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  • Simon Wong

Filing a Hong Kong Patent (standard patent or short-term)

Updated: Aug 26


In Hong Kong, we have a relatively complicated patent system. The registration of the Hong Kong invention patent could be divided into two routes, namely 1) Re-registered standard patent (traditional method) and 2) Original grant standard patent (newly launched in December 2019). The applicant could choose one of the below options, further, I would point out the advantages and the characteristics of both routes to give a full picture of whether choosing a Re-registered standard patent (traditional method) or Original grant standard patent (newly launched in December 2019) is better for the applicant.



In general, a Re-registered standard patent is required to follow the parent-designated patent in PRC, UK, or EPO. The applicant is required to file the published designated patent and the granted designated patent. The examination duration follows the parent-designated patent and the claims are also the same as the designated patent. On the other hand, the original grant standard patent is directly handled by the Hong Kong Intellectual Property Department and is examined by the local officer. The examination time takes about 2-5 years while the claims could be independent of the designated patent.



The process of the Re-registered standard patent (traditional method) and Original grant standard patent (newly launched in December 2019):-


1) Re-registered standard patent (traditional method)

In general, the applicant is required to file (i) Stage 1 and (ii) Stage 2 to fulfill the whole standard patent registration. The publication of one of the PRC, UK, or EPO parent patents should be filed in Hong Kong within 6 months after its publication date while one of the PRC, UK, or EPO parent patents should also be filed within 6 months after the grant date.


The deadline is very crucial, therefore, if the parent-designated patent is handled by another intellectual property agent firm, the applicant is required to inform this agent firm or remember this deadline. If the deadline has been passed, it could not enter Hong Kong again and the deadline is non-extensible.

The total official fee is HK$686.


Our professional service for our client:-

a. we shall timely remind the deadline to request for the record.

b. communication to the overseas firm and timely monitor the status of the parent designated patent to avoid the passed the deadline for Hong Kong application


Tips: Our past experience is to keep in mind the two 6-months deadlines. Our client has lost the deadline for application. The Hong Kong standard patent is very different from the overseas patent.


Stage 1 - Request to record (within 6 months after the publication of the designated patent) & publication

To begin with, the applicant is required to apply a P4 form to request a record for the Hong Kong standard patent application. If the application fulfills the general requirements, the Registrar will issue the filing date and filing number to the applicant.


Information required:

-P4 (Hong Kong standard patent form)

-Information of the applicant and the inventor

-Information of the published designated patent

- Chinese and English of the abstract

Our professional service for our client:-

Normally, it is not difficult to meet the requirements and we could get help for the submission to get the application number. Patent and Design Limited could receive your instruction and file the application number within hours.

If the above requirements are met, the patent specification will be published in the Hong Kong Intellectual Property Department Journal.

No further action is required for this stage until the designated patent has been granted.


The below shown as an example for a reference:-


Stage 2 - Request for registration and grant (within 6 months after the grant of the designated patent or publication of the request to record in Hong Kong, whichever is later.)

The applicant is required to file the Stage 2 application (P5 form) within 6 months after the grant of the designated patent and this timeline is very crucial. A lot of companies forgot this time limit because the parent-designated patent has been examined for several years. If the designated patent is handled by overseas firms, the applicant needs to remind this firm of this deadline. The Hong Kong standard patent could not be filed if the deadline has been passed.


Information required:-

-P5 form (Hong Kong standard patent)

-Granted designated patent

-Chinese and English of the invention title

Stage 2- Examination

Upon the submission of the designated patent and the application number, the Registrar will issue a filing date.

Stage 2 - Grant and publication

Finally, the patent application comes to the grant and publication stage. If the above requirements are met, the patent specification will be published in the Hong Kong Intellectual Property Department Journal. The applicant will receive the certificate of Hong Kong standard patent shortly afterward.


Tips:

Our past experience takes about 1 to 2 months to receive a hard copy of the certificate from the Hong Kong Intellectual Property Department.


You could visit our website for the process of Hong Kong Re-registered standard patent: https://www.patentanddesignltd.com/hong-kong-patent-process


The below shown as an example for a reference:-


Stage 2 – Maintenance of a Re-registered standard patent

The applicant is required to pay the maintenance fee to maintain the application in the 5th year from the date of the first anniversary of the filing date of the corresponding designated patent application after the publication date of the record request. This maintenance is also the characteristic of Hong Kong standard, we need to pay this fee before granting of a patent.


Our professional service:-

We shall timely remind our clients to pay the maintenance fee

The calculation of the maintenance fee is relatively complicated because it involves the date of the designated patent and the publication date of the Hong Kong patent

Tips:

You shall use our Hong Kong Patent Calculator for free to calculate the due date of paying the maintenance fee or renewal fee of Hong Kong standard patent

https://www.patentanddesignltd.com/

In addition, you could read our another blog for the detailed explanation of the calculation of the maintenance fee or renewal fee of Hong Kong standard patent.


You could visit our website for the maintenance fee and renewal fee of Hong Kong standard patent: https://www.patentanddesignltd.com/hong-kong-patent-renewal



2) Original grant patent system (newly launched in December 2019)

In June 2021, the first-ever Hong Kong standard patent was granted by the original grant. It is a milestone in the Hong Kong patent system.

This new method could be directly filed in Hong Kong and be examined by the Hong Kong examiner. This patent system is so different from the traditional method. It will get along with the issuance of the filing date, formal examination, publication, and substantive examination. Finally, the Hong Kong Intellectual Property Department (Hong Kong Patent Office) will notice the acceptance or rejection of the application.

For the issuance of a filing receipt, we shall provide the patent specification and file the patent form (OP1) to the Hong Kong Patent Office. Upon the formal examination of the above documents, the officer will issue the filing receipt to the applicant which includes the filing date and the application number of the application.

Information required:

-OP1 form (Hong Kong standard patent)

-Information of the applicant

-Grant of designated patent

-Abstract of English and Chinese version

Original grant patent - Publication

The Hong Kong Patent Office will publish the specification in the Hong Kong Intellectual Property Department Journal. The publication date is the same as a normal patent office, the patent specification will be published 18 months after the filing date of the application or the earliest date of the priority claim. The applicant could also request earlier publication of the patent specification.

Original grant patent - Substantive examination

For the timeline of substantive examination, the applicant should request substantive examination within 3 years after the filing date of the application or the earliest date of the priority claim. This deadline is non-extensible. The application will be deemed as a withdrawal if the applicant does not request the substantive examination on time.

For the examination process, the examiner will examine the novelty, inventiveness, and industrial applicability of the application.


An examination notice - office action (OA) will be issued if the application does not comply with the regulations.

If the Registrar still did not accept the response of the applicant, the Registrar will issue a provisional decision of refusal.

The applicant may file a request to review the provisional decision of refusal

If the Registrar still maintains the rejection, they will issue a review opinion and followed by a further review opinion. Finally, the Registrar will issue a Final Decision to reject the patent application.



Original grant patent - Grant and publication

Finally, the patent application comes to the grant and publication stage. Upon examination, the patent application meets all the examination requirements. The Registrar will grant and publish the patent in the Hong Kong Intellectual Property Department Journal. The applicant will receive the certificate of Hong Kong standard patent shortly afterward.

The total cost is HK$4,413 (Official). The whole process takes about 2-5 years.


You could visit our website for the process of Hong Kong original grant standard patent: https://www.patentanddesignltd.com/hong-kong-patent-process


In other words, you may choose the traditional method if you have also applied for a PRC/UK/EPO patent which is much lower cost, however, the status of the Hong Kong Patent shall be correlated with the status of the designated patent (PRC/UK/EPO). Or you could submit the application directly and examine it in Hong Kong independently at a higher cost.



Short-term patent

Short-term patent - Request for grant

For a short-term patent (namely Utility Model Patent), the applicant is required to submit a P6 to the Registrar for application. The application form includes the name of the applicant and the name of patent specification as well as the patent specification, the Registrar will confirm the filing date of the application. In other words, if we submit the application to the Registrar by the e-filing system, they will immediately provide us the filing date and filing number. If the applicant provides sufficient information to them, the Registrar will confirm the filing date and filing number.

Information required:

-Information of the applicant

-A search report from either

- international searching authority,

- China

- the United Kingdom or

- European Patent Office

(could be submitted to the Hong Kong Intellectual Property Department afterward)


Our professional service:-

To get help to receive and get the filing date in a very efficient manner, especially we could receive our client’s instructions and provide them with the official filing number within hours. However, if there is any deficiency, the applicant has 2 months to correct and respond to the Registrar.

Short-term Patent - Grant and publication

If the requirements of formal examination are met, the application could proceed to grant and publication. The Registrar will grant and publish the patent in the Hong Kong Intellectual Property Department Journal. The applicant will receive the certificate of Hong Kong standard patent shortly afterward.

Tips:

Our past experience takes about 1 month to receive a hard copy of the certificate from the Hong Kong Intellectual Property Department.

The total official fee is HK$613. The whole process of granting a short-term patent is about 4-6 months.

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