Search
  • Simon Wong

Renewal/Maintenance of Hong Kong Patent

Updated: Jun 8

Hong Kong’s patent system is very unique. Because Hong Kong was a colony of the United Kingdom before, Hong Kong’s standard patent system (re-registration) can use patent documents from China, the United Kingdom, and the European Patent Office. Re-examine to obtain a Hong Kong patent.


Having said that, because of this special system, Hong Kong has become one of the most special patent systems in the world, and Hong Kong's calculation of patent renewal fees is relatively complicated. In view of this, the author briefly elaborates on the calculation method of the renewal fees of various patents in Hong Kong.


In order to make it easier for people to calculate the renewal or maintenance fee, we can use our free patent expiration computer to calculate the date when the next issue needs to be renewed. https://www.patentanddesignltd.com/


Of course, if you can, you only need to leave the application number, and we are happy to calculate the expiration date and the costs related to the quotation in real time. We are now also renewing patents for world-renowned sports brands, medical care, vaccines, and telecommunications.



Hong Kong's patents are divided into re-registered standard patent (R), original grant patent (O) and short-term patent (S), while standard patent (R) and the original patent (O) are also a standard patent with a protection period of 20 years, similar to the invention patents in various countries. The protection period of short-term patents is 8 years, similar to utility model patents in various countries.





The maintenance fee for Hong Kong patents is also $270 (~US$35) for each year, and the renewal fee (4-10 years) is $450 (~US$58). The renewal fee (4-10 years) is $450 (~US$58). The renewal fee (11-15 years) is $620 (~US$80). The renewal fee (16-20 years) is $850 (~US$110). The short-term patent renewal period is only one-time (5-8 years), $1,080 (~US$140).


The re-registration of standard patent in Hong Kong will be divided into under examination or the patents that have been granted. As the Hong Kong standard patents in the re-registration system require 2-stage applications, 1) request for application 2) request for grant and registration, applicants It is necessary to rely on the originally designated patent office to grant patents before it can be granted and registered in Hong Kong. However, before the patent is granted in Hong Kong, Hong Kong patents are required to submit maintenance fees.

The Hong Kong patent system can be viewed in the previous blog: https://www.patentanddesignltd.com/hong-kong-patent-process



How to calculate the maintenance fee for re-registered standard patent (R)?


Applicants need to file an application in Patent Form P9 and pay a maintenance fee to maintain the standard patent application for transcription. If your application fails to enter Stage 2 (i.e. registration and grant request, see below for details), you can specify the date of the first anniversary of the filing date of the patent application after the publication date of the request to record The application shall be maintained until the expiry of the fifth year or any subsequent year.


The complexity of calculating Hong Kong patent maintenance fees is divided into two paths: the designated patent and Hong Kong patent. This will lead to many application days, publication days, etc.


Tips: We only need to pay attention to the designated patent application and the publication date of the Hong Kong patent.

See the figure below (linear graph) to take the case we have done as an example for illustration.


example

Above: UK Designated Patent

Filing date: 2009-4-10

Below: Hong Kong standard patent

Publication date: 2011-7-22

_____________________________________________

Step 1: To determine the 1st anniversary, the year of after publication is 2011+1 = 2012

Step 2: In the first 5th anniversary, the Hong Kong Intellectual Property Department does not charge any fees, and the maintenance fee is required to be submitted at the end of the 5th year or any subsequent year. In the first year that the payment is required, that is, 2012+5 = 2017.

The month and day required to pay the fee is based on the designated patent application (2009-4-10), that is, 2017-4-10 is the maintenance fee that needs to be submitted for the first time.


Tips: We must know the publication date of the Hong Kong patent before we can calculate the next renewal date.

And we have a client who asked us when the next maintenance fee for this case was when they requested the record (Stage 1) application?


However, since Stage 1 has not yet been published in Hong Kong, it is impossible to determine the next maintenance fee.



How to calculate the renewal fee for re-registered standard patent (R)?

The application must be filed in Patent Form P10. The first renewal fee shall be paid for the patent on the fourth patent application anniversary after the grant date, and subsequent renewal fees will expire on each subsequent patent application anniversary until the expiry of the 20-year patent protection period.




example

UK Designated Patent

Filing date: 2011-7-7

_______________________

Hong Kong standard patent

Grant date: 2013-5-12

__________________________________

Step 1: To determine the 1st anniversary, the year of after grant date is 2013+1 = 2014

Step 2: During the first 3 years, the Hong Kong Intellectual Property Department will not charge any fees. The first renewal fee will be paid on the fourth patent application anniversary after the grant date. In the first year that the payment is required, that is, 2014+3 = 2017.

As with the maintenance fee, the month and day of the payment are based on the patent of the designated patent application (2011-7-7), that is, 2017-7-7 is the maintenance fee to be submitted for the first time.


How to calculate the renewal fee for original grant standard patent (O)?

As for the calculation method of the original granted patent, if the patents of various countries are similar, it starts from the filing date, and the renewal fee needs to be submitted every year. The first renewal fee shall be paid on the fourth anniversary of the patent application after the grant date. Subsequent renewal fees will expire on each subsequent patent application anniversary date until the expiration of the 20-year patent protection period.



The calculation of the renewal period is the same as mentioned above (renewal fee).

Step 1: To determine the 1st anniversary, the year of after grant date is 2021+1 = 2022

Step 2: During the first 3 years, the Hong Kong Intellectual Property Department will not charge any fees. The first renewal fee will be paid on the fourth patent application anniversary after the grant date. In the first year that the payment is required, that is, 2022+3 = 2025.

The month and day of the payment is based on the patent application of the Hong Kong patent application (2020-4-7), that is, 2025-4-7 is the maintenance fee to be submitted for the first time.


Check out https://www.patentanddesignltd.com/hong-kong-patent-renewal

You can view the official fees for each year.


How to calculate the anniversary years of the renewal?

For granted re-registered standard patent (R)

The calculation of the renewal are different in different countries, the renewal year is also different. And Hong Kong's re-registered patent and the original granted patent have different calculation methods.


For example, for the Hong Kong re-registration standard patent, as mentioned above, it has the designated patent and Hong Kong standard patent, which has these two paths. When calculating the period, you can refer to some real examples. There will also be priority date or PCT international filing date, or PCT publication date, etc., which is more likely to disturb us.


Therefore, as always, we teach you that you can ignore these dates and just pay attention to the year of the filing date of designated patent (DP).


Example

UK Designated Patent

Filing date: 2004-9-28

_______________________

Finland

Priority date: 2003-10-3

_______________________

International Patent Application

Filing date: 2004-9-28

_______________________

Hong Kong standard patent

Grant date: 2009-4-17

Step 1: To determine the designated patent is 2004

Step 2: You can subtract the year of the designated patent +1 from the year you need to pay (for example, this year, 2021), which is the year you need to pay next year.

i.e. 2021-2004 + 1 = 18

Therefore, the applicant needs to pay the fee of 18th anniversary. The official fee of

renewal fee (16-20th year) is $850 (~US$110).


Check out https://www.patentanddesignltd.com/hong-kong-patent-renewal

You can view the official fees for each year.


For re-registered standard patent (R) – under examination

A maintenance fee is required for a patent which is under examination, and the official fee for the maintenance fee is HK$270 (~US$35), regardless of the patent year that is still under examination, this rules also charges the maintenance fee at the same price.


For original grant standard patent (O)

The calculation of this period is similar to the invention patents in general countries, and it also starts with the year of the filing date. Similarly, you don't need to pay attention to any priority date as the calculation period.


Example

Hong Kong standard patent

Filing date: 2020-4-7

Grant date: 2021-6-4

Priority date: 2019-4-10


Step 1: To determine the year of filing date is 2020

Step 2: You can subtract the year of the filing date + 1 from the year you need to pay (for example, 2025), which is the year you need to pay next year.

i.e. 2025-2020 + 1 = 6

Therefore, the applicant needs to pay the fee of 6thanniversary. The official fee of

renewal fee (4-10th year) is $450 (~US$58).


Tips: Regardless of the calculation, re-registered or original grant standard patent, we do not need to care about the international filing date or priority date.

For the Re-registered standard patent We need to pay attention to the year of the designed patent.

As for the original grant standard patent, we need to pay attention to the Hong Kong application date and year. Look back at the annual fee for the corresponding year in Hong Kong to see what you need to pay next time.


Of course, the best thing is to leave us an application number or registration number, and we will reply you on the same day.



Time frame for paying the renewal fee


The patent fee can be renewed 3 months before the expiration or half a year later. That is, the Hong Kong Intellectual Property Department can submit the renewal fee at the earliest 3 months in advance, and at the latest 6 months later (with fines).



Tips:

If the fee has not been submitted within 6 months from the due date. This patent will be banned (ceased), and the applicant can still submit P12 within 18 months from the expiry date to request the restoration of the patent. The P12 form needs to explain the reason for the delay and submit evidence, and the evidence needs to be statutory declaration or affidavit, and then the examiner decides whether to approve the restoration or not.


Short-term patent


Since the protection period of short-term patents is only 8 years. However, there is no need to submit renewal fees for the first 4 years, and the operation of short-term patents is quite easy. You only need to submit a renewal fee for 5-8 years. However, there is no need to pay for the first 1-4 years. It is easy to ignore the patent for several years and forget to pay the fee.


Tips:

If the applicant is applying in Hong Kong, the Hong Kong Intellectual Property Department will issue a renewal reminder to the service address in Hong Kong. And we can provide clients with free renewal reminder service.


admin@patentanddesignltd.com or WhatsApp/ Wechat: 852 6149 6293

9 views0 comments