Kong SAR Patents Registry.

The title of the invention and the abstract must be available in both English and Chinese (Section 113 Patents Ordinance, Section 56(2) Patents (General) Rules).

On request, grant of a short-term patent can be deferred for a maximum of twelve months after the filing date of the short-term patent application (Section 119 Patents Ordinance). This will make it possible to have more time to obtain the required search report.

If the application meets all requirements and does not include any deficiency, the short-term patent is normally granted within three months, and its details published.

For further details about patent protection in the Hong Kong SAR, see the webpage of the Hong Kong SAR Intellectual Property Department at www.ipd.gov.hk/eng/home.htm.