An OGP is a standard patent (known as “standard patent (O)”) that is granted through a new and direct filing route introduced by the OGP system.

Prior to 19 December 2019, the Registrar only granted standard patents (renamed as “standard patent by re-registration” or “standard patent (R)”) under the pre-existing “re-registration” system. A pre-requisite to applying for a standard patent (R) is to file an earlier corresponding patent application with one of the 3 designated patent offices, namely the CNIPA, the UKIPO or the EPO (for patent applications designating the United Kingdom).

In contrast, a standard patent (O) application can be filed directly in Hong Kong, i.e. its applicant is not required to file an earlier corresponding patent application with any of the 3 designated patent offices.

Where a standard patent (R) application is only subject to formality examination by the Registrar as to whether the necessary information and documents in support of the application have been filed in compliance with the statutory requirements, a standard patent (O) application is subject to both formality and substantive examinations by the Registrar. Substantive examination requires the Registrar to determine mainly if the claimed invention satisfies the patentability requirements, e.g. whether such invention is new, involves an inventive step and is industrially applicable.

A standard patent (O) has a maximum protection term of 20 years. On the other hand, the maximum protection term of a short-term patent is only 8 years.

Subject to the requirement that a patent application may only relate to either 1 invention or a group of inventions that are so linked as to form a single inventive concept (“unity requirement”)—

1. there is no restriction of the number of claims, whether independent or dependent, which an application for standard patent (O) or standard patent (R) may contain; and
2. a short-term patent application can however only contain 2 independent claims at most but the number of dependent claims that the application may contain is not restricted.

Whilst a standard patent (O) application is subject to both formality and substantive examinations by the Registrar, a short-term patent application is generally subject to only formality examination by the Registrar before grant. After grant, a short-term patent may be subject to a request for post-grant substantive examination by the owner or any third party having reasonable grounds or legitimate interest.

The OGP system provides you with a new and direct filing option of seeking standard patent protection in Hong Kong. By offering a direct filing route for seeking standard patent protection of a maximum term of 20 years, the OGP system serves to provide a convenient route to acquire standard patent protection for inventions in Hong Kong. In this connection, an application for standard patent (O) is generally most appropriate to safeguard a single invention (including a group of inventions that are so linked as to form a single inventive concept) that is—

1. complex in nature; and
2. anticipated to have longer exploitation/commercialization terms in the Hong Kong market.

That said, different applicants may have different patent filing/protection/commercialization strategies. The most appropriate type of patent to be applied for therefore varies on a case-by-case basis. As a matter of prudence, it is advisable to seek professional advice on the patent filing strategy that is most effective and practicable to safeguard the rights in or under an invention.

The entire examination process of a standard patent (O) application from filing to grant is normally expected to take at least 2 to 3 years given that the application has to undergo the following key examination procedure—

1. formality examination involving examination on—

   1. the requirement for according a date of filing; and
   2. formal requirements;
2. publication of the application (normally takes place around 18 months after the date of filing or the earliest priority date if priority right is claimed); and
3. substantive examination, inclusive of review of the Registrar’s provisional refusal of the application, if any (only upon the applicant’s request).

Deficiencies in an application raised by the Registrar during formality or substantive examination will inevitably prolong the overall examination process as the applicant is given a certain period to respond to the office actions under the law.

The overall examination time frame can be shortened if—

1. the standard patent (O) application contains all the required information and documents in support of the application;
2. the applicant elects to file a request for early publication of the application as soon as practicable;
3. the applicant promptly files a request for substantive examination;
4. the applicant files a written statement with the Registrar confirming that no voluntary amendment is required; and
5. the applicant promptly responds to any office action raised by the Registrar throughout the examination of the application.

There is no requirement that a patent applicant must be represented by an agent nor that a patent application must be filed by an agent.

Please however note that filing a patent application for an invention generally involves highly specialized/technical knowledge and skills for drawing up and preparing the necessary supporting documents. In particular, precise drafting of patent documents (e.g. claims and specifications) on descriptions of the claimed invention(s) in support of a patent application for the invention(s), and timely filing coupled with successful prosecution of such patent application are necessary to safeguard the rights in or under such inventions. All these essential pre-filing and post-filing steps require highly specialized knowledge and expertise for addressing the material legal and technical issues. More importantly, one should also note that the novelty of a claimed invention would generally be lost upon disclosure (e.g. publication of a patent application for the invention). In particular, where a patent application for an invention has been published but subsequently abandoned/withdrawn/refused as a result of poor drafting or prosecution of the application, there is a risk that the patent applicant may not remedy or rectify the position by re-filing the application for the same invention given that the novelty of the invention would likely be subject to objection/challenge. Accordingly, as a matter of prudence, it is advisable for patent applicants to seek professional assistance as early as practicable in formulating patenting strategies, drafting and prosecuting patent applications, especially those for inventions involving complex technologies and/or patenting issues, to safeguard the rights in or under the inventions.

Subject to annual renewal, the term of a standard patent (O) lasts for a maximum of 20 years from the date of filing of the application for the patent.

In order to keep a standard patent (O) in force up to its maximum term of 20 years, you are required to pay the first renewal fee which is due on the fourth anniversary date of filing of the application for the patent following the date of grant of a standard patent (O). The subsequent renewal payment falls due on every anniversary date thereafter until the expiry of the 20-year patent protection term.

You can pay the renewal fee up to 3 months before the due date. You can still renew the patent within a 6-month grace period after the due date but an additional late fee will be incurred.

Here are two hypothetical examples—
Example 1:

Example 2:

Note: A time limit that expires on a day which is not a business day shall be extended to the next business day.

The Innovation and Technology Commission administers the Patent Application Grant scheme to assist Hong Kong companies and individuals to apply for patents for the first time.

A standard patent (O) application must be made to the Registrar in Form OP1 through electronic filing or paper filing with the prescribed fees.

In general, the essential documents required to be filed with Form OP1 are—

1. a specification in either English or Chinese, containing a description of the underlying invention, at least one claim and drawings; and
2. an abstract in English and Chinese

If you are making a standard patent (O) application for an invention but are not an inventor, you have to file a statement of inventorship in Form OP1A indicating how you acquire the right to apply for the standard patent (O) for the invention.

Please refer to other parts of this FAQ for other documents that may be required for claiming priority and claiming non-prejudicial disclosure.

The Registrar will accord a date of filing to your standard patent (O) application if your application contains the following 3 elements—

1. an indication that a standard patent (O) is sought;
2. information identifying the applicant, such as the name and address of the applicant; and
3. 1. information/material that appears to be a description of an invention, or
   2. a reference to an earlier specified patent application in the form of a statement in Part 06 of Form OP1 to indicate that the description and drawings of your present standard patent (O) application are wholly contained in the earlier specified patent application.

Filing a duly completed Form OP1 (with the relevant enclosure(s) containing a description of the claimed invention to address requirement (c)(i) above, if applicable) will generally suffice to satisfy the requirement for according a date of filing.

Please also refer to other parts of this FAQ for the importance of having the date of filing accorded by the Registrar for a standard patent (O) application.

You may claim a priority right for your standard patent (O) application by reference to your earlier patent application filed in or for any Paris Convention country or WTO member (“the priority application”). To make such claim properly, you should normally file your standard patent (O) application within 12 months from the date of filing of the priority application together with the following supporting documents—

1. a statement of priority (Part 05 of Form OP1);
2. a copy of the priority application; and
3. a copy of the certificate issued by the patent authority that received the priority application, stating the date of filing of the priority application.

If the priority application is a Hong Kong application, it is not necessary to file the respective copies of the priority application and certificate.

Multiple priorities based on multiple priority applications, even originating from different Paris Convention countries and/or WTO members, may be claimed, and the 12-month time limit shall be calculated from the earliest date of filing of the relevant priority applications.

Upon conducting examination on the requirement for according a date of filing, and upon finding any deficiencies, the Registrar will notify the applicant of the deficiencies and require the applicant to correct the deficiencies in writing within 2 months after the date of the notice. Such time limit is not extendible. If the deficiencies are not duly corrected, the application will not be further dealt with.

If you have duly filed your standard patent (O) application within 12 months from the date of filing of your previous application, you are still allowed to claim priority within 16 months (which is non-extendible) from the earliest priority date claimed by filing Form OP5 with the official fee provided that a request for early publication of the standard patent (O) application has not been made or such request has been withdrawn before preparations for publication of your standard patent (O) application are completed.

If you have failed to file your standard patent (O) application within the 12-month priority period, you can still proceed with your filing and also make an application for restoration of priority right provided that such application is made—

1. within 14 months (which is non-extendible) from the date of filing of your previous application; and
2. before the date on which the preparations for publication of your standard patent (O) application are completed.

Your restoration application should be made by filing Form OP5 with payment of the official fee, and also accompanied by—

1. a statement of priority including the date of filing, the application number and the country, territory or area in or for which the previous application was made; and
2. evidence (in the form of statutory declaration) to
   1. establish why the standard patent (O) application was not filed in time; and
   2. satisfy the Registrar that all reasonable care required by the circumstances has been taken.

Non-prejudicial disclosure refers to disclosure of the underlying invention of a patent application which took place before filing the application, but such pre-filing disclosure would not be regarded as part of the state of the art. The conditions for non-prejudicial disclosure are—

1. the disclosure occurred within 6 months before the date of filing of the patent application; and

2. the disclosure was a result of—

   1. evident abuse, e.g. breach of confidence, in relation to the patent applicant or proprietor; or
   2. display at an exhibition recognized by the Paris Convention on International Exhibitions.

In order to claim non-prejudicial disclosure, you have to make a disclosure statement (Part 09 of Form OP1) and provide written evidence in the form of statutory declaration. In the case of non-prejudicial disclosure occurring in a recognized international exhibition, the written evidence shall include—

• a certificate issued by the exhibition organizer stating the invention was displayed at the exhibition and the date of first disclosure; and
• an identification of the invention duly authenticated by the exhibition organizer.

You may file the missing description or drawings for your standard patent (O) application within 2 months (extendible, upon 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 missing drawing or descriptions will cause a change of the accorded date of filing of your standard patent (O) application to the date on which the missing materials are filed, unless—

• you have claimed priority of a previous application for your standard patent (O) application; and
• the missing description or missing drawing is completely contained in the previous application; and
• you have requested that the accorded date of filing of your standard patent (O) application remains unchanged; and
• you have filed a copy of the previous application and a statement indicating the location of the missing description or drawing in the previous application within 16 months after the earliest date of priority claimed (the translations of these documents should also be filed within a certain period if they are not in one of the official languages).

Where any document or part of a document which is not in one of the official languages (i.e. English or Chinese) is filed with the Registrar or sent to the Registry, it must contain a translation into one of the official languages which should be adopted consistently throughout the application (including the specification).

If the previous application that contains the missing description or drawings is not in the official language, the time limit for providing the translation of the previous application in the language of specification in your standard patent (O) application (with a statement indicating the location of the missing description or drawing in the previous application) is:

1. in the case where you file the missing description or drawings on your own initiative – 16 months after the earliest date of priority claimed; or
2. in the case where you file missing description or drawings in response to the Registrar’s notice – 2 months after the date of the notice, or 16 months after the earliest priority date claimed, whichever expires later.

The deadline for filing a translation of the previous application in either of the above two scenarios is extendible for 2 months provided that the applicant files a request for extension (in Form SP3) with payment of the official fee before the expiry of the initial time limit.

After according the date of filing to a standard patent (O) 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 standard patent (O) application—

1. is filed in the specified form (Form OP1) in the applicant’s chosen language of proceedings either in English or Chinese and signed by the applicant (Part 14 of Form OP1);
2. contains an abstract in English and Chinese;
3. contains a specification in the language of proceedings with a title of invention, a description of the invention, at least one claim, and any drawing referred to in the description;
4. contains a list of the necessary documents in support of the application, with the number of sheets of each individual document indicated (Part 11 of Form OP1);
5. provides the name and address of the applicant as well as the name of the inventor (Parts 02 and 08 of Form OP1);
6. specifies an address in Hong Kong for service of documents (Part 12 of Form OP1);
7. (if the applicant is not an inventor) provides the last known address of each inventor and an inventorship statement (Form OP1A);
8. (if priority right is claimed) contains a statement of priority (Part 05 of Form OP1) and the priority document;
9. if a reference to an earlier specified patent application is made) contains a copy of the earlier specified patent application and a copy of the certificate issued by the authority which received that application;
10. (if non-prejudicial disclosure is claimed) contains the statement about the claim and supporting evidence (in the form of statutory declaration) (Part 09 of Form OP1);
11. (if the invention requires the use of a micro-organism for performance of the invention) contains information on the availability of samples of the micro-organism to the public (Part 04 of Form OP1);
12. (for inventions involving nucleotide and amino acid sequences) contains a sequence listing as a part of the description in the specification; and
13. (if any filing document is not entirely in the language of proceedings either in English or Chinese) contains a translation of such document in the language of the proceedings.

In examining a standard patent (O) application to determine if it complies with the formal requirements, the Registrar will notify the applicant by notice of the deficiencies in the application as identified by the Registrar, and require the applicant to correct such deficiencies in writing within 2 months after the date of the notice.

If the deficiencies are not duly corrected—

• (where such deficiencies only relate to a claim to a right of priority) the right of priority is lost for the application;
• (in any other case) the application is regarded as being withdrawn or is refused.

The time limit for the applicant to correct the deficiencies is extendible for 2 months provided that the applicant files a request for extension (in Form SP3) with payment of the official fee before the expiry of the initial 2-month period.

Upon satisfying that a standard patent (O) application complies with the formal requirements, the Registrar will publish the application, which normally takes place as soon as practicable upon expiry of 18 months after the date of filing, or the earliest priority date, if priority is claimed.

The publication includes the application as filed and any amendment requested subsequently (e.g. any amendment of the claims in, and any addition of any new claim to, the application as filed) but before the Registrar’s completion of preparations for publication of the application.

The Registrar, in publishing a standard patent (O) application, may omit from the specification contained in the application any matter—

• that disparages any person in a way likely to damage the person; or
• the publication or working of which would be contrary to public order or morality, or be likely to encourage offensive immoral or anti-social behavior.

Yes, you may request early publication of a standard patent (O) application (i.e. publication within 18 months after the date of filing of the application, or the earliest priority date if priority is claimed) in writing either—

• at the time of filing of the application (Part 10 of Form OP1); or
• after the date of filing of the application.

No, it is your responsibility as a standard patent (O) applicant to request the Registrar to conduct substantive examination of your application and also pay the official fee within the relevant time limit (usually three years from the earliest priority date claimed or the date of filing of the application). Your application will be regarded as being withdrawn should you fail to make such request timely.

You need to file a request with the Registrar for substantive examination in Form OP2 and pay the official fee no later than one month after the date of the request.

Here are the relevant time limits for filing a request for substantive examination—

1. for a standard patent (O) application that is not a divisional application— within 3 years (non-extendible) after the date of filing, or the earliest priority date, if any, of the application

2. for a standard patent (O) application that is a divisional application— generally within 3 years (non-extendible) after the date of filing, or the earliest priority date, if any, of the parent application, unless—

   • where the fulfilment date of the divisional application (i.e. the earliest date on which the divisional application complies with the requirement for according a date of filing) is less than 2 months before the expiry of the aforesaid 3-year period-- within 2 months (non-extendible) after the fulfilment date of the divisional application; and
   • if the fulfilment date of the divisional application is on or after the date of expiry of the aforesaid 3-year period—within 2 months (non-extendible) after the fulfilment date of the divisional application.

While there is no specific procedure on requesting the Registrar to accelerate substantive examination of your standard patent (O) application, you may expedite the processing of your application by filing—

1. a request for an early publication of your application either—

   • at the time of filing the application (Part 10 of Form OP1), or
   • as early as possible in writing after filing the application; and
2. a request for substantive examination in Form OP2 as early as possible within the prescribed time-limit.

During substantive examination of a standard patent (O) application, the Registrar will examine if the application complies with the following major requirements—

• the invention, which is the subject of the application, is new, involves an inventive step, and is susceptible of industrial application;
• the invention does not fall within the list of matters excluded from patentability, such as a discovery or scientific theory;
• the application discloses the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art;
• the claims contained in the specification define the matter for which protection is sought or given, are clear and concise, are supported by the description in the specification, and relate to a single inventive concept;
• the matter disclosed in the specification does not extend beyond that disclosed in the application as filed, and, if the application is a specified new application*, the earlier standard patent (O) application;
• if priority is claimed and the Registrar locates any prior art which is filed or published between the claimed priority date and date of filing of the application, whether the applicant is entitled to the priority claimed;
• if an amendment has been made to the specification, or the application is a specified new application*, whether any new matter has been added to the application; and
• whether the application is one of two relevant patent applications** that are filed for the same invention made by the same inventor and have the same date of filing or date of priority claimed.

* Specified new application means a new standard patent (O) application—

1. made in accordance with an order under section 37J(2) PO;
2. referred to in section 37Z PO; or
3. made in accordance with an order under section 55(4) of the PO.

** Relevant patent application means—

1. a patent application which is pending; or
2. a patent application because of which a patent, being one that is in force, was granted.

If the Registrar is of the opinion that your standard patent (O) application 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.

To pursue your application, you must respond to the examination notice in writing to address the Registrar’s opinion by filing—

• a written representation to establish that your application complies with the relevant examination requirement(s) as mentioned in the examination notice; and/or
• a request to amend your application by filing Form P8 to enable your application to comply with the relevant examination requirement(s) as mentioned in the examination notice.

The time limit for you to file your written response to the examination notice is 4 months (extendible once for 2 months by filing Form SP3 with payment of the extension fee) after the date of the examination notice.

Your application will be regarded as being withdrawn 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.

To pursue your application, you must respond to the further examination notice in writing to address the Registrar’s opinion by filing—

• a written representation to establish that your application complies with the relevant examination requirement(s) as mentioned in the further examination notice; and/or
• a request to amend your application by filing Form P8 to enable your application to comply with the relevant examination requirement(s) as mentioned in the further examination notice.

The time limit for you to file your written response to the further examination notice is 4 months (extendible once for 2 months by filing Form SP3 with payment of the extension fee) after the date of the further examination notice.

Your application will be regarded as being withdrawn should you fail to timely file your written response to the further examination notice.

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 standard patent (O) application 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 refusal notice.

You may file with the Registrar a request to review (in Form OP3) the Registrar’s provisional decision of refusal together with the official fee. Your request to review may contain the following—

• a written representation to establish that your application complies with the relevant examination requirement(s) as mentioned in the provisional refusal notice; and/or
• a request to amend your application by filing Form P8 to enable your application to comply with the relevant examination requirement(s) as mentioned in the provisional refusal notice.

The time limit to file a request to review is 2 months (extendible once for 2 months by filing Form SP3 with payment of the extension fee) after the date of the Registrar’s provisional refusal notice.

If you fail to timely file a request to review the Registrar’s provisional decision of refusal with payment of the official fee, the Registrar will issue a final refusal notice.

If the Registrar, having considered your request to review, is of the opinion that your standard patent (O) application still does not comply with any examination requirement as identified in the Registrar’s provisional refusal notice, the Registrar will issue a review opinion with reasons. Depending on the individual circumstances, the Registrar may also afford you an opportunity to request a hearing.

To pursue your application, you must respond to the review opinion by filing—

• a written representation to establish that your application complies with the relevant examination requirement(s) as mentioned in the review opinion; and/or
• a request to amend your application by filing Form P8 to enable your application to comply with the relevant examination requirement(s) as mentioned in the review opinion.

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 2 months 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 2 months 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 refusal 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.

To pursue your application, you must respond to the further review opinion by filing—

• a written representation to establish that your application complies with the relevant examination requirement(s) as mentioned in the further review opinion; and/or
• a request to amend your application by filing Form P8 to enable your application to comply with the relevant examination requirement(s) as mentioned in the further review opinion.

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 2 months 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 2 months 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 refusal 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 standard patent (O) application 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 refusal notice.

Not necessarily. If the Registrar is of the opinion that your response to an office action concerning an examination requirement in your standard patent (O) application has overcome such objection(s), the Registrar must continue to carry out the substantive examination of your application to ensure that your application complies with all examination requirements.

Where the Registrar is ultimately of the opinion that your application has complied with all the examination requirements, the Registrar will grant you a standard patent (O) and will publish, among others, the patent specification which is accessible through the Online Search System of the IPD, advertise the fact of such patent grant in the Hong Kong Intellectual Property Journal and issue a certificate of grant of such patent to you.

On the other hand, if the Registrar is still of the opinion that your application 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.

You may file an appeal to the Court of First Instance against the Registrar’s final decision of refusal of your standard patent (O) application.

If the Registrar considers that your standard patent (O) application does not meet the unity requirement, you may amend your application or file one or more divisional applications to meet that requirement.

A divisional application can be filed at any time when the earlier (parent) application is pending, subject to the following conditions—

• If the Registrar has granted a parent standard patent (O), a divisional application must be filed before preparations for publication of the specification of the parent patent are completed.
• If the Registrar has issued a notice to refuse a parent standard patent (O) application after conducting examination on the formal requirements, a divisional application must be filed within 2 months (non-extendible) after the date of the refusal notice.
• If the Registrar has issued a final decision of refusal of a parent standard patent (O) application after conducting substantive examination, a divisional application must be filed within 2 months (non-extendible) after the date of the final refusal notice.
• If an appeal to the court against the Registrar’s final refusal notice is lodged, a divisional application may be filed within a period specified by the Registrar.
• The divisional application must be made in respect of any part of the subject-matter contained in the parent application.
• The divisional application must include the application number of the parent application.

Yes, you can file voluntary amendments to a standard patent (O) application (in Form P8) at the following junctures—

• once before preparations for publication of the standard patent (O) application are completed;
• when filing a request for substantive examination; and
• within 3 months (non-extendible) from the date of the Registrar’s notice informing you that the application has entered into the stage of substantive examination.

Yes, you can withdraw a standard patent (O) application by filing a written notice at any time before preparations for publication of the application are completed.

You can request the Registrar to grant a time extension for 2 months by filing Form SP3 with payment of the official fee within 2 months after expiry of the original deadline.

You may reinstate your application by filing a request for reinstatement in Form P13 with payment of the official fee within 2 months after the withdrawal or refusal of your application. At the same time, the omission which constituted the failure to comply with the time limit should be made good. Otherwise the request for reinstatement is not deemed to be filed. The reinstatement relief is however not available to rectify certain failures, such as a failure to pay the prescribed filing or advertisement fee(s) within the prescribed period and a failure to pay the prescribed fee for the substantive examination. Please refer to section 14.32(b) of the Patents Examination Guidelines about the circumstances in which the reinstatement relief is not available.

In some cases, you may, for the purpose of restoring the rights in your application that have been lost, apply to the Registrar for restoration of rights by satisfying the Registrar that the failure to comply with the time limit occurred in spite of you having taken all reasonable care required by the circumstances. Your application for restoration must be made by filing Form P13 with payment of the official fee within 1 year after the expiry of the relevant time limit or 2 months after the removal of the cause of non-compliance, whichever is the earlier.

The restoration relief is not available to rectify the following—

1. a failure to claim or restore a priority right within the prescribed time limits;
2. a failure to file or withdraw a missing description or drawing and/or the relevant documents within the prescribed time limits;
3. a failure to file divisional applications within the prescribed time limits; and
4. a failure to amend or withdraw a patent application within the prescribed time limits.

Please refer to sections 14.35(f), (g), (h) and (i) of the Patents Examination Guidelines about the other circumstances in which the restoration relief is not available.

The proprietor of a standard patent (O) may, at any time after grant, apply to either the Registrar or the Court of First Instance for amending the specification of the patent.

Where a patent proprietor opts to file an application for amendment with the Registrar, the application should be filed in Form OP7 and accompanied by—

• a copy of the specification containing clear mark-ups indicating the proposed amendment;
• evidence establishing the circumstances underlying the amendments; and
• payment of the official fee.

The Registrar may either accept the requested amendment in whole or in part as an allowable amendment or refuse the requested amendment. Any allowable amendment will be published by the Registrar and the fact of such publication will also be advertised in the Hong Kong Intellectual Property Journal, which is subject to opposition by others.

Any person (“opponent”) who intends to oppose an allowable amendment to a standard patent (O) may file an opposition notice in Form P2 to be accompanied by—

• a statement setting out the facts on which the opponent relies and the relief sought; and
• payment of the official fee.

The opposition notice must be filed within 1 month after the date on which the fact of publication of the allowable amendment is advertised in the Hong Kong Intellectual Property Journal. This time limit is extendible for 1 month by filing Form SP3 with payment of an official fee before the expiry of the initial time limit.

You may file with the Registrar a written notice setting out your observation on the patentability of the invention underlying the standard patent (O) application and also the grounds on which your observation is based after publication of the application.

Upon receipt of your notice, the Registrar will, as soon as practicable, send a copy of your notice to the patent applicant, and will consider your observation when conducting substantive examination of the patent application.  However, the Registrar will not consider your observation if it is filed after the grant, final refusal or deemed withdrawal of the patent application in question.

By merely filing your observation, you do not automatically become a party to any proceedings in relation to the standard patent (O) application.

Here are certain key time limits for addressing office actions concerning standard patent (O) applications—