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How to obtain patent protection in Hong Kong?

How to obtain patent protection in Hong Kong?

  • 08/02/2018

As Asia increases its importance in the global economy, securing patent rights even in Hong Kong has become a relevant issue for many patent applicants. It is noteworthy that patents granted by the Chinese patent office (the State Intellectual Property Office) do not automatically provide protection in the territory of the Hong Kong Special Administrative Region.

There are two routes for protecting an invention by a patent in Hong Kong. Both of them rely on the success of a corresponding application before other patent authorities.

Standard patent

The maximum term of a standard patent is 20 years. A standard patent is based on the registration of a patent granted by any of the following three patent offices:

  • the State Intellectual Property Office of People’s Republic of China,
  • the European Patent Office, in respect of a patent designating the United Kingdom, and
  • the Intellectual Property Office of the United Kingdom.

The registration process involves two stages:

  1. filing a request to record within 6 months after the date of publication of the patent application, and
  2. filing a request for registration and grant within 6 months after the date of grant of the patent.

Short-term patent

A short-term patent can be kept in force for 8 years. The grant of a short-term patent is based on an international search report issued by a PCT authority or a search report issued by any of the above-listed three patent offices.

A short-term patent application is made by filing a request for grant of a short-term patent. There is no time limit for filing the request. However, in order to claim priority from an earlier application, the request must be filed within the priority year.

The Intellectual Property Department of Hong Kong does not conduct any search or substantive examination of the patent application, neither for a standard patent nor for a short-term patent.

Statistics

Patent applicants favor the standard route for obvious reasons: it provides a longer term, and the initial decision to file can be postponed up to 24 months after the priority date.

In 2017, about 13 300 standard patent applications were filed, of which 135 were of Finnish origin. By contrast, the number of short-term patent applications in 2017 was only 693, of which none in the name of Finnish applicants.

And after Brexit?

As always, when discussing patent filing procedures, we must take a look at the situation after Brexit for the sake of completeness.

Luckily, Brexit has no effect on the UK membership of the European Patent Organisation, because the EPO is not an EU body but an independent international organisation. Therefore, European patent applications, European patents, and search reports issued by the EPO can be used as a basis for obtaining patent rights in Hong Kong also in the future.

 

 

 

 

Written by:
Hanna Laurén
European Patent Attorney
hanna.lauren@seppolaine.fi