Patent (Hong Kong, China & Other countries/districts)
- Hong Kong Standard Patent Application
1. Stage 1: Request to record.
2. Stage 2: request for registration and grant.
- Hong Kong Short-term Patent Application
1. Drafting a Chinese specifications.
2. Application and grant of patent based on a Chinese specifications.
- China Invention Patent Application
- China Utility Model Application
For enquiries relating to patent registration in other countries, This email address is being protected from spambots. You need JavaScript enabled to view it..
INFORMATION & REQUIREMENTS FOR HK PATENT APPLICATION
What are patents
With the registration of Patents, the patent owner is given a legal right to prevent others from manufacturing, using, selling or importing the patented invention of the patent owner.
Standard and short-term patents
There are two types of patent in the HK
1. Standard; and
2. Short-term
Validity of standard patent: a maximum of 20 years
Protection under standard patents is renewable annually after the end of the third year.
Validity of short-term patent: a maximum of 8 years
Protection under short-term patents is renewable after four years from filing.
(I) Applying for a standard patent
The grant of a standard patent in Hong Kong is based on the registration of a patent granted by one of three patent offices, called 'designated patent offices'
1. the State Intellectual Property Office, People's Republic of China (“SIPO”);
2. the European Patent Office, in respect of a patent designating the United Kingdom; and
3. the United Kingdom Patent Office.
A standard patent application in Hong Kong is made in two stages by filing
1. a request to record the designated patent application, that is the SIPO, EP(UK) or UK published patent application (stage 1)
2. a request for registration and grant in Hong Kong, of the SIPO, EP(UK) or UK granted patent (stage 2).
Standard patent application - first stage - when should Applicant file
Applicant needs to file a request to record in Hong Kong within six months after the publication of the designated patent application in the designated patent office.
Standard patent application - first stage - documents and information
Applicant needs to file
1. a request to record in a specified Form;
2. a copy of the published designated patent application;
3. the title of the invention in both English and Chinese;
4. an abstract in both English and Chinese;
5. applicant's name and address;
6. if Applicant is not the applicant named in the designated patent application, a statement explaining Applicant’s right to apply and supporting documents (for example a copy of an assignment);
7. if the inventor is not named in the designated patent application, a statement identifying the person Applicant believes is the inventor;
8. If Applicant claimed priority, Applicant needs to state the name of the country or territory where the priority application was filed, the priority application number and the priority application filing date;
9. If Applicant claimed non-prejudicial disclosure, Applicant needs to state the name and place of the prescribed exhibition or meeting at which the invention was disclosed, the opening date of the exhibition or meeting, and the date of first disclosure;
10. an address for service in Hong Kong;
11. translations of information and documents as required.
Standard patent application - first stage - examination and publication
If a filing date to record is given, the Patent Registry will examine Applicant’s request and give him notice to correct any deficiencies within two months. If there is no deficiency or the deficiencies are corrected, the Patent Registry will publish Applicant’s request to record and advertise it in the Hong Kong Intellectual Property Journal.
Maintaining a standard patent application
Applicant may need to maintain his standard patent application by filing a specified Form and paying the maintenance fee. If Applicant cannot proceed to the second stage (request for registration and grant) five years after publication of his request to record, Applicant will need to maintain his application. Failure to do so will result in Applicant’s patent application being deemed withdrawn.
Standard patent application - second stage - when should Applicant file
Applicant needs to file a request for registration and grant in Hong Kong at the latest within six months after publication of the request to record in Hong Kong, or the grant of the designated patent by the designated patent office.
Standard patent application - second stage - documents and information
Applicant needs to file
1. a request for registration and grant in a specified Form ;
2. a copy of the published specification of the designated patent (Applicant needs to confirm that it is a true copy of the document issued by or kept at the relevant designated patent office);
3. the title of invention in both English and Chinese;
4. if Applicant is not the applicant named in the standard patent application, a statement explaining his right to apply and supporting documents which establish his right (for example a copy of an assignment);
5. an address for service in Hong Kong;
6. translations of information and documents as required.
Standard patent application - second stage - examination and grant
If requirements for registration have been complied with by Applicant, a filing date will be granted by Patent Registry which will examine Applicant’s request and give him notice to correct deficiencies, if any, within two months. If there is no deficiency or the deficiencies are corrected, Patent Registry will register the designated patent and grant a standard patent for the invention. Patent Registry will publish details of the granted patent and advertise the grant in the Hong Kong Intellectual Property Journal.
(II) Applying for a short-term patent
The grant of a short-term patent in Hong Kong is based on a search report from an international searching authority or one of three designated patent offices.
A short-term patent application in Hong Kong is made by filing a request for grant supported by the requisite documents and information.
Short-term patent application - when should Applicant file
In general, there is no time limit for filing a short-term patent application in Hong Kong. However, if Applicant wishes to claim priority from a first application in a Paris Convention country or World Trade Organization member territory, he should file his short-term patent application in Hong Kong within 12 months of filing the first application.
If Applicant’s invention has been disclosed and he claims that the disclosure does not prejudice his invention's novelty (section 109, Patents Ordinance), he should file his short-term patent application within 6 months of the disclosure.
Short-term patent application - documents and information
Applicant needs to file
1. a request for grant in a specified Form;
2. a specification (section 113(1)(b), Patents Ordinance and sections 58(2), 59, 60 and 64, Patents (General) Rules);
3. an abstract in both English and Chinese (section 61, Patents (General) Rules);
4. the title of invention in both English and Chinese;
5. applicant's name and address;
6. inventor's name and address;
7. a search report;
8. if Applicant is not the inventor, a statement in a specified Form indicating his entitlement to the short-term patent;
9. if priority is claimed, a statement of priority and priority documents (section 69, Patents (General) Rules);
10. if non-prejudicial disclosure is claimed, a statement and written evidence to support the claim (sections 58 and 70, Patents (General) Rules);
11. an address for service in Hong Kong;
12. translations of information and documents as required.
Short-term patent application - search report
To support an application for a short-term patent, Applicant needs to file a search report from one of the following searching authorities
1. an international searching authority under Article 16, Patent Co-operation Treaty;
2. the SIOP;
3. the European Patent Office;
4. the United Kingdom Patent Office.
Short-term patent - deferred grant
Applicant can ask the registry to defer the grant of his short-term patent. Deferring grant will give Applicant more time to obtain a search report from a prescribed searching authority. Grant can be deferred for a maximum of twelve months after the filing date of the short-term patent application.
Short-term patent application - examination and grant
If a filing date of the application is given, Patent Registry will examine Applicant’s application and give him notice to correct any deficiencies within two months. If there is no deficiency or the deficiencies are corrected, Patent Registry will grant a short-term patent for the invention. Patent Registry will also publish details of the granted patent and advertise the grant in the Hong Kong Intellectual Property Journal.
International application under the Patent Cooperation Treaty (PCT)
If Applicant makes an international application designating China, he can also seek standard or short-term patent protection in the HKSAR. Applicant can file the international application either with the SIPO or the International Bureau. After the international application has entered its national phase in China, Applicant can file an application for a standard or short-term patent in Hong Kong.
If Applicant’s international application is to protect a utility model, he can nevertheless apply for short-term patent protection in Hong Kong. In Hong Kong, the criteria for novelty and inventive step are the same for both a standard and a short-term patent.
International application designating China - when should Applicant file a standard patent application
If the international application designating China has been published by the International Bureau in Chinese, Applicant needs to file a request to record in Hong Kong within six months after the SIPO issues a national application notification.
If the international application designating China has been published by the International Bureau in a language other than Chinese, Applicant needs to file a request to record in Hong Kong within six months after the date of publication of the international application by the SIPO.
International application designating China - when should Applicant file a short-term patent application
Applicant cannot file a short-term patent application until the international application has entered its national phase in China. Applicant needs to file his short-term patent application within six months after the international application has entered its national phase in China, or within six months after the SIPO issues a national application notification.
International application designating China - documents and information for a standard patent application
In addition to the documents and information listed above, Applicant needs to file
1. a copy of the international application as published by the International Bureau;
2. a copy of any translation of the international application published by the SIPO;
3. a copy of any publication of information in the SIPO concerning the international application;
4. a copy of the national application notification, if the international application has been published by the International Bureau in Chinese.
International application designating China - documents and information for a short-term patent application
In addition to the documents and information listed above, Applicant needs to file
1. a copy of the international application as published by the International Bureau;
2. a copy of the international search report (whether contained in the international application as published or separately published);
3. the date of entry of the international application into the national phase in China;
4. a copy of the translation of the international application (if any) published by the SIPO;
5. a copy of any information published by the SIPO concerning the international application;
6. if the short-term patent application is made within six months after the SIPO issues the national application notification, a copy of the national application notification and the
date of issue of the notification.