Patents protect inventions, being products, substances, or processes which are new and inventive. A patent for an invention gives the patent owner the right to exclude others from using the invention within a particular jurisdiction for a limited period.
There are two types of patents in the Hong Kong Special Administrative Region (the Hong Kong SAR):
- standard patent and
- short-term patent
If you opt for a longer patent protection term of up to 20 years for your invention, you may apply for a standard patent by filing your application either via:
- the "original grant patent" route directly in the Hong Kong SAR for a standard patent ("standard patent (O)"); or
- the "re-registration" route for a standard patent ("standard patent (R)") on the basis of a corresponding patent application for the same invention previously filed with a designated patent office outside the Hong Kong SAR.
Alternatively, you may choose to seek a short-term patent having a relatively shorter protection term of up to 8 years.
Original Grant Patent System (Video)
| Standard patent | Short-term patent | ||
|---|---|---|---|
| Standard patent (O) | Standard patent (R) | ||
| Protection target | Inventions with longer exploitation / commercialisation terms | Simple inventions with shorter exploitation / commercialisation terms | |
| Maximum protection term (subject to payment of renewal fees) | 20 years | 8 years | |
| General patentability requirement | Inventions that are new, involve an inventive step and are industrially applicable | ||
| Limitation of number of claims per patent application | Unlimited | Not more than 2 independent claims | |
| Pre-application requirement | Nil | Filing a corresponding patent application for the same invention with a designated patent office outside the Hong Kong SAR | Nil |
| Formality examination of documents filed in support of applications | Mandatory for patent grant | ||
| Substantive examination of patentability of inventions for which patents are applied | Mandatory for patent grant |
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Standard patent (O)
A standard patent (O) application can be filed directly in the Hong Kong Special Administrative Region (the Hong Kong SAR), and is subject to both formality and substantive examinations by the Registrar of Patents. The latter type of examination requires the Registrar of Patents to determine whether the claimed invention satisfies the patentability requirements, e.g. whether such invention is new, involves an inventive step and is industrially applicable.
By offering a direct filing route for seeking standard patent protection of a maximum term of 20 years, the original grant patent system serves to provide a convenient route to acquire standard patent protection for inventions in the Hong Kong SAR. 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 —
- complex in nature; and
- anticipated to have a longer exploitation/commercialization term in the Hong Kong market.
Standard patent (R)
The grant of a standard patent (R) in the Hong Kong Special Administrative Region is based on the registration of a patent granted by one of the following three designated patent offices:
- the China National Intellectual Property Administration
- the European Patent Office (in respect of patent applications designating the United Kingdom)
- the United Kingdom Intellectual Property Office.
As a pre-requisite to applying for a standard patent (R) under the re-registration system, the applicant is required to file an earlier corresponding patent application with any one of the three designated patent offices.
A standard patent (R) application is only subject to formality examination by the Registrar of Patents as to whether the necessary information and documents in support of the application have been filed in compliance with the statutory requirements.
Short-term patent
The grant of a short-term patent in the Hong Kong Special Administrative Region is based on a search report from one of the following searching authorities:
- an international searching authority appointed under Article 16 of the Patent Cooperation Treaty;
- the China National Intellectual Property Administration;
- the European Patent Office;
- the United Kingdom Intellectual Property Office.
Upon receiving an application for a short-term patent, the Patents Registry will examine the formalities of the application. Formality examination refers to an examination of the information required in the application form and the supporting documents. There is no substantive examination of the application, which means that the Patents Registry does not assess the patentability of the invention, that is, whether the invention is novel, involves an inventive step and is susceptible of industrial application.
An invention which is new, involves an inventive step and is industrially applicable is patentable in the Hong Kong Special Administrative Region as long as it is not an excluded subject-matter or activity. Examples of excluded subject-matters are discoveries, scientific theories and surgical methods for treatment of the human body. For details, please see Section 4 of Patents Examination Guidelines.
Generally speaking, the inventor or the owner of an invention is entitled to apply for grant of a patent for the invention. You may acquire ownership of an invention by commissioning its creation in accordance with an agreement, employing someone under a contract to create the invention, or by an assignment of the ownership of the invention etc.
If you apply for a standard patent (R) in the Hong Kong Special Administrative Region but you are not the applicant named in the designated patent application, you will need to file a statement and supporting documents (for example, a copy of an assignment) explaining your right to apply.