In Hong Kong, there are two types of patents as governed by the Patents Ordinance (Cap. 514):
- Standard patent: It provides protection to the invention for at most 20 years (from the application’s filing date).
- Short-term patent: It provides protection to the invention for at most 8 years (from the application’s filing date).
Applying for a patent
If you want to apply for a patent for your invention, you need to file an application with the Intellectual Property Department’s Patents Registry. While you may have already applied for a patent in another country or other regions of China, you do not automatically receive patent protection in Hong Kong. To submit your patent application, you should send it to the following address:
Patents Registry
Intellectual Property Department
24/F, Wu Chung House
213 Queen’s Road East
Wanchai
Hong Kong
Applying for a standard patent
In Hong Kong, there are two different types of standard patents that you may apply for.
The first type is a standard patent (O). It is subject to:
- A formality examination: The Registrar will examine whether your standard patent (O) application fulfils the formal requirements (i.e. whether it contains the necessary supporting information and documents as required by the Patents Ordinance (Cap. 514)).
- A substantive examination: You need to file a request with the Registrar for a substantive examination of your standard patent (O) application within three years from the date of filing or, if applicable, the earliest date of priority. Otherwise, your application will be considered as being withdrawn. When the Registrar conducts a substantive examination, they examine whether your application fulfils all the examination requirements, including the patentability of the application’s invention.
For a standard patent (O) application, the whole examination process usually takes at least two to three years. However, the overall time frame can be shortened if you file a request for early publication of your application and respond to the examiner’s actions promptly.
The second type is a standard patent (R) application. It is usually based on the prior grant of a corresponding patent issued by any of the three patent offices (i.e. the designated patent offices):
- The China National Intellectual Property Administration;
- The United Kingdom Patent Office; and
- The European Patent Office (regarding a patent designating the United Kingdom).
To apply for a standard patent, you need to take two steps:
- Stage 1: File a request to record your designated patent application within six months after the designated patent application’s publication in one of the patent offices; and
- Stage 2: File a request for your patent’s registration and grant in Hong Kong of the Chinese, UK or EP (UK) granted patent within six months either after the request to record’s publication in Hong Kong or after the designated patent’s grant by one of the patent offices.
When you file for a standard patent (R) application, it can be made in either English or Chinese. It can also be filed online or physically with the Patents Registry. If you are applying for a standard patent (R) in Hong Kong, you will enjoy the same priority right as is enjoyed regarding the designated patent application on which your standard patent (R) application in Hong Kong is based.
After you have filed for a standard patent (R) application, your application for Request for Registration and Grant will be examined for formality. If all information and documents supporting your application meet the prescribed requirements for grant, it will usually take only around three months after you apply for a Request for Registration and Grant for the Registrar to register and grant a standard patent (R) to you. Then, the Registrar will publish the details of your patent and advertise your grant in the Hong Kong Intellectual Property Journal.
Applying for a short-term patent
In Hong Kong, the grant of a short-term patent is based on a search report from one of the three designated patent offices or an international searching authority.
Then, you should make an application for your short-term patent by filing a request for grant in Hong Kong with all the supporting documents. There is no time limit for making a short-term patent application in Hong Kong. However, if you want to claim priority from a first application in a World Trade Organisation member territory or Paris Convention country, you will need to make such an application in Hong Kong within 12 months of making your first application. Moreover, you should make your short-term patent application within six months if your invention has already been disclosed and you claim that the disclosure does not prejudice the novelty of your invention (section 109 of the Patents Ordinance (Cap. 514)).
Who can apply for a patent?
You can apply for a patent as long as you are the owner of the relevant invention. However, if you wish to apply for a standard patent in Hong Kong but you are not the applicant of the designated patent application, you will need to explain your right to apply by providing a statement and the necessary supporting documents (e.g. a copy of an assignment document).
Language
As the official languages in Hong Kong are English and Chinese, you can make your patent application in either English or Chinese as the application forms are available in both languages. For instance, if you apply in English, the Intellectual Property Department will write to you in English and all the proceedings relating to your application or the resulting patent will also be in English.
Nevertheless, certain information that you provide in your application must be demonstrated in both languages, i.e. the title of your invention and the abstract. However, if the name of the applicant or inventor is not in Chinese or Roman letters, you will need to provide a transliteration of the name in Roman letters.
Making an international application under the Patent Cooperation Treaty (PCT)
If you make an international patent application designating China, you can also obtain standard or short-term patent protection in Hong Kong. You can make the application either with the International Bureau of WIPO or the China National Intellectual Property Administration. Once your application has entered the China’s national phase, you can make an application for a standard or short-term patent in Hong Kong.
Searching for granted patents and published patent applications
If you wish to look up for granted patents and published patent applications in Hong Kong, you can do so by accessing the Intellectual Property Department’s online search system at https://esearch.ipd.gov.hk/nis-pos-view/#/.
Key takeaways
- If you want to apply for a patent for your invention in Hong Kong, you need to file an application with the Intellectual Property Department’s Patents Registry.
- The stages for applying for standard and short-term patents in Hong Kong are different.
- You can apply for a patent if you are the owner of the relevant invention.
Bibliography:
- Intellectual Property Department, ‘How to apply for grant of patents in the Hong Kong Special Administrative Region?’: https://www.ipd.gov.hk/eng/intellectual_property/patents/how_to_apply.htm
- Government of Hong Kong, ‘Applying for a standard patent’: https://www.ip.gov.hk/en/applying-standard-patent.html