How to apply for grant of patents in the Hong Kong SAR?

General introduction

This document provides basic information on how to apply for grant of patents in the Hong Kong Special Administrative Region (the HKSAR). It is intended for persons who wish to seek protection for their inventions and apply for grant of patents in the HKSAR. Please read it carefully before you submit your application.

More information

Website: http://www.ipd.gov.hk

Enquiry: enquiry

Submitting your patent application

Patent applications should be sent to:

Patents Registry
Intellectual Property Department
24/F, Wu Chung House
213 Queen's Road East
Wanchai
Hong Kong

The Patents Registry does not undertake to give legal advice and this document carries no legal authority. The Patents Registry will therefore not accept any responsibility for the consequences of any omissions or inaccuracies in this document.

Contents

What are patents? Standard and short-term patents Applying for a patent Applying for a standard patent Applying for a short-term patent Who can apply? Language Standard patent application - first stage - when should you file? Standard patent application - first stage - documents and information Standard patent application - first stage - filing fee and advertisement fee Standard patent application - first stage - filing date Standard patent application - first stage - examination and publication Maintaining a standard patent application Standard patent application - second stage - when should you file? Standard patent application - second stage - documents and information Standard patent application - second stage - filing fee and advertisement fee Standard patent application - second stage - examination and grant Short-term patent application - when should you file? Short-term patent application - documents and information Short-term patent application - search report Short-term patent application - filing fee and advertisement fee Short-term patent - deferred grant Short-term patent application - filing date Short-term patent application - examination and grant International application under the Patent Cooperation Treaty (PCT) International application designating China - when should you file a standard patent application? International application designating China - when should you file a short-term patent application International application designating China - documents and information for a standard patent application International application designating China - documents and information for a short-term patent application Patent information Business Hours

What are patents?

Patents protect your invention by giving you, the patent owner, a legal right to prevent others from manufacturing, using, selling or importing your patented invention.

Standard and short-term patents

There are two types of patent in the HKSAR

• standard and
• short-term

Protection under standard patents is renewable annually for a maximum term of 20 years. Protection under short-term patents is renewable after four years from filing, for a maximum term of eight years.

Applying for a patent

You need to file an application with the Patents Registry of the Intellectual Property Department. Applying for a patent elsewhere in the world or in other regions of China does not automatically give you protection in Hong Kong, China.

The Registrar of Patents examines your patent application to ensure that it meets the formal requirements for filing. We do not conduct substantive search and examination of the novelty or inventiveness of your invention.

Applying for a standard patent

The grant of a standard patent in Hong Kong, China is based on the registration of a patent granted by one of three patent offices, called 'designated patent offices'

• the State Intellectual Property Office, People's Republic of China
• the European Patent Office, in respect of a patent designating the United Kingdom
• the United Kingdom Patent Office.

A standard patent application in Hong Kong, China is made in two stages by filing

• a request to record the designated patent application, that is the Chinese, EP(UK) or UK published patent application (stage 1)
• a request for registration and grant in Hong Kong, China of the Chinese, EP(UK) or UK granted patent (stage 2).

Applying for a short-term patent

The grant of a short-term patent in Hong Kong, China 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, China is made by filing a request for grant supported by the documents and information listed in subsequent paragraphs below (click here).

Who can apply?

If you are the owner of the invention, you can apply for a patent. If you apply for a standard patent in Hong Kong, China 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 document) explaining your right to apply.

Language

You can file your application in English or in Chinese. Patents application forms are available in either language. If, for example, you make your application in English, we will write to you in English and English will be the language used in any proceedings in the registry relating to your patent application or the resulting patent.

Certain information in your application must be shown in both languages. You will need to give the title of the invention and abstract in both English and Chinese. If the applicant's or inventor's names are not in Roman letters or in Chinese, you will need to give a transliteration of the names in Roman letters.

Standard patent application - first stage - when should you file?

You need to file a request to record in Hong Kong, China within six months after the publication of the designated patent application in the designated patent office.

Standard patent application - first stage - documents and information

You need to file

• a request to record on Patents Form P4;
• a copy of the published designated patent application;
• the title of the invention in both English and Chinese;
• an abstract in both English and Chinese;
• applicant's name and address;
• if you are not the applicant named in the designated patent application, a statement explaining your right to apply and supporting documents (for example a copy of an assignment);
• if the inventor is not named in the designated patent application, a statement identifying the person you believe is the inventor;
• If you claimed priority, you need 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;
• If you claimed non-prejudicial disclosure, you need 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;
• an address for service in Hong Kong, China;
• translations of information and documents as required.

If you appoint an agent, your agent is required to notify the Registrar of the address in Hong Kong, China where he resides or carries on his business activities.

Standard patent application - first stage - filing fee and advertisement fee

You need to pay a filing fee (HK$380) and an advertisement fee (HK$68) within one month of the earliest filing of any part of your request to record.

Standard patent application - first stage - filing date

We will allot a filing date to your request to record when your request states the name of the applicant, refers to the designated patent application and includes the designated patent application number, its publication number and date of publication.

Standard patent application - first stage - examination and publication

If we have given your request to record a filing date, we will examine your request and give you notice to correct any deficiencies within two months. If there is no deficiency or the deficiencies are corrected we will publish your request to record and advertise it in the Hong Kong Intellectual Property Journal (http://www.ipd.gov.hk/eng/ip_journal.htm). You can click here to view the flowchart of the examination process.

Maintaining a standard patent application

You may need to maintain your standard patent application by filing Patents Form P9 and paying the maintenance fee. If you cannot proceed to the second stage (request for registration and grant, below) five years after publication of your request to record, you will need to maintain your application. Failure to maintain your application will mean that your patent application is deemed withdrawn.

Standard patent application - second stage - when should you file?

You need to file a request for registration and grant in Hong Kong, China at the latest within six months after publication of the request to record in Hong Kong, China, or the grant of the designated patent by the designated patent office.

Standard patent application - second stage - documents and information

You need to file

• a request for registration and grant on Patents Form P5;
• a copy of the published specification of the designated patent (you need to confirm that it is a true copy of the document issued by or kept at the relevant designated patent office);
• the title of invention in both English and Chinese;
• if you are not the applicant named in the standard patent application, a statement explaining your right to apply and supporting documents which establish your right (for example a copy of an assignment);
• an address for service in Hong Kong, China;
• translations of information and documents as required.

If you appoint an agent, your agent is required to notify the Registrar of the address in Hong Kong, China where he resides or carries on his business activities.

Standard patent application - second stage - filing fee and advertisement fee

You need to pay a filing fee (HK$ 380) and an advertisement fee (HK$ 68) within one month of the earliest filing of any part of your request for registration and grant.

Standard patent application - second stage - examination and grant

We will allot a filing date to your request for registration and grant when your request identifies the applicant, refers to the designated patent and includes the publication number of the request to record, the publication number of the designated patent and its date of publication.

If we have given your request for registration and grant a filing date, we will examine your request and give you notice to correct any deficiencies within two months. If there is no deficiency or the deficiencies are corrected we will register the designated patent and grant a standard patent for the invention. We will publish details of the granted patent and advertise the grant in the Hong Kong Intellectual Property Journal (http://www.ipd.gov.hk/eng/ip_journal.htm). You can click here to view the flowchart of the examination process.

Short-term patent application - when should you file?

In general, there is no time limit for filing a short-term patent application in Hong Kong, China. But if you wish to claim priority from a first application in a Paris Convention country or World Trade Organization member territory you should file your short-term patent application in Hong Kong, China within 12 months of filing the first application.

If your invention has been disclosed and you claim that the disclosure does not prejudice your invention's novelty (section 109, Patents Ordinance) you should file your short-term patent application within 6 months of the disclosure.

Short-term patent application - documents and information

You need to file

• a request for grant on Patents Form P6;
• a specification (section 113(1)(b), Patents Ordinance and sections 58(2), 59, 60 and 64, Patents (General) Rules);
• an abstract in both English and Chinese (section 61, Patents (General) Rules);
• the title of invention in both English and Chinese;
• applicant's name and address;
• inventor's name and address;
• a search report (see the paragraph below);
• if you are not the inventor, a statement on Patents Form P6A indicating your entitlement to the short-term patent;
• if priority is claimed, a statement of priority and priority documents (section 69, Patents (General) Rules);
• if non-prejudicial disclosure is claimed, a statement and written evidence to support the claim (sections 58 and 70, Patents (General) Rules);
• an address for service in Hong Kong, China;
• translations of information and documents as required.

If you appoint an agent, your agent is required to notify the Registrar of the address in Hong Kong, China where he resides or carries on his business activities.

Short-term patent application - search report

To support an application for a short-term patent you need to file a search report from one of the following searching authorities

• an international searching authority under Article 16, Patent Co-operation Treaty;
• the State Intellectual Property Office, People's Republic of China;
• the European Patent Office;
• the United Kingdom Patent Office.

Short-term patent application - filing fee and advertisement fee

You need to pay a filing fee (HK$ 755) and an advertisement fee (HK$ 68) within one month of the earliest filing of any part of your application.

Short-term patent - deferred grant

You can ask the registry to defer the grant of your short-term patent. Deferring grant will give you 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 - filing date

We will give your short-term patent application a filing date when it states the name of the applicant and describes the invention.

Short-term patent application - examination and grant

If we have given your application a filing date, we will examine your application and give you notice to correct any deficiencies within two months. If there is no deficiency or the deficiencies are corrected we will grant a short-term patent for the invention. We will publish details of the granted patent and advertise the grant in the Hong Kong Intellectual Property Journal (http://www.ipd.gov.hk/eng/ip_journal.htm). You can click here to view the flowchart of the examination process.

International application under the Patent Cooperation Treaty (PCT)

If you make an international application designating China, you can also seek standard or short-term patent protection in the HKSAR. You can file the international application either with the State Intellectual Property Office, People's Republic of China or the International Bureau. After the international application has entered its national phase in China, you can file an application for a standard or short-term patent in Hong Kong, China. Applying for the grant of a patent based on international application designating China is explained below.

If your international application is to protect a utility model you can nevertheless apply for short-term patent protection in Hong Kong, China. Note, however, that in Hong Kong, China the criteria for novelty and inventive step are the same for both a standard and a short-term patent. Short-term patents failing the criteria may subsequently be challenged in the Courts.

International application designating China - when should you file a standard patent application?

If the international application designating China has been published by the International Bureau in Chinese, you need to file a request to record in Hong Kong, China within six months after the State Intellectual Property Office, People's Republic of China issues a national application notification.

If the international application designating China has been published by the International Bureau in a language other than Chinese, you need to file a request to record in Hong Kong, China within six months after the date of publication of the international application by the State Intellectual Property Office, People's Republic of China.

International application designating China - when should you file a short-term patent application

You cannot file a short-term patent application until the international application has entered its national phase in China. But you need to file your short-term patent application within six months after the international application has entered its national phase in China, or within six months after the State Intellectual Property Office, People's Republic of China 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 (click here) you need to file

• a copy of the international application as published by the International Bureau;
• a copy of any translation of the international application published by the State Intellectual Property Office, People's Republic of China;
• a copy of any publication of information in the State Intellectual Property Office, People's Republic of China concerning the international application;
• 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 (click here) you need to file

• a copy of the international application as published by the International Bureau;
• a copy of the international search report (whether contained in the international application as published or separately published);
• the date of entry of the international application into the national phase in China;
• a copy of the translation of the international application (if any) published by the State Intellectual Property Office, People's Republic of China;
• a copy of any information published by the State Intellectual Property Office, People's Republic of China concerning the international application;
• if the short-term patent application is made within six months after the State Intellectual Property Office, People's Republic of China issues the national application notification, a copy of the national application notification and the date of issue of the notification.

Patent information

Anyone can make a search about published patent applications and patents granted in Hong Kong, China at the online search system provided by the Intellectual Property Department (http://ipsearch.ipd.gov.hk).

Information about patent applications and granted patents is published in the Hong Kong Intellectual Property Journal (http://www.ipd.gov.hk/eng/ip_journal.htm).

Business Hours

• for all classes of business (except those as listed below):

• for receiving by fax any documents establishing the earliest filing of a request to record or a request for registration and grant in respect of a standard patent application (sections 17(2) and 24(2), Patents Ordinance):