In general, there is no time limit for filing a standard patent (O) application in the Hong Kong Special Administrative Region (the Hong Kong SAR). But if you wish to claim priority from a first application in a Paris Convention country or World Trade Organization member, you should file your standard patent (O) application in the Hong Kong SAR within 12 months of filing the first application.
If your invention has been disclosed and you claim that the disclosure does not prejudice your invention's novelty (section 37B, Patents Ordinance) you should file your standard patent (O) application within 6 months of the disclosure.
You need to provide documents and information for your patent application.
You need to pay a filing fee and an advertisement fee within one month after the date of receipt of any of the documents comprising your application.
Upon receipt of your request form (Form OP1), we will issue a receipt notifying you of the alloted application number.
We will give your standard patent (O) application a filing date when:
If we have given your application a filing date, we will examine your application on formal requirements and give you notice to correct any deficiencies on formal requirements within two months.
If there is no deficiency on formal requirements or any such deficiencies are corrected, we will publish your standard patent (O) application and advertise the fact of the publication in the Hong Kong Intellectual Property Journal.
The publication of the patent application will be made as soon as practicable on the expiry of 18 months after the date of filing of the application or the earliest date of priority claimed (if applicable). Alternatively, the applicant may request early publication of the application by indicating so in the Form OP1.
You need to file a request with the Registrar of Patents for substantive examination of a standard patent (O) application on Form OP2 within three years after its date of filing or the earliest date of priority claimed (if applicable), or else your application will be regarded as being withdrawn. The prescribed fee needs to be paid within one month after the date of the substantive examination request.
When conducting substantive examination, the Registrar of Patents examines whether your application complies with the examination requirements, which in particular include the patentability of the underlying invention of your application, e.g. whether the invention is new, involves an inventive step and is industrially applicable.
If your application is considered as not complying with any examination requirement, the Registrar of Patents will issue an examination notice to you. You need to respond to the examination notice within four months after the date of the examination notice by filing a written representation and/or a request to amend your application.
You will need to elaborate, revise or clarify your response if so required by a further examination notice issued by the Registrar of Patents. Such elaboration, revision or clarification must be filed within four months after the date(s) of the further examination notice(s).
Failure to timely file a response to any examination notice or further examination notice will render your application being regarded as being withdrawn.
If the Registrar of Patents, upon considering your response(s) to the examination notice(s) and / or any further examination notice(s), still considers that your application does not comply with the examination requirement(s) concerned, the Registrar of Patents will make a provisional decision of refusal.
You may file a request to review the provisional decision of refusal (by submitting Form OP3) within two months after the date of the provisional decision by filing a written representation and/or a request to amend your application.
If the Registrar of Patents maintains the view that your application does not comply with the examination requirement(s) in question, he will issue a review opinion to that effect. You could respond by filing a written representation, a request to amend your application, and/or a request for hearing (if the Registrar of Patents has offered you an opportunity to be heard) within two months after the date of the review opinion.
If the Registrar of Patents remains unconvinced that the relevant requirements are met, he may issue one or more further review opinion(s) to that effect. You will need to respond by providing elaboration, revision or clarification of your earlier response, and/or requesting a hearing (if the Registrar of Patents has offered you an opportunity to be heard) within two months after the date of the relevant further review opinion. Failure to respond within the above time limit will result in a final refusal to grant the patent.
If your standard patent (O) application, upon examination, is considered by the Registrar of Patents to be in order, the Registrar of Patents will grant and publish the patent, advertise the fact of grant by notice in the Hong Kong Intellectual Property Journal, and issue a certificate of grant of the patent.
In other cases, the Registrar of Patents will issue a final decision of refusal to grant the patent. The decision of the Registrar of Patents is subject to the right of appeal to the Court of First Instance.