The grant of a standard patent (R) in Hong Kong is based on the registration of a patent granted by one of the following three designated patent offices:

• the CNIPA
• the EPO (in respect of a patent designating the United Kingdom)
• the UKIPO

A standard patent (R) application in Hong Kong is made in two stages by filing:

• Form P4: a request to record the designated patent application, that is a patent application published by the CNIPA, EPO (designating the United Kingdom) or UKIPO
• Form P5: a request for registration and grant of a standard patent (R) based on a patent granted by the CNIPA, EPO (designating the United Kingdom) or UKIPO

Yes, a photocopy of the published designated patent application is sufficient. You do not need a certified copy.

When your patent application in Hong Kong proceeds to the request for registration and grant stage, you will need to file a copy of the published specification of the designated patent and confirm that it is a true copy of the document issued by or kept at the relevant designated patent office.

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

In order to keep a standard patent (R) 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 designated patent application following the date of grant of a standard patent (R). 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.

If you have made an international application under the Patent Co-operation Treaty, designating China, and seeking protection for a patent, and the application has entered its national phase in China and has been published by the CNIPA, you can apply for a standard patent (R) in Hong Kong based on the Mainland application. You will need to comply with the two-stage application procedure in the PO.

You should file a request to record at any time within six months after the following dates:

• For an international application designating the CNIPA:
  • if the international application was published by the International Bureau of the World Intellectual Property Organization in Chinese, the date of the issuance of the official notification by the CNIPA stating that the international application has entered the national phase in the CNIPA;
  • if the international application was published by the International Bureau of the World Intellectual Property Organization in a language other than Chinese, the date of publication by the CNIPA in its Patent Gazette of the relevant bibliographical data showing that the international application has entered the national phase in the CNIPA.

• For an international application designating the EPO (in respect of patents granted under the European Patent Convention designating the United Kingdom):

  the date of publication by the EPO in its Bulletin of the relevant bibliographical data showing that the international application has entered the national phase in the EPO.

• For an international application designating the UKIPO:

  the date of publication by the UKIPO in its Official Journal (Patents) of the relevant bibliographical data showing that the international application has entered the national phase in the UKIPO.

Either the "A1" date (application published with search report) or the "A2" date (application published without search report) is the date of publication of an application in the EPO for the purposes of section 15(1) of the PO. The "A3" date is the date of publication of the separate search report, not the application itself. The "A3" date is not relevant for the purposes of section 15(1).

Yes, a copy of the published specification of the designated patent is sufficient for the purposes of section 23(3)(a) of the PO if the person filing it confirms that it is a true copy of the document issued by or kept at the EPO.

You can file requests to record both designated patent applications. However, where one or both of these applications proceed to grant, the court can revoke such patent(s) under sections 91(1)(f) and (4) of the PO if:

• the relevant standard patent (R) application is filed before 19 December 2019 and the resulting patent as granted is one of two standard patents (R) for the same invention and the applications were filed by the same person and have the same deemed date of filing; or
• the relevant standard patent (R) application is filed on or after 19 December 2019 and the resulting patent as granted is one of two patents that are granted for the same invention made by the same inventor and have the same material date.

Hong Kong patents are not affected by post-grant actions relating to the designated patent on which the standard patent (R) is based.

But there is an exception. Because patent grant in the EPO is conditional upon there being no opposition within certain fixed time periods, grant of a standard patent (R) in Hong Kong based on a European patent (UK) is also subject to this condition. This means that if a patent grant in Europe is revoked as a result of opposition in the EPO, a standard patent (R) based on the revoked patent can also be revoked, on application to the Registrar.

In most cases, post-grant amendments to the Hong Kong standard patent (R) can only be made by applying to the court. But if amendments arise as a result of opposition in the EPO, amendments may be made to the corresponding standard patent (R) by applying to the Registrar within a period of 6 months beginning from the later of the following dates: the date of the amendment in the EPO or the date of grant of the standard patent (R).

We wish to draw users' attention to the following non-extendible time limits: