The Registrar will accord a date of filing to your short-term patent application if your application contains the following 3 elements—
The time limit for a short-term patent applicant to correct the deficiencies on the requirement for according a date of filing, if any, is a non-extendible period of 2 months after the date of the Registrar’s notice which notifies the applicant of the deficiencies.
After according the date of filing to a short-term patent application, the Registrar must examine the application to ascertain whether the application complies with the formal requirements under the patent legislation in order to ensure that the application is in order for publication.
When examining the formal requirements, the Registrar will check whether a short-term patent application—
If you have made reference to an earlier specified application at the time of filing the application, you must file the following documents within 4 months after the date on which the requirement for according a date of filing is complied with —
And if the earlier specified application and the certificate issued by the authority that received the earlier specified application are not in English or in Chinese, you must also file—
Claiming priority based on a previous Hong Kong application
An earlier short-term patent application or standard patent (O) application can serve as a basis for claiming priority for a subsequently filed (within 12 months after the date of filing of the previous application) short-term patent application as long as—
In this case, the applicant does not need to file the supporting priority documents i.e. a copy of the previous application and a copy of the certificate issued by the authority that received the previous application and that states the date of filing of the previous application. However, a statement of priority is still required to be filed within 16 months (non- extendible) after the earliest date of priority claimed (please also refer to the question below).
Claiming priority based on a previous non-Hong Kong application
Where an applicant of a short-term patent application (within 12 months after the date of filing the previous application) seeks to claim priority of an earlier patent application filed in or for any Paris Convention country or WTO member outside Hong Kong (previous non-Hong Kong application), the following documents may be filed with the Registrar within 16 months (non-extendible) after the earliest date of priority claimed (provided that the statement of priority is accompanied by payment of the official fee and the preparations for publication of the short-term patent have not been completed):
Please also refer to the question below.
If your short-term patent application is filed within 12 months from the date of filing of the previous application, you may still make such priority claim within 16 months (non-extendible) after the priority date by filing the statement of priority in Form OP5 aand the supporting priority documents with payment of the official fee provided that the preparations for publication of your applied for short-term patent have not been completed.
You may file your short-term patent application and also an application for restoration of priority right.
The restoration application should be filed in Form OP5 before the earlier of the following—
The restoration application must be accompanied by:
You may file the missing description or drawings for your short-term patent application within 2 months (extendible, upon your request to the Registrar, for 2 months) after the accorded date of filing of the application. If the Registrar identifies the missing parts, the Registrar may notify you of the requirement on filing the same. In that case, you may file the missing parts within 2 months from the date of such notice (extendible, upon request to the Registrar, for 2 months).
Please however note that your filing of the missing description or drawings will cause a change of the accorded date of filing of your short-term patent application to the date on which the missing materials are filed, unless—
No.It remains the case that a short-term patent is granted upon formality examination of the patent application.
That said, the patent proprietor or any other person having reasonable grounds or legitimate interest may request the Registrar to conduct post-grant substantive examination of the patent concerned for determining its validity.
A request for substantive examination of a short-term patent may be filed with the Registrar by—
any other person who satisfies the Registrar that—
A request for substantive examination of a short-term patent must be filed in Form OP4 accompanied by payment of the official fee.
A short-term patent proprietor must request the Registrar to conduct substantive examination of the patent before commencing court proceedings for enforcement of the patent rights.
Yes, filing a request to the Registrar for substantive examination of a short-term patent granted before 19 December 2019 is a pre-condition for commencing enforcement proceedings on or after the said date.
A request for substantive examination of a short-term patent may be filed with the Registrar at any time after the patent grant. However, the Registrar will not entertain such request concerning a short-term patent when—
During the substantive examination of a short-term patent, the Registrar will mainly examine the patent and consider any requested amendment to determine whether the patent, together with the amendment (if allowed), complies with all of the following requirements
If the Registrar is of the opinion that your short-term patent, together with any requested amendment, does not comply with any of the examination requirements, the Registrar will issue an examination notice which sets out the Registrar's opinion with reasons.
You may respond to an examination notice in writing to address the Registrar’s opinion by filing—
The time limit for you to file your written response to the examination notice is 2 months (extendible once for 1 month by filing Form SP3 with payment of the extension fee) after the date of the examination notice.
Your patent will be provisionally revoked should you fail to timely file your written response to the examination notice.
If the Registrar, having considered your written response to the examination notice, is of the opinion that elaboration, revision or clarification of any matter covered in your written response is required, the Registrar will issue a further examination notice setting out such matter.
You may respond to the further examination notice in writing to address the Registrar’s opinion by filing—
The time limit for you to file your written response to the further examination notice is 2 months (extendible once for 1 month by filing Form SP3 with payment of the extension fee) after the date of the further examination notice.
Your patent will be provisionally revoked should you fail to timely file your written response to the further examination notice.
The substantive examination of a short-term patent will result in either—
While the Registrar is empowered to issue multiple further examination notices for affording you ample opportunities to elaborate, revise or clarify any matter covered in your response to an examination notice or a further examination notice, the number of further examination notices varies from case to case. For example, if the Registrar, having considered your written response to the examination notice and your response to a further examination notice (if any), is of the opinion that your short-term patent does not comply with the examination requirement concerned and that there is no reasonable prospect for you to overcome the objection(s) by making any elaboration, revision or clarification of any matter, the Registrar will proceed with issuing a provisional revocation notice.
You may file with the Registrar a request to review (in Form OP3) the Registrar’s provisional decision of revocation together with the official fee. Your request to review may contain the following—
The time limit to file a request to review is 2 months (extendible once for 1 month by filing Form SP3 with payment of the extension fee) after the date of the Registrar’s provisional revocation notice.
If you fail to timely file a request to review the Registrar’s provisional decision of revocation with payment of the official fee, the Registrar will issue a final revocation notice.
If the Registrar, having considered your request to review, is of the opinion that your short-term patent still does not comply with any examination requirement as identified in the Registrar’s provisional revocation notice, the Registrar will inform you by a review opinion with reasons. Depending on the individual circumstances, the Registrar may also afford you an opportunity to request a hearing.
You may respond to the review opinion by filing—
Where the Registrar has, in the review opinion, afforded you an opportunity to request a hearing, you may, in addition to, or as an alternative to filing your response to the review opinion in the aforesaid manner, file a request for hearing by filing Form OP6 together with payment of the official fee.
The time limit to file a written response to the Registrar’s review opinion or a request for hearing (if applicable) is 2 months (extendible once for 1 month by filing Form SP3 with payment of extension fee) after the date of the review opinion. The extension request for filing a request for hearing may be filed before the expiry of the initial deadline, but the extension request for filing a written response may be filed within 1 month after the expiry of the initial deadline.
If you fail to timely respond to a review opinion and pay the applicable official fee (if any), the Registrar will issue a final revocation notice.
If the Registrar, having considered your request to review, your written response to the review opinion, and also having held the hearing as requested by you (if any), is of the opinion that elaboration, revision or clarification of any matter covered in your written response and/or the hearing (if any) is required, the Registrar will issue a further review opinion setting out such matter. Depending on the individual circumstances, the Registrar may also afford you an opportunity to request a hearing.
You may respond to the further review opinion by filing—
Where the Registrar has, in the further review opinion, afforded you an opportunity to request a hearing, you may, in addition to, or as an alternative to filing your response to the further review opinion in the aforesaid manner, file a request for hearing by filing Form OP6 together with payment of the official fee.
The time limit to file a written response to the Registrar’s further review opinion or a request for hearing (if applicable) is 2 months (extendible once for 1 month by filing Form SP3 with payment of extension fee) after the date of the further review opinion. The extension request for filing a request for hearing may be filed before the expiry of the initial deadline, but the extension request for filing a written response may be filed within 1 month after the expiry of the initial deadline.
If you fail to timely respond to a further review opinion and pay the applicable official fee (if any), the Registrar will issue a final revocation notice.
While the Registrar is empowered to issue multiple further review opinions for affording you ample opportunities to elaborate, revise or clarify any matter covered in your response to a review opinion/a further review opinion or at the hearing as requested by you (if any), the number of further review opinions varies from case to case. For example, if the Registrar, having considered your request to review, your response to the review opinion, your response to a further review opinion (if any), and also having held the hearing as requested by you (if any), is of the opinion that your short-term patent does not comply with the examination requirement concerned, and that there is no reasonable prospect for you to overcome the objection(s) concerned by making any elaboration, revision or clarification of any matter, the Registrar will proceed with issuing a final revocation notice.
If the Registrar is of the opinion that your response to an office action concerning an examination requirement in your short-term patent has overcome such objection(s), the Registrar will continue to carry out the substantive examination of your patent to ensure that your patent complies with all examination requirements.
Where the Registrar is of the opinion that your patent does not comply with any other examination requirement(s), the Registrar will issue another examination notice setting out the Registrar’s opinion with reasons, and you will be given time to address the objection(s) in such office action.
On the other hand, if the Registrar is ultimately of the opinion that your short-term patent, together with any amendment allowed, complies with all the examination requirements, the Registrar will issue a certificate of substantive examination in respect of your patent.
You may file an appeal to the Court of First Instance against the Registrar’s final decision to revoke your short-term patent.
You can still request a time extension for 1 month by filing Form SP3 with payment of the official fee within 1 month after expiry of the original deadline.
If the Registrar, having regard to all examination requirements and also any response filed by a short-term patent proprietor to overcome the objections raised by the Registrar, accepts the requested amendment to the patent specification in whole or in part as an allowable amendment, the Registrar must publish the allowable amendment and advertise the fact of the publication by notice in the official journal.
Any person who intends to oppose the allowable amendment published by the Registrar must file with the Registrar an opposition notice in Form P2 together with payment of the official fee within 1 month (extendible for 1 month with the official fee) from the date of the Registrar’s notice in the official journal. The opposition notice must be accompanied by a statement setting out fully the facts on which the opponent relies and the relief sought.
Here are certain key time limits for addressing office actions concerning substantive examination of short-term patents—
| Actions to be completed | Time limits | Extendible? | When to file a request for time extension (only for those extendible time limits) | Section Nos. of PGR |
|---|---|---|---|---|
| Filing a response to an examination notice | Within 2 months after the date of the notice | Yes (1 month only) | Within 1 month after the expiry of the initial time limit | 81E(1), 100AAB, Part 3 of Schedule 4 |
| Filing a response to a further examination notice | Within 2 months after the date of the notice | Yes (1 month only) | Within 1 month after the expiry of the initial time limit | 81G(1), 100AAB, Part 3 of Schedule 4 |
| Filing a request to review in response to a provisional revocation notice | Within 2 months after the date of the notice | Yes (1 month only) | Within 1 month after the expiry of the initial time limit | 81I(1), 100AAB, Part 3 of Schedule 4 |
| Filing a response to a review opinion | Within 2 months after the date of the opinion | Yes (1 month only) | Within 1 month after the expiry of the initial time limit | 81K(1), 100AAB, Part 3 of Schedule 4 |
| Filing a request for hearing in response to a review opinion (if applicable) | Within 2 months after the date of the opinion | Yes (1 month only) | Before the expiry of the initial time limit | 81K(2), 82(2)(c), 100AAB, Part 2 of Schedule 4 |
| Filing a response to a further review opinion | Within 2 months after the date of the opinion | Yes (1 month only) | Within 1 month after the expiry of the initial time limit | 81M(1), 100AAB, Part 3 of Schedule 4 |
| Filing a request for hearing in response to a further review opinion (if applicable) | Within 2 months after the date of the opinion | Yes (1 month only) | Before the expiry of the initial time limit | 81M(2), 82(2)(d), 100AAB, Part 2 of Schedule 4 |
At any time after a short-term patent is granted and published, any person may file with the Registrar a written notice setting out—
The Registrar however will not entertain the filing of observations on a short-term patent in any of the following circumstances—
Upon receipt of the notice containing observations on a short-term patent, the Registrar will as soon as practicable, send a copy of the notice to the patent proprietor.
Filing a notice containing observations on a short-term patent on its own does not amount to a challenge of the validity of the patent. In fact, a person filing such notice does not become a party to any proceedings in relation to the short-term patent concerned. Such notice will only be considered by the Registrar after the Registrar has been requested to conduct post-grant substantive examination of the patent for determining the patent validity.
Yes, the application to amend the specification has to be made to the Registrar or the Court of First Instance. The procedure is in essence the same as that for seeking an amendment of the specification of a standard patent (O).