FAQ > Patents > Amendments to the Patents (General) Rules (7 May 2004)

Amendments to the Patents (General) Rules (7 May 2004)

General

• What is the background of the amendments to the Patents (General) Rules?
  
  
• Where can I view the proposed amendments?
  
  
• When will the amendments come into operation?
  
  
• Are fees reduced under the amendments?
  
  

What you need to know for the amended rules

• If I act for an applicant as an agent, what are the new requirements for me under the amended rules?
  
  
• Do I have to file a certified translation of the document if a document is not in one of the official languages?
  
  

For standard patent applications

• When I file a request to record a designated patent application, do I need to file two copies of the designated patent application?
  
  
• When I file a request for registration and grant, do I need to file a verified copy of the designated patent specification issued by the designated patent office and a copy of the specification in loose leaf form?
  
  
• I have filed a request for registration and grant before 7 May 2004 but have not yet filed the verified copy of the designated patent specification issued by the designated patent office. Do I still have to file the verified copy after the commencement of the amended rules?
  
  
• Do I need to file a certified copy of the document supporting a statement of derivation of entitlement to apply under section 9 of the Patents (General) Rules?
  
  
• Do I need to file amendment of standard patent following prescribed opposition or revocation proceedings in the designated patent office within 3 months from the date of the amendment in the designated patent office or the date of grant of the HK standard patent, whichever is the later?
  
  

For short-term patent applications

• When I file a short-term patent application, do I need to provide the designation of the classification (International Patent Classification code) of the invention in the application form?
  
  
• Do I need to file any additional copies of statement of inventorship (i.e. Patents Form P6A)?
  
  
• Do I need to file an original certificate and a verified copy of the previous application for claiming priority under section 69 of the Patents (General) Rules?
  

General

• What is the background of the amendments to the Patents (General) Rules?
  
  The Government proposed legislative amendments to the Rules to facilitate electronic service delivery for patent registrations and simplify certain existing procedures. The provisions in the Intellectual Property (Miscellaneous Amendments) Ordinance 2001 concerning the use of electronic means for publishing notifications and advertisements of patent applications and patents (sections 2(d), 12, 14, part of 19) are also brought into force when the amendments come into force.

• Where can I view the proposed amendments?
  
  The Patents (General) (Amendment) Rules 2004 was gazetted on 12 March 2004. The full text of the Amendment Rules can be found at http://www.gld.gov.hk/cgi-bin/gld/egazette/index.cgi?lang=e

• When will the amendments come into operation?
  
  The amendments take effect from 7 May 2004.

• Are fees reduced under the amendments?
  
  Yes, fees are reduced substantially. The patent fees are reduced by 73% in general. For details, please refer to the Patents Forms and Fee for the new Patents Forms.

What you need to know for the amended rules?

• If I act for an applicant as an agent, what are the new requirements for me under the amended rules?
  
  You must provide an address in Hong Kong, China where you reside or carry on your business activities. Otherwise the Registrar is unable to recognize you as an agent.
  

• Do I have to file a certified translation of the document if a document is not in one of the official languages?
  
  No. You may file a copy of the translation of the document if the translation states the name of the translator and his official capacity, if any.
  

• When I file a request to record a designated patent application, do I need to file two copies of the designated patent application?
  
  No. You only need to file one copy of the designated patent application.
  

• When I file a request for registration and grant, do I need to file a verified copy of the designated patent specification issued by the designated patent office and a copy of the specification in loose leaf form?
  
  No. You only need to file a copy of the designated patent specification. But you need to confirm that it is a true copy of the document issued by or kept at the relevant designated patent office.
  

• I have filed a request for registration and grant before 7 May 2004 but have not yet filed the verified copy of the designated patent specification issued by the designated patent office. Do I still have to file the verified copy to correct this deficiency after the commencement of the amended rules?
  
  No. You only need to provide us with a copy of the designated patent specification (if you still have not done so). But you need to confirm in writing that it is a true copy of the document issued by or kept at the relevant designated patent office.
  

• Do I need to file a certified copy of the document supporting a statement of derivation of entitlement to apply under section 9 of the Patents (General) Rules?
  
  No. You only need to file a copy of such supporting document.
  

• Do I need to file amendment of standard patent following prescribed opposition or revocation proceedings in the designated patent office within 3 months from the date of the amendment in the designated patent office or the date of grant of the HK standard patent, whichever is the later?
  
  No. The time limit has been changed from 3 months to 6 months for filing an application for amendment of standard patent following prescribed opposition or revocation proceedings in the designated patent office.

• When I file a short-term patent application, do I need to provide the designation of the classification (International Patent Classification code) of the invention in the application form?
  
  No. You are not required to do so. We will adopt the classification code appearing in your submitted search report.
  

• Do I need to file any additional copies of statement of inventorship (i.e. Patents Form P6A)?
  
  No. You are not required to do so.

• Do I need to file an original certificate and a verified copy of the previous application for claiming priority under section 69 of the Patents (General) Rules?
  
  No. You only need to file a copy of the certificate together with a copy of the previous application for claiming priority.